Ex Parte Honkala et al

Board of Patent Appeals and Interferences

Sep 30, 2010

10612342 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/612,342 07/03/2003 Anu Honkala 39700-579001US/NC16835US 3757
64046 7590 09/30/2010
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
DUONG, CHRISTINE T
ART UNIT PAPER NUMBER
2462
MAIL DATE DELIVERY MODE
09/30/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ANU HONKALA, JYKRI AARNOS,
JUHA KALLIOKULJU, and EVA-MARIA LEPPANEN
________________

Appeal 2009-008205
Application 10/612,342
Technology Center 2400
________________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN, and
MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 4 to 15, 18 to 29, and 31 to 42.
Claims 2, 3, 16, 17, and 30 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE. We also enter new grounds of rejection under 37
C.F.R. § 41.50(b).
The disclosed invention relates to the administration of presence
information (e.g., user status/availability information, physical location of a
mobile terminal, preferred communication medium, authorization
information, etc.) in a third generation (3G) mobile network (Spec. ¶¶
[0001], [0002], and [0004]). Appellants also disclose and claim a method,
apparatus, and system for receiving a first message containing presence
information at a server from a first terminal, and transmitting a second
message containing at least part of the presence information from the server
to other terminals (Fig. 1; Abs.; claims 1, 15, 29, and 42). The first terminal
may be one of plural terminals associated with a first user, and the system
may include a server as well as multiple users (Fig. 1; Spec. ¶ [0008]).
Claim 1 is representative of the claimed invention, with emphasis
added, and reads as follows:
1. A method, comprising:
receiving at a server a first message from a first terminal, the first
terminal being one of a plurality of terminals associated with at least one
user, the first message comprising presence information and an identifier of
the at least one user, wherein the presence information is associated with at
least one of the at least one user and the plurality of terminals; and
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transmitting a second message including at least part of said presence
information from the server, wherein the second message is transmitted to at
least one terminal of the plurality of terminals other than the first terminal.
(Claim 1 (emphasis added)).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bobde ‘099 US 2003/0217099 A1 Nov. 20, 2003
(filed May 15, 2002)
Bobde ‘142 US 2003/0217142 A1 Nov. 20, 2003
(filed May 15, 2002)

The Examiner rejected claims 1, 4 to 10, 12 to 15, 18 to 24, 26 to 29,
31 to 37, and 39 to 42 under 35 U.S.C. § 102(e) based upon the teachings of
Bobde ‘142.
The Examiner rejected claims 1, 11, 15, 25, 29, and 38 under 35
U.S.C. § 102(e) based upon the teachings of Bobde ‘099.
With regard to the anticipation rejection over Bobde ‘142, the
Examiner relies upon SIP REGISTER messages sent to registration program
154 in server 102 to register/introduce new devices as the first message
recited in claims 1, 15, 29, and 42 (Ans. 3-4, 8-9). The Examiner relies upon
the presence information sent to watchers 410 or 320 as the second message,
and/or the acceptance message, SIP 202 (event 124) and NOTIFY message
(event 126) sent from server 102 to second computing device 106 as the
second message recited in claims 1, 15, 29, and 42 (Ans. 4 and 9). The
Examiner relies on Figure 6 and the description at paragraph [0050] as
disclosing that presence information for each of the devices 322/324/326 is
sent back to the first user 320 (Ans. 15-17).
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With regard to the anticipation rejection over Bobde ‘099, the
Examiner relies upon Figures 6 and 10 and the SIP REGISTER messages
sent from client computing device 311 to server 310 to register/introduce
new devices in registration database 316 as the first message recited in
claims 1, 15, and 29 (Ans. 13-14 and 24-26). The Examiner relies upon
event 324 (Fig. 11) and the presence documents sent to watchers, “and other
functions related to the conveyance of the user’s 317 presence” (paragraph
[0051]) as disclosing the second message recited in claims 1, 15, and 29
(Ans. 14 and 24-26). In other words, the Examiner relies on Figure 10 and
the description at paragraph [0051] as disclosing the second message since
the Examiner determines that the “other functions” related to the first user’s
presence could be sending presence information to the first device (311) or
even the other client computing devices 312 and 313, which the Examiner
contends are all associated with the first user 317 (Ans. 25-26).

