Ex Parte Mutikainen et al

Patent Trial and Appeal Board

Jun 20, 2016

11905581 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111905,581 10/02/2007
10949 7590 06/22/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Jari Mutikainen
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.
042933/374256 6113
EXAMINER
PATEL, PARTHKUMAR
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARI MUTIKAINEN and MARI KAISA MELANDER
Appeal2015-002228
Application 11/905,581
Technology Center 2400
Before BARBARA A. PARVIS, JOHN P. PINKERTON, and CARLL.
SILVERMAN, Administrative Patent Judges.
PARVIS, 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 1-5, 8-11, 13-17, 20, 21, 23, and 25-32. Claims 6, 7,
12, 18, 19, 22, and 24 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2015-002228
Application 11/905,581
Claimed Subject Matter
Appellants' invention relates to establishing a specific packet
switched connection for providing additional services concerning a circuit
switched connection. Spec. 1: 10-13.
Claim 13 is illustrative and reproduced below with disputed
limitations in italics:
13. A method comprising:
receiving a specific packet-switched session control
message, wherein the specific packet-switched session control
message is bound to a preexisting circuit-switched session and
includes information for establishing a specific packet-switched
connection capable of supporting a specific packet service to a
network node, and wherein the information is encoded in a
format for a session control protocol;
causing the information to be obtained from the specific
packet-switched session control message;
causing the specific packet-switched connection to be
established based on the obtained information;
causing the specific packet-switched connection to be
bound to the circuit-switched session by using a session
identifier; and
controlling the circuit-switched session by causing
packet-switched session control messages to be sent and
received over the specific packet-switched connection
according to the session control protocol.
App. Br. 19 (emphasis added).
The Rejection on Appeal
Claims 1-5, 8-11, 13-17, 20, 21, 23, and 25-32 stand rejected under
35 U.S.C. § 103 as being obvious over Buckley et al. (US 2008/0267171
Al; Oct. 30, 2008) and Sun et al. (US 2008/0254816 Al; Oct. 16, 2008).
Final Act. 4--19.
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Application 11/905,581
Issues
1. Did the Examiner err in finding that the combination of
Buckley and Sun teaches "controlling the circuit-switched session by
causing packet-switched session control messages to be sent and received
over the specific packet-switched connection according to the session
control protocol," as recited in independent claim 13, and commensurately
recited in independent claims 1, 23, 25, and 26?
2. Did the Examiner err in finding that the combination of
Buckley and Sun teaches "causing the specific packet-switched connection
to be bound to the circuit-switched session by using a session identifier," as
recited in independent claim 13, and commensurately recited in independent
claims 1, 23, 25, and 26?
3. Did the Examiner err in concluding that the claimed invention
would have been obvious to one with ordinary skill in the art at the time of
the invention because the Examiner's rationale does not rise to the standard
of articulated reasoning with a rationale underpinning to support the legal
conclusion of obviousness?
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusion that the Examiner erred in rejecting claims 1-5, 8-11, 13-17, 20,
21, 23, and 25-32. We adopt as our own the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 4--
19) and in the Examiner's Answer in response to the Appeal Brief (Ans. 2-
5). Below, we highlight and address specific findings and arguments
regarding independent claim 13 for emphasis.
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Application 11/905,581
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made, but chose not to make in the Briefs, and
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that the combination of Buckley and Sun does not
teach "controlling the circuit-switched session by causing packet-switched
session control messages to be sent and received over the specific packet-
switched connection according to the session control protocol," as recited in
independent claim 13, and commensurately recited in independent claims 1,
23, 25, and 26. App. Br. 1 O; see also Reply Br. 2. Appellants acknowledge
certain of the Examiner's findings regarding Sun, including Sun's teaching
of session initiation protocol (SIP). App. Br. 10-11 (citing Sun i-fi-128-34).
Appellants, however, contend "[t]hese passages from Sun fail to disclose or
render obvious packet-switched messages controlling a circuit-switched
connection." Id. at 11. Appellants, more specifically, contend "Sun only
discloses a packet-switched connection that coexists with a circuit-switched
connection, and fails to illustrate packet-switched messages that control a
circuit-switched connection." Reply. Br. 2.
First, we note that, in its summary of the claimed subject matter,
Appellants point to page 9, lines 22-25, of the Specification with respect to
the above-referenced limitation. App. Br. 4--5. That portion of the
Specification describes, "[t]he sender and the receiver are capable to also
