Ex Parte LONG et al

Patent Trials and Appeals Board

May 1, 2019

14751356 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/751,356 06/26/2015
97291 7590 05/03/2019
Huawei Technologies Co., Ltd.
c/o Shuang Liu(Huawei ID 00344817)
Building Fl-5, Huawei Industrial Base,
Bantian, Longgang District,
Shenzhen, 518129
CHINA
FIRST NAMED INVENTOR
Shuiping LONG
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.
81373422US 11 8428
EXAMINER
LEE,BRYANY
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
uspatent@huawei.com
shiming.wu@huawei.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUIPING LONG and HUI JIN
Appeal2018-007819
Application 14/7 51,356
Technology Center 2400
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 18-48. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed June 26, 2015, claiming the benefit of earlier filed
applications; "Final Act." for the Final Office Action, mailed June 1, 2017;
"App. Br." for Appellants' Appeal Brief, filed Jan. 24, 2018; "Ans." for
Examiner's Answer, mailed Apr. 10, 2018 (which was later re-mailed with
the conferees' signatures on Aug. 23, 2018); and "Reply Br." for Appellants'
Reply Brief, filed June 7, 2018.
2 According to Appellants, the real party in interest is Huawei Technologies
Co., Ltd. App. Br. 1.
Appeal2018-007819
Application 14/7 51,356
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to
adding a device to a multimedia session. Abstract. Claim 18, reproduced
below, is illustrative of the claimed subject matter:
18. A method for providing a multimedia session, comprising:
receiving, by an application server, an initiating request sent
from a first user equipment (UE) for initiating a multimedia session
with a second UE;
establishing, by the application server, the multimedia session
between the first UE and the second UE;
receiving, by the application server, an adding request for
inviting a third UE to participate the multimedia session [sic], wherein
the adding request comprises a third UE identity and a media type for
the third UE participating the multimedia session; and
adding, by the application server, the third UE to the
multimedia session according to the media type.
App. Br. 14 (Claims App'x).
THE REJECTION
Claims 18-48 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Shacham (Ron Shacham et al., The Virtual Device: Expanding
Wireless Communication Services through Service Discovery and Session
Mobility, IEEE INT'L CONFERENCE ON WIRELESS AND MOBILE COMPUTING,
NETWORKING AND COMMUNICATIONS, 1-9 (Aug. 2005))3 and Song
(US 2010/0093346 Al, filed Nov. 13, 2007, published Apr. 15, 2010). Final
Act. 3-14.
3 For clarity, we follow the Examiner's and Appellants' convention and
refer to the first page of Shacham as "page l ," the second page as "page 2,"
etc., rather than using the number provided at the bottom of those pages.
2
Appeal2018-007819
Application 14/7 51,356
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below. Because Appellants argue claims 18-48
together as a group (see App. Br. 12-13), we limit our discussion to
independent claim 18. Independent claims 28, 35, and 40 and dependent
claims 19-27, 29-34, 36-39, and 41-48 stand or fall with claim 18.
Claim 18
The Examiner found Shacham and Song, in combination, teach or
suggest the method recited in claim 18. Final Act. 3-5. Specifically, the
Examiner found Shacham teaches each step recited by the claim, but lacks
"an application server" performing these steps, and the Examiner found
Song teaches the claimed application server. Id. at 3-4. The Examiner
provided reasons explaining why it would have been obvious to perform
Shacham's method with Song's application server. Id. at 2-3, 4-5.
Appellants disagree and present several arguments. App. Br. 6-12.
We analyze the arguments by organizing them into two groups. First, we
evaluate Appellants' arguments that Shacham and Song fail to teach or
suggest various claim limitations. See id. at 7-11. Next, we evaluate
3
Appeal2018-007819
Application 14/7 51,356
Appellants' arguments that would not have been obvious to combine
Shacham and Song. See id. at 10-12.
Disputed Claim Limitations
Appellants allege various errors in the Examiner's understanding of
Shacham and the Examiner's associated findings. App. Br. 7-11. First,
Appellants contend steps Fl and F2 in Shacham's Figure 3 do not disclose
establishing a session between a correspondent node (CN) and a mobile
node (MN), but rather establish a session between the MN and an audio
node (AN). Id. at 7-9. From this, Appellants appear to conclude Shacham
fails to teach or suggest the multimedia initiation limitations.4 See id. at 9.