FINDINGS OF FACT (FF)
1. Appellants disclose that a first presence information message is sent
from a terminal (e.g., 2a) from among plural terminals (2a-c) of a first
user (50) to a server 1 (Spec. ¶ [0010]; Fig. 1). Appellants also
disclose that a second message including presence information is sent
from the server 1 to other presentities, watches, or users 3 through 8
(Spec. ¶ [0011]; Fig. 1). Preferably the second message is transmitted
to one of the other terminals (e.g., 2b or 2c) associated with the user
50 and is not transmitted to the terminal (e.g., 2a) that sent the first
message (Spec. ¶ [0012]; Fig. 1; see also Fig. 3).
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2. Bobde ‘142 describes a method, apparatus, and system for supporting
the communication of presence information of multiple users where
each user may have multiple devices (Abstract). The system may
include a first user 320 having devices 322 (desktop), 324 (laptop),
and 326 (cell phone), a second user 330 having a second device 332,
and a server 328 (Fig. 6). An aggregate presence document (i.e., first
message) with presence information for each device 322/324/326 of
the first user 320 may be generated by aggregate component 340 and
sent to server 328 (¶ [0055]; Figs. 6-8). According to paragraph
[0050] of Bobde ‘142, a user 320 employs several devices including
desktop computer 322, laptop computer 324, and cell phone 326.
“Each device is registered with a server 328, and generates presence
information pertaining to itself and/or the corresponding user 320,”
and then “each of the registered devices 322-326 submits a SERVICE
message to the server 328” (¶ [0050]).
3. Bobde ‘142 describes that “the presence agent 152 [which is part of
server 328 in Fig. 6] conveys this information [i.e., presence
information] to the watcher 320 [sic: 330] to ensure the watcher 320
[sic: 330] has access to the most accurate presence information” (¶
[0050]). Bobde ‘142 also describes that the “information that most
accurately reflects the presence of the user” 320 (i.e., the second
message) “is what ultimately gets conveyed to any watchers [e.g.,
330]” (¶ [0055]).
4. Bobde ‘099 describes (Figs. 3, 5, and 7) first and second computing
devices associated with first and second users where one of the users
is a “watcher” (¶ [0024]). Bobde ‘099 even describes a scenario (Fig.
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12; ¶ 0056) where a single user 331 may be associated with two
computing devices 332 and 334, and there may be at least two
watchers 335 and 337. Server 310 performs “the functions of
informing other devices of the presence of the first client computing
device (event 324). These functions include processing tasks such as
responding to subscription messages received from watchers,
transferring presence documents to watchers, and other functions
related to the conveyance of the user’s 317 presence” (¶ [0051]).

ISSUES

Appellants argue, inter alia, (App. Br. 7-12; Reply Br. 4-7) that the
applied reference to Bobde ‘142 fails to disclose or suggest that after a first
message including presence information is sent to a server, a second
message containing part of the presence information is transmitted to at least
one terminal associated with the user other than the first terminal, or that the
second message is sent to another device associated with the same user, as
set forth in claims 1, 15, 29, and 42. Appellants contend (App. Br. 7-12) that
since Figure 6 shows arrows pointing away from the terminals to the server,
the features of claims 1, 15, 29, and 42 do not “necessarily” flow from
paragraphs [0049] and [0055] of Bobde ‘142.
Appellants also argue, inter alia, (App. Br. 28-31) that the applied
reference to Bobde ‘099 discloses that presence information is sent between
first and second users, and fails to disclose or suggest that after a first
message including presence information is received, a second message
containing part of the presence information is transmitted to at least one
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terminal associated with the user other than the first terminal, as set forth in
claims 1, 15, and 29.
Based on Appellants’ arguments, the following anticipation issues are
presented:
(i) Does Bobde ‘142 teach, inherently or expressly, receiving a
first message from a first terminal that is one of plural
terminals “associated with at least one user,” and
transmitting a second message including presence
information from a server to “at least one terminal of the
plurality of terminals other than the first terminal,” as set
forth in claims 1, 15, 29, and 42?
(ii) Does Bobde ‘099 teach, inherently or expressly, receiving a
first message from a first terminal that is one of plural
terminals “associated with at least one user,” and
transmitting a second message including presence
information from a server to “at least one terminal of the
plurality of terminals other than the first terminal,” as set
forth in claims 1, 15, and 29?

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).

