Ex Parte Lidstrom et al

Patent Trial and Appeal Board

Dec 28, 2016

13121957 (P.T.A.B. Dec. 28, 2016)

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.
13/121,957 03/31/2011 Mattias Lidstrom 4015-7376/P25845-US1 3835
132398 7590 12/30/2016
Clairvolex Inc.
4010 MOORPARK AVE, Ste, 228
San Jose, CA 95117
EXAMINER
AHMED, ABDULLAHI
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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 MATTIAS LIDSTROM and IGNACIO MAS IVARS1
Appeal 2016-003867
Application 13/121,957
Technology Center 2400
Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 19-40, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as
Telefonaktiebolaget LM Ericsson (publ).
Appeal 2016-003867
Application 13/121,957
CLAIMED SUBJECT MATTER
The claims are directed to a method and arrangement for controlling
sessions in a communication network. Claim 19, reproduced below with the
key limitation emphasized, is illustrative of the claimed subject matter:
19. A method in a multimedia network node of
providing a relevant service level for a first subscriber
participating in a multimedia session with a second subscriber,
wherein a policy defined for each subscriber entitles that
subscriber to a certain service level, the method comprising:
obtaining a session negotiation message sent by the first
subscriber,
detecting a required service level of the first subscriber
from a service level parameter that has been added by the first
subscriber to said session negotiation message, and
if the required service level of the first subscriber cannot
be fulfilled in a receive direction of the first subscriber according
to the policy defined for the second subscriber, updating that
policy to allow reservation of network resources appropriate for
the first subscriber to receive media during the multimedia
session with said required service level.
Corr. App. Br. 2 (Claims App’x).
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Trandal et al.
Jagannathan
Widegren et al
Rasanen et al.
US 7,742,586 B1 June 22, 2010
US 2002/0118688 Al Aug. 29, 2002
US 2002/0165966 Al Nov. 7, 2002
US 2004/0190453 Al Sept. 30, 2004
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Appeal 2016-003867
Application 13/121,957
REJECTIONS
Claims 19, 23—39, and 31—40 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Widegren, Jagannathan, and Trandal. Ans. 2.
Claims 20-22 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Widegren, Jagannathan, Trandal, and Rasanen. Ans. 15.
ISSUES FOR DECISION
(1) Does the last step recited in independent method claim 19 need to
be performed under the broadest reasonable interpretation of the claim?
(2) Did the Examiner err in finding Jagannathan and Trandal teach the
recited “policy updating circuit” in independent claim 29?
(3) Did the Examiner err in finding Rasanen teaches the limitations
recited in claims 20 and 30?
(4) Did the Examiner err in finding Widegren teaches “wherein said
required service level comprises a defined data rate, a defined media codec,
or both with which the first subscriber receives media,” as recited in
dependent claims 39 and 40?
ANALYSIS
First Issue
Appellants argue for patentability of claim 19 based on the final
limitation of the claim. This limitation recites:
if the required service level of the first subscriber cannot be
fulfilled in a receive direction of the first subscriber according to
the policy defined for the second subscriber, updating that policy
to allow reservation of network resources appropriate for the first
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subscriber to receive media during the multimedia session with
said required service level.
The Examiner finds the combined teachings of Jagannathan and Trandal
teach or suggest this limitation. Final Act. 2, 4—6; Ans. 3—4, 18. Appellants
contend each reference is deficient. App. Br. 6—8.
Before we consider the teachings of Jagannathan and Trandal,
however, we first address the issue of claim scope in light of this Board’s
recent precedential decision in Ex Parte Schulhauser, Appeal No. 2013-
007848 (PTAB April 28, 2016) (“Schulhauser”). In Schulhauser, the Board
held, when construing a method claim according to its broadest reasonable
interpretation, conditional steps in process claims need not be carried out to
be within the scope of the claim. Schulhauser at 8.
Here, claim 19 is a method claim, and the limitation relied upon by
Appellants for patentability is conditional. That is, the recited “updating that
policy to allow reservation of network resources ...” is only performed “if
the required service level of the first subscriber cannot be fulfilled . . . .”
