Ex Parte Lindgren et al

Patent Trial and Appeal Board

May 13, 2016

12746246 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121746,246 06/04/2010
132398 7590 05/17/2016
Clairvolex Inc,
4010 MOORPARK AVE, Ste, 228
San Jose, CA 95117
FIRST NAMED INVENTOR
Anders Lindgren
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P24695-US1 7564
EXAMINER
MEANS, JAREN M
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
05/1712016 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 ANDERS LINDGREN and CHRISTER BOBERG
Appeal2014-006376
Application 12/746,246
Technology Center 2400
Before JOHN P. PINKERTON, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-33, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Telefonaktiebolaget LM
Ericsson (publ). App. Br. 1.
Appeal2014-006376
Application 12/746,246
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
reducing the size of messages, such as, for example, SIP messages,
communicated between a client and a server, or vice versa. Spec. 1. 2
Claim 1 is illustrative and reproduced below (with the disputed
limitations emphasized in italics):
1. A method in a communication network of delivering
messages associated with an information exchange service
between a first entity and a second entity, said method
comprising the following steps, executed by the first entity:
processing a message associated with an information
exchange service, said message comprising data content and a
request for versioning, wherein versioning comprises
associating each version of data content of a message with a data
identifier, identifYing said version,
determining if the data content has already been delivered
to the second entity, and
transmitting said message unchanged to the second entity
in case said data content has not already been delivered to the
second entity, or
transmitting a modified message to the second entity in
case the data content has already been delivered to the second
entity, said modified message comprising a data identifier but no
data content.
2 Our Decision refers to the Final Action mailed Apr. 1, 2013 ("Final Act.");
Appellants' Appeal Brief filed Oct. 18, 2013 ("App. Br."); the Examiner's
Answer mailed Mar. 4, 2014 ("Ans."); Appellants' Reply Brief filed May 5,
2014 ("Reply Br."); and, the original Specification filed June 4, 2010
("Spec.").
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Application 12/746,246
Rejections on Appeal
Claims 1, 2, 5, 7-12, 15, 17-22, and 25-33 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Langen (US 2009/0019158 Al,
published Jan. 15, 2009).
Claims 3, 4, 6, 13, 14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination Langen and Cox (US
2007 /0239866 Al, published Oct. 11, 2007).
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination Langen and Sundarrajan (US
2006/0195660 Al, published Aug. 31, 2006).
ANALYSIS
The dispositive issue raised by Appellants' briefs is whether Langen
discloses "processing a message associated with an information exchange
service, said message comprising data content and a request for versioning,
wherein versioning comprises associating each version of data content of a
message with a data identifier, identifying said version," as recited in claim
1, and similarly recited in claims 11, 25, and 30.
In the Final Office Action, the Examiner cites paragraphs 28, 30, 80,
and 81 of Langen as disclosing the limitations in dispute. Final Act. 4--5.
The Examiner finds Langen discloses "said message comprising data content
and a request for versioning" because paragraph 28 provides that "various
engines in the engine tier can determine whether the near cache contains a
current version of the state needed to process a message before retrieving the
state data from the state tier" and paragraph 80 of Langen provides that "call
states, both in the near cache and in the state tier can be associated with a
version." Id. at 4. Citing paragraphs 80 and 81, the Examiner finds "Langen
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Application 12/746,246
also discloses wherein versioning comprises associating each version of data
content of a message with a data identifier." Id. at 4--5.
In the Appeal Brief, Appellants argue the "Examiner is analogizing a
SIP message processed by an engine tier to the claimed 'a message' and
"messages processed by the engine tier do not have anything that can be
fairly analogized to the claimed 'data content and a request for versioning. "'
App. Br. 6-7. Appellants also argue paragraph 80 of Langen "refers to
'versioning' of a call state, not the SIP messages processed by Langen 's
engine tier." App. Br. at 7. Appellants further argue:
At most, paragraph [0081] of Langen refers to communication
between the engine tier, state tier, and near cache regarding call
state information needed to process a SIP message. Such
communication and associated versioning information is not part
of the original SIP message that the engine tier is processing.
Thus, by referring to different kinds of communication between
the SIP servers, clients, engine tiers, state tiers, and near caches,
Examiner has failed to show that Langen discloses, expressly or
inherently, "processing a message associated \'l1ith an
information exchange service, said message comprising data
content and a request for versioning, wherein versioning
comprises associating each version of data content of a message