ANALYSIS
Anticipation Rejection over Bobde ‘142
Appellants’ contention (App. Br. 7-28) that since Figure 6 shows
arrows pointing away from the terminals to the server, the features of claims
1, 15, 29, and 42 do not “necessarily” flow from paragraphs [0049] and
[0055] of Bobde ‘142 is persuasive. Appellants’ argument that Bobde ‘142
fails to disclose or suggest that after a first message including presence
information is sent to a server, a second message containing part of the
presence information is transmitted to at least one terminal associated with
the user other than the first terminal, as set forth in claims 1, 15, 29, and 42,
is also persuasive. Although Bobde ‘142 teaches sending a first message
including presence information to a server (FF 2), Bobde ‘142 does not teach
subsequently sending a second message to a terminal associated with the
user that is “other than the first terminal,” as recited in claims 1, 15, 29, and
42 (see FF 3).
Instead, Bobde ‘142 discloses sending a second message including
part of the presence information from server 328 to a second user or
watcher(s) 330, not to the other terminals 322, 324, or 326 of the first user
320 (FF 3) (we note that paragraph [0050] of Bobde ‘142 mistakenly refers
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to “watchers 410” in the third sentence (there is no element 410 in any figure
found in the entire reference), and also mistakenly refers to “watcher 320” in
the last sentence of that paragraph, since Figure 6 shows a watcher and
second user 330, along with the first user 320). When Figures 3 and 6 of
Bobde ‘142 are taken together with the description at paragraphs [0049]-
[0051] and [0055], we find that one of ordinary skill in the art would
understand from the totality of such disclosure that presence information is
sent to watchers 330 as a second message.
The Examiner incorrectly finds that the first user 320, including
devices 322/324/326, receives the second message generated by the server
328. Instead, we find that Bobde ‘142 discloses that presence information
concerning user 320 is conveyed to watchers 330 (FF 3). Using the
Examiner’s interpretation for claims 1, 15, and 29, i.e., that the terminals
other than the first terminal must be devices associated with the first or same
user, Bobde ‘142 fails to teach, inherently or expressly, receiving a first
message from a first terminal that is one of plural terminals “associated with
at least one user,” and transmitting a second message including presence
information from a server to “at least one terminal of the plurality of
terminals other than the first terminal,” as recited in claims 1, 15, 29, and 42.
Because each and every limitation in the claims is not found either expressly
or inherently in applied reference to Bobde ‘142, we will not sustain the
anticipation rejection of claims 1, 4 to 15, 18 to 29, and 31 to 42 over Bobde
‘142. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).