According to the broadest reasonable interpretation under Schulhauser, in
situations where this condition is not met (i.e., the claim does not positively
recite the occurrence of the condition), the step of “updating that policy” is
not necessarily performed. As such, when “the required service level of the
first subscriber” can be fulfilled, claim 19 is met by merely carrying out the
prior two steps of “obtaining” and “detecting.”
Appellants do not contend the obtaining and detecting steps are not
taught in the cited references. Appellants’ arguments for patentability of
claim 19 are based on the alleged absence of the conditional “updating” step.
As such, Appellants’ arguments are not commensurate with the broadest
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reasonable interpretation of claim 19, and is therefore, unpersuasive.2 * * 5
Accordingly, we sustain the rejection of independent claim 19 under 35
U.S.C. § 103(a) together with the rejections of dependent claims 21—28
which are not argued separately.
Because we sustain the rejection of claim 19 relying on a different
claim interpretation than applied by the Examiner, we designate our
affirmance of the rejection of this claim as well as dependent claims 21—28
as a NEW GROUND OF REJECTION so as to provide Appellants with a
full and fair opportunity to response to the thrust of the rejections. This
decision should not be construed to imply that, in all instances in which the
Board affirms a rejection based on a claim interpretation that differs from
the claim interpretation applied by the examiner, the thrust of the rejection is
changed so as to warrant designation of the affirmance as a new ground of
rejection. Rather, in this particular case, in light of the scope of the
arguments presented by Appellants, the Board deems it, in the interests of
fairness to Appellants, appropriate to designate the affirmance as a new
ground of rejection.
2 We note Appellants also argue Jagannathan and Trandal are not properly
combinable. App. Br. 8—9. However, in light of our construction, the
addition of these references to Widegren are no longer necessary to teach the
limitations recited in claim 19, as the Examiner was able to present a case of
prima facie obviousness by providing evidence to show obviousness of the
“obtaining” and “detecting” steps. The Examiner did not need to present
evidence of the obviousness of the remaining method steps that are not
required to be performed under the broadest reasonable interpretation of the
claim. Accordingly, we do not find persuasive Appellants’ arguments
regarding the combinability of the references.
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Second Issue
Although Schulhauser dictates the broad construction of method claim
19, it also held that same rationale does not necessarily apply to system
claims, such as Appellants’ claim 29:
The broadest reasonable interpretation of a system claim having
structure that performs a function, which only needs to occur if a
condition precedent is met, still requires structure for performing
the function should the condition occur. This interpretation of
the system claim differs from the method claim because the
structure ... is present in the system regardless of whether the
condition is met and the function is actually performed. Unlike
[the method claim], which is written in a manner that does not
require all of the steps to be performed should the condition
precedent not be met, [he system claim] is limited to the structure
capable of performing all the recited functions.
Schulhauser at 14.
Therefore, in assessing the rejection of claim 29, we must decide
whether the Examiner erred in finding the combination of Jagannathan and
Trandal teaches or suggests the recited “policy updating circuit.” Citing
paragraph 35, Examiner finds Jagannathan teaches “if the required service
level of the first subscriber cannot be fulfilled in a receive direction of the
first subscriber according to the policy defined for the second subscriber.”
Final Act. 9. The Examiner further finds Trandal teaches a policy updating
circuit which can “update that policy to allow reservation of network
resources appropriate for the first subscriber to receive media during the
multimedia session with said required service level.” Final Act. 9—10 (citing
Trandal col. 7,11. 15—23); see also Ans. 17—18.
Appellants argue neither Jagannathan nor Trandal teach any
determination of a required service level of the first subscriber cannot be
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fulfilled “according to the policy defined for the second subscriber.” App.
Br. 6. More specifically, Appellants contend that although Jagannathan
makes a determination of a required service level, it never mentions any sort
of policy being defined by either subscriber, and makes the determination
based only on whether there are sufficient available network resources. Id.