send and receive session control messages according to a session control
protocol (e.g., session initiation protocol[)]." Spec. 9:22-25.
Second, the Examiner points to Sun's teachings regarding an
established Circuit Switching (CS) domain call between user equipment
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Appeal2015-002228
Application 11/905,581
(UE) A and a terminal of subscriber B 1. Ans. 2 (citing Sun if 28). As the
Examiner's finds (Ans. 2-3), Sun teaches that UE A:
sends a SIP [Session Initiation Protocol] message .. .including
parameters such as a Request-URI [Request-Uniform Resource
Identification] composed of the phone number of subscriber B's
terminal B 1, the terminal ability of UE A, and terminal B 1 's
unique identifications like MS-ISDN [Mobile Station
International Subscriber Directory Number], Personal ME
(Mobile Equipment) identifier or SIP Request.
Sun if 29. We agree with the Examiner's finding that Sun teaches
controlling a circuit-switched session using SIP messages. Accordingly, we
are not persuaded by Appellants' contentions.
Appellants also contend that the combination of Buckley and Sun
does not teach "causing the specific packet-switched connection to be bound
to the circuit-switched session by using a session identifier," as recited in
independent claim 13, and commensurately recited in independent claims 1,
23, 25, and 26. 1A .. pp. Br. 12; see also Reply Br. 3. Appellants more
specifically contend that "Buckley discloses only the presence of a session
identifier," but not using the session identifier to "bind the CS session to the
PS session." App. Br. 12-13; see also Reply. Br. 4 ("Buckley paragraphs
[0041] and [0042] suffer from the same defect as Buckley paragraphs [0039]
and [0040]: they illustrate the existence of a session identifier, but fail to
illustrate that this session identifier binds a packet-switched connection to a
circuit-switched connection.").
The Examiner points to Buckley's teachings regarding the ICCF (IMS
Centralized Services Control Function), including tracking call sessions and
related Voice-over-IP bearer traffic between circuit switched and packet
switched domains. Ans. 3--4 (citing Buckley iii! 18, 39). The Examiner
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Application 11/905,581
further points to Buckley's teaching of binding a packet-switched connection
to the circuit-switched session using a session identifier, such as
sip:alice@l 92.0.2.1. Id. at 4 (Buckley i1i1 41, 42).
We agree with the Examiner's findings regarding the teachings of
Buckley. For instance, Buckley teaches:
Upon receipt of a 380 (Alternative Service) response to
the SIP Invite message, the UE shall use the IMRN [IP
multimedia routing number] that was provided in the 3 80
(Alternate Service) Response as the E.164 number to set up a
CS call to. This E.164 number shall be in the contact header of
the 380 (Alternative Service) or in fact it could be in the XML
body.
Buckley i142. Additionally, a portion of computer software code is
reproduced in Buckley for sending a SIP "INVITE" message including the
user telephone number and setting the "Contact" field in the header as
specified above. Id. We agree with the Examiner's finding that this teaches
binding the packet-switched connection to the circuit-switched session.
Accordingly, we are not persuaded by Appellants' contentions.
Appellants further contend "even if some combination of Buckley and
Sun disclosed the disputed features, the asserted basis for combining these
references is deficient." App. Br. 14; Reply Br. 5. The Examiner finds that
Buckley teaches processing SIP calls in an environment that includes a
circuit-switched network and an IMS network (i.e. a packet-switched
domain). Ans. 4. The Examiner also finds that Sun teaches supporting a
combinational circuit-switched call and an IMS session. Id. at 2--4 (citing
Sun i1i128, 29). The Examiner further finds that "having the capability of
controlling the circuit-switched session by causing the packet-switched
session control messages to be sent and received over the specific packet
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Application 11/905,581
switched connection according to the session control protocol, greater inter-
operability between the CS-domain and PS-domain networks can be carried
out." Id. at 4--5. The Examiner concludes "it would have been obvious to
one with ordinary skill in the art at the time the invention was made to
consider the teachings of Sun with the teachings of Buckley to make [the]
system more interoperable and also secured." Id. at 4.
We find that the Examiner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have combined
the teachings of Buckley and Sun. Thus, we are not persuaded by
Appellants' arguments that the Examiner erred.
As highlighted above, we have considered Appellants' arguments and
the evidence of record, but Appellants have not persuaded us of error.
Accordingly, we sustain the Examiner's rejection of independent claims 1,
13, 23, 25, and 26 under 35 U.S.C. § 103, and dependent claims 2-5, 8-11,
14--17, 20, 21, 27-29, and 30-32, not argued separately.
DECISION
We affirm the Examiner's rejection of claims 1-5, 8-11, 13-17, 20,
21, 23, and 25-32 under 35 U.S.C. § 103 as being unpatentable over
Buckley and Sun.
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
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