We are not persuaded by this argument because the Examiner did not
find that steps F 1 and F2 teach the multimedia initiation limitations.
Although the Examiner's reference to steps F 1 and F2 in the Final Office
Action may have created some confusion5 (see Final Act. 3-4), the Answer
4 Claim 18 recites: "receiving ... an initiating request sent from a first user
equipment (UE) for initiating a multimedia session with a second UE" and
"establishing ... the multimedia session between the first UE and the second
UE." App. Br. 14 (Claims App'x). In this Decision, we refer to these
limitations collectively as the "multimedia initiation limitations."
5 To be clear, we are not persuaded the Examiner's citation to these steps
caused ( or should have caused) undue confusion. In particular, for the
multimedia initiation limitations, the Examiner specifically identified
"multimedia SIP session between a Correspondent Node (CN) and a Mobile
Node (MN)" and cited several parts of Shacham in support, including the
reference to steps Fl and F2. Final Act. 3-4. Appellants summarize the
Examiner's mapping as: the MN teaches UEl, the CN teaches UE2, and the
local devices (such as AN) teach UE3. App. Br. 7. The multimedia
initiation limitations involve UEl and UE2, but not UE3, which under this
mapping correspond to MN and CN, but not the local devices; however,
steps F 1 and F2 involve messages exchanged between the MN and the local
4
Appeal2018-007819
Application 14/7 51,356
clarifies that the Examiner did not find these steps teach the multimedia
initiation limitations (see Ans. 3-5). Specifically, the Answer explains the
multimedia initiation limitations are taught or suggested by Shacham
because Figure 3 shows an established SIP session between the CN and the
MN. Id. at 3 (citing Shacham, Fig. 3, p. 5, col. 1, 11. 17-20). The Examiner
further explains Shacham's disclosed session between the CN and the MN
"must initially have been started using an 'INVITE."' Id. at 4, 5; see
Shacham, p. 3, col. 2, 11. 42-44 (In SIP, "an INVITE request asks the
recipient to establish a multimedia session.").
Appellants present only one argument alleging error in these
findings. 6 See Reply Br. 6. Specifically, Appellants argue Shacham does
not "explicitly recite[]" the disputed multimedia initiation limitations
because Shacham does not "mention how to establish the session between
the MN and CN." Id. Appellants' argument does not persuade us of error.
In particular, Shacham teaches a multimedia session established between a
devices (see Shacham, Fig. 3). Thus, the Examiner's reference to steps F 1
and F2 did not square with the Examiner's mapping. Appellants chose to
focus on this discrepancy, rather than address the thrust of the Examiner's
rejection, which referred to the session established between the CN and the
MN. See App. Br. 7-9; Reply Br. 3-6.
6 Appellants also present various arguments to show that step F5 does not
teach these limitations. Reply Br. 5-6. We do not address these arguments
because the Examiner did not find that step F5 teaches the multimedia
initiation limitations. See Ans. 3-5 (including no reference to "step F5").
Rather, the Answer explains Shacham "provides several areas of support
for" the Examiner's finding "that establishing a SIP session is taught by ...
Shacham." Id. at 3 ( emphasis omitted). It then discusses several passages of
Shacham in support of this finding; only one citation relates to step F5, but it
is provided to refute one of Appellants' other arguments. Id. at 4 ( citing
App. Br. 9).
5
Appeal2018-007819
Application 14/7 51,356
first user equipment (UE) and a second UE, i.e., the MN and the CN,
respectively. Shacham, Fig. 3; see Ans. 3 (making finding). Appellants
agree with this finding. App. Br. 8 ("Shacham (see Fig. 3) discloses that a
multimedia SIP session is established between the CN (the alleged 'UE2 ')
and the MN (the alleged 'UEl ')."); Reply Br. 6 ("It can be seen from FIG. 3
of Shacham that the sessions between MN and CN are in existence before
step Fl.") (emphasis omitted). Shacham also states this session was
established by the MN. Shacham, p. 5, col. 1, 11. 12-28; see Ans. 3 (making
finding). And, Shacham explains an INVITE request is sent to establish a
multimedia session with a recipient. Shacham, p. 3, col. 2, 11. 37-47; see
Ans. 4 (making finding). Thus, Shacham teaches or suggests receiving an
initiating request from the MN and establishing a multimedia session
between the CN and the MN, as shown at the top of Shacham's Figure 3.