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Anticipation Rejection over Bobde ‘099
As already noted, under the Examiner’s apparent interpretation of
claims 1, 15, and 29, the first terminal associated with the first user sends a
first message, and other terminals associated with that first user receive the
second message. The Examiner is correct that the first user 317, including
devices 311/312/313, sends a first message to server 310, and a second
message is generated by the server 310 (Ans. 13; FF 2 and 3). The
Examiner relies upon event 324 (Fig. 11) and the presence documents sent to
watchers, “and other functions related to the conveyance of the user’s 317
presence” (paragraph [0051]) as disclosing the second message recited in
claims 1, 15, and 29 (Ans. 14 and 24-26). In other words, the Examiner
relies on Figure 10 and the description at paragraph [0051] as disclosing the
second message since the Examiner determines that the “other functions”
related to the first user’s presence could be sending presence information to
the first device (311) or even the other client computing devices 312 and 313
which the Examiner contends are all associated with the first user 317 (Ans.
25-26).
Bobde ‘099 is silent as to whether or not the “other functions related
to the conveyance of the user’s 317 presence” (paragraph [0051]) include
sending a message including presence information of the first terminal of the
user 317 back to other terminals of the same user 317. We do not agree with
the Examiner’s findings with respect to paragraph [0051] and Figure 10. We
find instead that Figure 10 and paragraph [0051] teach that presence
information is received at server 310 from the device 311 associated with
user 317, and then sent out to multiple watchers or clients, each having their
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own client computing devices (e.g., 312, 313), to update the watchers on the
status of the user 317, having device 311 (see FF 4).
Using the Examiner’s interpretation for claims 1, 15, and 29, i.e., that
the terminals other than the first terminal must be devices associated with
the first or same user, Bobde ‘099 fails to teach, inherently or expressly,
receiving a first message from a first terminal that is one of plural terminals
“associated with at least one user,” and transmitting a second message
including presence information from a server to “at least one terminal of the
plurality of terminals other than the first terminal.” Because each and every
limitation in the claims is not found either expressly or inherently in applied
reference to Bobde ‘099, we will not sustain the anticipation rejection of
claims 1, 15, and 29 over Bobde ‘099. Crish, 393 F.3d at 1256.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 102(e) for claims 1, 15, 29, and 42.
Claims 1, 15, 29, and 42 are rejected under 35 U.S.C. § 102(e) as
being unpatentable over Bobde ‘142.
As discussed supra with respect to the anticipation rejection over
Bobde ‘142, the Examiner interprets claims 1, 15, 29, and 42 to be limited to
a first message being sent to a server by a first terminal of plural terminals
associated with a first user, and a second message being transmitted to at
least one terminal of the plural terminals (associated with the first user) other
than the first terminal. We do not agree with this interpretation of claims 1,
15, 29, and 42, and instead interpret these claims as follows. Our new
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interpretation leads us to the new ground of rejection under § 102(e) as being
anticipated by Bobde ‘142.
Broadly interpreted, the recitations of claims 1, 15, 29, and 42 are met
by Bobde 142’s receipt of a first message at a server from terminals of a first
user, and transmission of a second message to watchers of the first user (see
FF 2 and 3). See Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
The phrase “plurality of terminals associated with at least one user”
found in each of independent claims 1, 15, 29, and 42, encompasses plural
terminals that are associated with more than one user (i.e., two or three
users, which could include watchers). The “first message” of the claims is
sent to the server from a first terminal, and the first terminal is recited as
“being one of a plurality of terminals” that is “associated with at least one
user” (claims 1, 15, 29, and 42). The second message of the claims is then
transmitted to “at least one terminal of the plurality of terminals other than
the first terminal” (claims 1, 15, 29, and 42).
Thus, broadly interpreted, claims 1, 15, 29, and 42 encompass Bobde
‘142’s disclosure of receiving a first message including presence information
at a server 328 from a first terminal (e.g., 322) of a plurality of terminals
(322, 324, 326, 332) associated with “at least one user” (i.e., users 320 and
330) (FF 2), and transmitting a second message including part of the
presence information from the server 328 to at least one terminal (e.g., 332)
of the plurality of terminals (e.g., 322, 324, 326, 332) other than the first
terminal (e.g., 322) (FF 3). In other words, the claim language is broad
enough to read on Bobde ‘142’s teaching of sending the second message to
watchers having terminals. Because claims 1, 15, 29, and 42 recite that the
first terminal is simply “one of a plurality of terminals” and then merely
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describe the plurality of terminals as “associated with at least one user” (as
opposed to plural terminals of a first user), these claims encompass plural
terminals being associated with more than one user, and in fact being
associated with the user 320 and the watchers or other users 330.
We find that Bobde ‘142 discloses first and second messages, a
server, and receiving and transmitting presence information to terminals
other than a first terminal, as broadly recited in claims 1, 15, 29, and 42.
Bobde ‘142’s server 328, user 320 and terminals 322/324/326, and watcher
330 and terminal 332 therefore perform the same function as Appellants’
server 1, user 2 and terminals 2a-c, and watchers 3 to 8 which each have
their own terminal (compare FF 1 with FF 2 and 3). The plurality of
terminals associated with at least one user recited in claims 1, 15, 29, and 42
would be reasonably understood by one of ordinary skill in the art to
encompass Bobde ‘142’s terminals 322, 324, 326, and 332 (FF 2 and 3).
Dependent Claims 4 to 14, 18 to 28, and 31 to 41
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection above
under 37 C.F.R. § 41.50(b) for claims 1, 15, 29, and 42. However, we have
not reviewed the remaining claims which depend from these claims (claims
4 to 14, 18 to 28, and 31 to 41) to the extent necessary to determine whether
these claims are unpatentable under 35 U.S.C. § 102(e) or § 103(a). We
leave it to the Examiner to determine the appropriateness of any further
rejections based thereon.

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ORDER
The decision of the Examiner rejecting claims 1, 4 to 15, 18 to 29, and
31 to 42 is reversed. We have also entered new grounds of rejection under
37 C.F.R. § 41.50(b) for claims 1, 15, 29, and 42.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection .
. . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

REVERSED; 37 C.F.R. § 41.50(b)

KIS

MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111