with a data identifier, identifying said version."
Id. at 7 (emphasis omitted).
In the Answer, the Examiner clarifies that the regular SIP messages
discussed in paragraph 28 of Langen that need state data before being
processed are not the messages the Examiner is relying on, but instead "[t]he
messages of Langen that are exchanged between the engine tier and state tier
are the 'processed messages' that are being analogized with the applicant's
claimed 'message."' Ans. 25. The Examiner finds "[t]he cached state data
has to be sent between the tiers using some form of a message, and these are
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Application 12/746,246
the messages that the Examiner equates to the claimed 'messages."'
(Emphasis added). Id.; see also id. at 25-27. The Examiner further finds
"the Examiner believes the cached state data passed between tiers in some
form of a message which includes data and versioning information is what
reads on the applicant's limitations." Id. at 27 (emphasis added).
In response, the Appellants argue nothing in paragraph 28 of Langen
expressly discloses the limitations in dispute and the Examiner errs in
relying on a theory of inherency to show these limitations. Reply Br. 2--4.
In particular, citing Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990),
Appellants argue the Examiner has failed to provide a basis in fact and/ or
technical reasoning to show that the Examiner's "some form of message"
necessarily discloses "a message associated with an information exchange
service, said message comprising data content and a request for versioning,
wherein versioning comprises associating each version of data content of a
message with a data identifier, identifying said version," as recited in claim
1. Id. 3--4.
We are persuaded by Appellants' arguments the Examiner has erred.
"A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). We agree with Appellants' argument that paragraph
28 of Langen does not expressly disclose the limitations in dispute. Reply
Br. 3. Although the Examiner does not use the word "inherent," we also
agree with Appellants' argument that the Examiner appears to find Langen
inherently discloses the limitations in dispute by finding that "some form of
a message" between the engine tier and state tier is analogous to Appellants'
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Application 12/746,246
claimed "message" and that the cached state data "has to be sent between the
tiers using some form of a message." Ans. 25-27. 3 However, the
Examiner's finding that "cached state data has to be sent between the tiers
using some form of a message" does not constitute an inherent disclosure of
the claimed "message" limitations of claim 1 because the finding is based on
the assumption and possibility that some message may occur, which is
insufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
Cir. 1993) ("The mere fact that a certain thing may result from a given set of
circumstances is not sufficient [to establish inherency.]"); In re Oelrich, 666
F.2d 578, 581(CCPA1981) ("Inherency ... may not be established by
probabilities or possibilities."). Further, we do not agree with the
Examiner's finding that "the messages as described in [paragraph] 28 of
Langen are a type of message that is associated with the SIP information
exchange service that contain not only data content but also requests for
versioning that associate each version of the data content in the cache with
an identifier" (see Ans. 27-28) because it (1) is based only on the
Examiner's belief and assumption that the cache state data "has to be sent
... using some form of an electronic message" and (2) is unsupported by
persuasive facts or reasoning explaining what the message is and why the
message "comprises data content and a request for versioning, wherein
3 We note that by finding some form of a message has to be sent between
the tiers, the Examiner appears to be finding that Langen suggests such
messaging. However, a rejection of claim 1 under 35 U.S.C. § 103(a) is not
before us. While the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Application 12/746,246
versioning comprises associating each version of data content of a message
with a date identifier."
"[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Here, however,
the Examiner has not shown that an ordinarily-skilled artisan would infer
that "a message associated with an information exchange service, said
message comprising data content and a request for versioning, wherein
versioning comprises associating each version of data content of a message
with a data identifier, identifying said version" is disclosed by paragraphs
28, 30, 80, and 81 of Langen. Thus, we agree with Appellants' argument
that the Examiner errs in relying on a theory of inherency to show the
disputed limitations of claim 1. See Reply Br. 3-6.
Thus, based on this record, we are persuaded the Examiner erred in
finding Langen discloses the disputed limitations of claim 1, as well as the
similar limitations recited in claims 11, 25, and 30. Accordingly, we cannot
sustain the Examiner's rejection of claims 1, 11, 25, and 30 or the rejections
of claims 2-10, 12-24, 26-29, and 31-33, which depend variously
therefrom.
DECISION
We reverse the Examiner's decision rejecting claims 1-33.
REVERSED
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