Appellants do not address these passages of Shacham or explain why
this fails to teach or suggest a specific aspect of the multimedia initiation
limitations; rather, Appellants assert Shacham does not "explicitly" describe
the establishment of the session between the MN and the CN. Reply Br. 6.
This argument does not persuade us of error because the Examiner's
rejection is based on obviousness, which does not require a reference to
expressly teach all claim limitations. Pre-AIA 35 U.S.C. § 103(a) ("A patent
may not be obtained though the invention is not identically disclosed or
described as set forth in section 102, if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains."). Although we agree with Appellants that Shacham does not
6
Appeal2018-007819
Application 14/7 51,356
expressly discuss the initiation of the MN-CN multimedia session
specifically, Shacham does expressly teach an INVITE message, which is
sent to establish a multimedia session, and an existing multimedia session
between MN and CN that was established by the MN. Thus, it would have
been obvious to one of skill in the art to receive a request from a first UE
(i.e., an INVITE message sent from the MN) to initiate a multimedia session
with a second UE (i.e., the CN) and to establish that multimedia session.
Accordingly, Appellants do not persuade us of error in the Examiner's
findings regarding the multimedia initiation limitations.
Second, Appellants allege step F5 in Figure 3 does not disclose "an
'INVITE' message which establishes a new SIP Session," but rather is a
"reINVITE message" that updates the session. 7 App. Br. 9-10 ( emphasis
omitted). Because this reINVITE message does not add "a new session"
between the MN and CN, Appellants conclude "step F5 of Shacham could
not be a disclosure of [the adding limitations]."8 Id. at 10.
7 Appellants also allege the Examiner erred by finding that Shacham's
second column on page 3 describes step F5 in Figure 3 (see App. Br. 1 O);
however, the Examiner made no such finding (see Final Act. 4 ( citing page 3
and step F5 for different claim limitations)). We perceive no error in the
Examiner's reference to this portion of page 3 in conjunction with Figure 3
because page 3 provides general information regarding the SIP protocol,
which provides additional context for the specific SIP messages described
by Figure 3. See Shacham, p. 3, col. 2, 11. 37-47, Fig. 3.
8 Claim 18 recites: "receiving ... an adding request for inviting a third UE to
participate the multimedia session [sic] ... " and "adding ... the third UE to
the multimedia session according to the media type." See App. Br. 14
(Claims App'x). In this Decision, we refer to these limitations collectively
as the "adding limitations."
7
Appeal2018-007819
Application 14/7 51,356
We are not persuaded by this argument because the adding limitations
do not require a new session. Rather, these limitations recite "an adding
request for inviting a third UE to participate [in] the multimedia session" and
"adding ... the third UE to the multimedia session." App. Br. 14 (Claims
App'x) ( emphasis added). Claim 18 specifies the multimedia session is the
session established between the first UE and the second UE. Id. Appellants
do not further explain their arguments or explain why claim 18 should be
interpreted to require a new session in addition to the claimed multimedia
session, and the plain language of claim 18 is to the contrary. Accordingly,
this argument does not persuade us of error.
Third, Appellants periodically argue Shacham does not disclose the
limitations of claim 18 because it lacks an "application server" that performs
the method steps recited by claim 18. App. Br. 8-11. Appellants also argue
Song fails to disclose a third UE. Id. at 12. However, as explained by the
Examiner, this argument does not address the rejection as articulated. See
Ans. 4. The Examiner found Song (not Shacham) teaches an application
server, and Shacham (not Song) teaches a third UE. Final Act. 4.
Accordingly, we are not apprised of error based on this argument. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Finally, Appellants assert, for each limitation of claim 18, that
Shacham fails to teach or suggest the limitation. App. Br. 9. However, a
bare restatement of the claim language does not show error. See Ex Parte
Belinne, Appeal 2009-004693, 2009 WL 2477843, at *4 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37 (c)(l)(iv) ("A statement
8
Appeal2018-007819
Application 14/7 51,356
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule
41.37 to require more ... than a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found in the prior
art."). Accordingly, these statements also do not persuade us of error.
