Ex Parte Lassborn et alDownload PDFPatent Trial and Appeal BoardDec 30, 201612810356 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 12/810,356 06/24/2010 Sofie Lassborn P24769-US1 5783 132398 7590 01/04/ Clairvolex Inc. 4010 MOORPARK AVE, Ste, 228 San Jose, CA 95117 EXAMINER SHIN, KYUNG H ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 01/04/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): elofdocket @ clairvolex .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOFIE LASSBORN, MIKAEL KLEIN, and ANDERS LINDGREN Appeal 2016-001571 Application 12/810,356 Technology Center 2400 Before JON M. JURGOVAN, SHARON FENICK, and MICHAEL J. ENGLE, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek review under 35 U.S.C. § 134(a) from a final rejection of claims 1—3, 5—9, and 11—19, which constitute the only pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.3 1 The Appeal Brief, page 1, identifies Telefonaktiebolaget LM Ericsson as the real party in interest. 2 Claims 4, 10, and 20 were canceled. 3 Our Decision refers to the Specification filed June 24, 2010 (“Spec.”), the Final Office Action mailed March 13, 2014 (“Final Act.”), the Appeal Brief filed Sept. 12, 2014 (“App. Br.”), the Examiner’s Answer mailed Nov. 10, 2014 (“Ans.”), and the Reply Brief filed Jan. 30, 2015 (“Reply Br.”). Appeal 2016-001571 Application 12/810,356 CLAIMED INVENTION The claims are directed to applying polite block and confirm for subscribers to presence data. (Spec. 1 — Technical Field.) Claims 1 and 7, reproduced below, are illustrative of the claimed subject matter: 1. A method for operating a communication system comprising a presence server and a presence document server, the communication system being adapted to communicate with a first client requesting subscription to the presence data of a presentity using a second client, the method comprising the steps of: receiving a subscription request subscribing to the presence data of the presentity from the first client; determining if the subscription request is to be either confirmed or politely blocked and, in case the subscription request is to be either confirmed or politely blocked: sending a request for presence data from the presence server to the presence document server, receiving a message comprising presence data of the presentity from the presence document server in response to the request for presence data, and sending a notification message to the first client based on the received presence data of the presentity, the notification message comprising at least a part of the presence data received in the step of receiving a message. 7. A presence server for a communication system comprising a presence server and a presence document server, the communication system being arranged for communicating with a first client requesting subscription to the presence data of a presentity using a second client, the presence server comprising: an interface receiving a subscription request subscribing to the presence data of the presentity from the first client; a controller and a non-transitory memory for storage of instructions that. When executed by the controller, cause the presence server to: 2 Appeal 2016-001571 Application 12/810,356 determine if the subscription request is to be either confirmed or politely blocked and, in case the subscription request is to be either confirmed or politely blocked: send, via the interface, a request for presence data to the presence document server, receive, via the interface, a message comprising presence data of the presentity from the presence document server in response to the request for presence data, and send, via the interface, a notification message to the first client based on the received presence data of the presentity, the notification message comprising at least a part of the presence data received in the message from the presence document server. (App. Br. 10-12 —Claims App’x.) REJECTION Claims 1—3, 5—9, and 11—19 stand rejected under 35 U.S.C. § 102(e) based on Tian et al. (US 2008/0010301 Al, Jan. 10, 2008). (Final Act. 2— 10.) ANALYSIS Claims 1, 2, 3, 5, and 6 Appellants argue that Tian fails to disclose the claimed feature of “in case the subscription request is to be either confirmed or politely blocked: . . . sending a notification message to the first client based on the received presence data of the presentity, the notification message comprising at least a part of the presence data” as recited in claim 1. (Emphasis added.) (App. Br. 7—9.) This limitation is a conditional step that need not be performed. According to our precedent, when interpreted according to the broadest reasonable interpretation of the claim, such a limitation is not accorded 3 Appeal 2016-001571 Application 12/810,356 patentable weight because it is not required to be performed. See Ex parte Schulhauser, Appeal No. 2013-007847 (PTAB April 28, 2016) (precedential) (confirming that “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed” (quotation omitted)). Appellants do not present any arguments relative to any non conditional step of claim 1. Therefore, we sustain the rejection of claim 1 as well as claims 2, 3, 5, 6, which are dependent from claim 1. Claims 7—9 and 11—19 In contrast to the foregoing claims, claims 7—9 and 11—19 recite a presence server, presence document server, clients, and computer program product which are configured to perform the function of “in case the subscription request is to be either confirmed or politely blocked: . . . send . . .a notification message . . . comprising at least a part of the presence data.” (App. Br. 11—15 (Claims App’x).) As these claims are not directed to methods, we proceed to analyze whether the Examiner has identified sufficient structure in the prior art mapping to the recited function. In the claimed invention, in the case in which the subscription request is determined to be either confirmed or politely blocked, presence data is sent from the presence document server to the presence server. (See, e.g., App. Br. 11—15 (Claims App’x), independent claims 7, 13, 14, 16, 17.) Several of these claims recite that the presence data is sent onward from the presence server to the client. (Id.) The Examiner finds that Tian discloses the claimed feature. (Final Act. 3 citing Tian 120.) We agree with Appellants’ argument. Tian, paragraph 20, states: The element represents an action to be performed when matched, including Allow, Block, Polite-Block (which 4 Appeal 2016-001571 Application 12/810,356 returns the information of successful subscription, but never notifies the watcher [of] any presence information. In other words, this is a friendly refusal with the same effect as Block) and Confirm (wait for confirmation). Tian’s disclosure is thus the opposite of what is claimed. Specifically, Tian discloses that presence information is not notified in the case of a Polite - Block, whereas the claims recite that presence data is sent in the case of a polite block. Thus, Appellants’ arguments are persuasive, and we do not sustain the rejection of these claims. DECISION We affirm the rejection of claims 1, 2, 3, 5, 6. We reverse the rejection of claims 7—9 and 11—19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 5 Copy with citationCopy as parenthetical citation