According to Appellants, Jagannathan never considers the called subscriber
in any way when determining whether the required level of service can be
fulfilled. Id. With respect to Trandal, Appellants argue, although it teaches
comparing service levels between the caller and recipient, there is no
determination that service level one subscriber cannot be fulfilled due to the
service level of the other. App Br. 6—7.
We are persuaded by Appellants’ arguments. Nothing in either
reference suggests that any determination is made that required service level
of the first subscriber cannot be fulfilled because of the policy defined for
the second subscriber. Jagannathan’s consideration of available network
resources relates to the actual network conditions and not the service level to
which the subscriber is entitled. We also find persuasive the distinction
Appellants draw between the teachings of Trandal and the limitation recited
in claim 29. Although Trandal undoubtedly compares service levels
between the two subscribers, nothing suggests the comparison involves a
determination that the service level of one subscriber cannot be met due to
the service level of the other. Accordingly, we do not sustain the
Examiner’s rejection of claim 29.
Third Issue
Appellants separately argue for patentability of claims 20 and 30,
which depend on claims 19 and 29, respectively. As an initial matter,
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because we have reversed the rejection claim 29 supra, we also reverse the
rejection of claim 30 by virtue of its dependency on claim 29. With respect
to claim 20, the Examiner finds Rasanen teaches its recited limitation. Final
Act. 16-17.
Claim 20 recites:
The method according to claim 19, wherein said policy is
updated to enable an asynchronous session, whereby said
subscribers receive media during the multimedia session with
different service levels.
Corr. App. Br. 2 (Claims App’x). The limitation recited in claim 20, like the
last limitation in claim 19, is not necessarily performed because it is
conditional on “the required service level of the first subscriber cannot be
fulfilled.” As a result, it is immaterial whether Rasanen teaches this
limitation. Accordingly, the rejection claim 20 is sustained. However,
because our reason for sustaining the rejection of independent claim 19 is
based on a new ground, we likewise include dependent 20 within such
designation.
Fourth Issue
Appellants also separately argue claims 39 and 40, which each recite
“wherein said required service level comprises a defined data rate, a defined
media codec, or both with which the first subscriber receives media.” Claim
40 depends from claim 29, the rejection of which we reversed supra. We
therefore need not consider Appellants arguments regarding claim 40, and
reverse its rejection because it depends from claim 29.
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Claim 39 depends from claim 19. In rejecting claim 393, the Examiner finds
Widegren teaches “wherein said required service level comprises a defined
data rate, a defined media codec, or both with which the first subscriber
receives media,” at paragraph 73. Final Act. 14. Appellants argue the
Examiner fails to consider the full context of the claim. However,
Appellants do not address the rejection made by the Examiner. Paragraph
73 of Widegren teaches “[ejach media data stream in the session is requested
by host A to have an [sic] particular quality of service, e.g., bit rate, delay
time, etc.” Widegren 173 (emphasis added). Thus, Widegren teaches that
the required service level includes a bit rate, which a person of skill in the art
would understand to be a defined data rate as recited in the claim.
Appellants’ arguments do not apprise us of error in the Examiner’s findings
regarding claim 39. Accordingly, we sustain their rejections. However,
because our reason for sustaining the rejection of independent claim 19 is
based on a new ground, we likewise include dependent claim 39 within such
designation.
Summary
For the reasons discussed above, we affirm the Examiner’s rejection
of independent claim 19 and claims 20—28 and 39 which depend therefrom.
We reverse the rejection of independent claim 29, and also of claims 30-38
and 40 which depend therefrom.
3 We note that the use of the conjunction “or” means the prior art need only
show either a defined data rate and/or a defined media codec to meet this
limitation.
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DECISION
The Examiner’s rejection of claims 19—28 and 39 is affirmed.
The Examiner’s rejection of claims 29—38 and 40 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
This decision contains new grounds of rejection of claims 19—28 and
39 pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) of 37 C.F.R. provides
“[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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