Motivation to Combine
Appellants allege it would not have been obvious to combine
Shacham and Song. App. Br. 10-12.
Specifically, Appellants argue Shacham discloses a "'serverless' SIP
session transfer process," and Appellants point to Shacham' s statement that
its approach "does not require any special servers." Id. at 10-11 (quoting
Shacham, p. 1, col. 2, 11. 55-57); Reply Br. 7. From this, Appellants
conclude Shacham teaches away from the proposed combination. App. Br.
10, 12; Reply Br. 7. We disagree. As the Examiner explained, the quoted
statement does not discourage the use of an application server and does not
otherwise teach away from the proposed modification. See Ans. 5; In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.").
In the Reply Brief, Appellants cite an additional passage of Shacham
(Reply Br. 7), which in context states the following:
Several existing approaches address the seamless transfer
of IP-based multimedia sessions between devices to enable a user
9
Appeal2018-007819
Application 14/7 51,356
to switch terminals in the middle of a session. . .. The service
mobility proxy approach in [ 4] uses a special-purpose proxy to
handle all session migration and media adaptation to different
terminals. The disadvantage of this approach is that the user data
flow between two calling parties must always traverse the proxy,
regardless of whether session migration is desired, introducing
triangular routing.
Shacham, p. 1, col. 2, 11. 33-4 7 ( emphasis added). We are similarly not
persuaded that this additional portion of Shacham teaches away from the
proposed combination. As the Examiner explained, the relative advantages
and disadvantages of using a server in lieu of client devices amounts to an
engineering tradeoff within the level of ordinarily skilled artisans. See
Ans. 5-6; Final Act. 2-3. Moreover, Appellants fail to explain why a person
of ordinary skill in the art would be discouraged from the Examiner's
proposed combination simply because Shacham noted that a specific proxy-
based approach ( described in another paper) had the disadvantage of
introducing triangular routing. See Reply Br. 7-8 (failing to explain the
alleged significance of the passage). Accordingly, we are not persuaded by
Appellants' arguments that Shacham teaches away from the proposed
combination.
In addition, Appellants submit Shacham does not provide a motivation
for the proposed combination (see App. Br. 12), but an express teaching,
suggestion, or motivation in the prior art is not a requirement for an
obviousness determination (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418-19 (2007) ). Appellants do not respond to-or identify error in-the
rationale provided by the Examiner. See Final Act. 2-3, 4-5 (providing
rationale for combining the references); KSR, 550 U.S. at 420 ("[A]ny need
or problem known in the field ... can provide a reason for combining the
10
Appeal2018-007819
Application 14/7 51,356
elements in the manner claimed."). In particular, the Examiner explained it
would have been obvious to perform Shacham's method with Song's
application server because servers were known to those skilled in the art and
using an application server would allow for "more flexibility when moving
or modifying sessions." Final Act. 2, 4-5. But, for example, Appellants do
not contend the Examiner's proposed modifications are beyond the level of
skill of one of ordinary skill in the art, do not assert the modifications are
more than the use of known elements to yield predictable results, and do not
explain why a person of ordinary skill in the art would not have reached the
conclusions reached by the Examiner.
Finally, Appellants contend, "Shacham's principle of operation does
not involve the use of a special server (such as an application server)." App.
Br. 11 (emphasis omitted); see id. at 12 (quoting In re Ratti, 270 F.2d 810
(CCP A 1959)). Appellants do not provide any additional explanation of or
support for this argument. We are not persuaded the Examiner's proposed
combination changes Shacham's principle of operation because adding an
application server to the SIP communication system does not constitute a
"change in the basic principles under which the [reference] ... was designed
to operate." Ratti, 270 F.2d at 813; see also Final Act. 2-3 (explaining a
server is not uncommon in SIP communication systems).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 18, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 18, and grouped claims 19-48 which fall therewith.
11
Appeal2018-007819
Application 14/7 51,356
DECISION
We affirm the Examiner's decision rejecting claims 18-48.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
12