Ex Parte Mutikainen et alDownload PDFPatent Trial and Appeal BoardMay 18, 201612811071 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/811,071 06/28/2010 12358 7590 05/20/2016 Mintz Levin/Nokia Technologies Oy One Financial Center Boston, MA 02111 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. NC62857US-PCT 1245 EXAMINER NAW AZ, ASAD M ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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): IPDocketingBOS@mintz.com IPFileroomBOS@mintz.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JARI MUTIKAINEN, MIIKKA POIKSELKA, and MARKKU TUOHINO Appeal2014-006549 Application 12/811,071 1 Technology Center 2400 Before ELENI MANTIS MERCADER, NATHAN A. ENGELS, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 26-46. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED INVENTION Appellants' claimed invention relates generally to identifying users in an IP Multimedia Subsystem (IMS), including via implicit registration sets each containing, inter alia, a shared identity. See Field of Invention, 1 According to Appellants, the real party in interest is Nokia Corporation. App. Br. 2. Appeal2014-006549 Application 12/811,071 Abstract. Of the claims on appeal, claim 26 is illustrative of the subject matter of the appeal and is reproduced below with emphasis added to highlight disputed limitations. 26. An apparatus comprising: at least one processor; and at least one memory including computer program code, the at least one processor, the at least one memory, and the computer program code configured to cause the apparatus to at least; maintain a first implicit registration set for a first user terminal, the first implicit registration set including a first identity unique to the first user terminal and a shared identity; maintain a second implicit registration set for a second user terminal, the second implicit registration set including a second identity unique to the second user terminal and the shared identity, wherein the first and second implicit registration sets are maintained to enable registration of the first and second user terminals with a network, the first user terminal configured to receive communication requests to the first identity and the second user terminal configured to receive communication requests to the second identity, and both the first and second user terminals configured to receive communication requests to the shared identity, wherein the first identity, the second identity, and the shared identity are public identities, and wherein when one of the public identities in at least one of the first implicit registration set and the second implicit registration set is registered, any remaining public identities in the at least one of the first implicit registration set and the second implicit registration set are registered. REJECTIONS ON APPEAL (1) The Examiner rejected claims 26-45 under 35 U.S.C. § 102(e) as being anticipated by Blanco et al. (US 2010/0232422 Al; publ. Sept. 16, 2010) (hereinafter "Blanco"). 2 Appeal2014-006549 Application 12/811,071 (2) The Examiner rejected claims 46 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Blanco and Alriksson et al. (US 2011/0124339 Al; publ. May 26, 2011) (hereinafter "Alriksson"). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. In reaching our decision, we consider all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments, and we incorporate herein and adopt as our own: (1) the findings, conclusions, and reasons set forth by the Examiner in the April 25, 2013 Final Office Action (Final Act. 2-19) and (2) the reasons and rebuttals set forth in the Examiner's Answer (Ans. 3-7). We incorporate such findings, conclusions, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments below for emphasis. (1) Maintaining implicit registration sets Appellants argue Blanco does not disclose (i) "maintain[ing] a first implicit registration set for a first user terminal, the first implicit registration set including a first identity unique to the first user terminal and a shared identity" and (ii) "maintain[ing] a second implicit registration set for a second user terminal, the second implicit registration set including a second identity unique to the second user terminal and the shared identity," as recited in claim 26. See App. Br. 13; Reply Br. 10-12. Appellants argue these claim limitations require two mobile terminals (i.e., the first user terminal and second user terminal are each separate mobile terminals). See App. Br. 13-14. In support, Appellants cite their Specification which 3 Appeal2014-006549 Application 12/811,071 discloses embodiments having mobile terminals. See Reply Br. 10-11 (citing Spec. 5, 11. 23-32, Figs. 1, 2, 4 (depicting antennas 12 associated with wireless user terminals 10) ). Appellants also argue "the language of the claims requires that the user terminals be wireless because the wireless terminals utilize an 'internet protocol multimedia subsystem' which is a subsystem for passing internet protocol data." Reply Br. 11-12 (citing claims 27, 28). As to Blanco, Appellants argue it instead discloses "only a single mobile terminal." See id. (citing Blanco Figs. 3 (illustrating one mobile terminal 9a which is associated with one user 91 ), 4; i-fi-1 41, 42). Appellants argue Blanco' s other terminals - terminals 9b, 9c, and 9d - are wired terminals rather than mobile terminals. See Reply Br. 12. Appellants also contend one of ordinary skill in the art "would immediately recognize that the claimed 'first and second user terminals' are not interchangeable with Blanca's wired terminals at least because wired and wireless terminals are fundamentally different and use different communications protocols." See Reply Br. 14. The Examiner finds Blanco discloses this disputed limitation. See Ans. 3--4. Specifically, the Examiner finds Blanco discloses, inter alia, a mobile device 9a, conventional telephone 9b, and networked desktop PC 9d. See Blanco i137, Fig. 3. The Examiner does not limit the claim language to mobile devices and instead finds these devices (9a, 9b, and 9d) provide input/ output links for a user and are user "terminals" under the broadest reasonable interpretation of the term. See Ans. 4, 6. The Examiner also finds these devices each have an identity unique to them-i.e., an IMS Public User Identity ("IMPU"), such as IMPU-2 for 9a, IMPU-5 for 9b, and 4 Appeal2014-006549 Application 12/811,071 IMPU-4 for 9d- as well as a shared identity (i.e., a user alias IMPU-6). See Ans. 3---6 (citing Blanco i-fi-137, 39; Fig. 3); see also Ans. 4 (citing Blanco i160, Fig. 10 (disclosing the de-registration ofIMPU-6 causes other terminals to be de-registered)). We are not apprised by Appellants of error in the Examiner's findings and reasoning. We agree with the Examiner that Blanco discloses a first user terminal and a second user terminal in accordance with the claim language, including that the broadest reasonable interpretation of user terminal includes a mobile device, as well as a conventional telephone and networked PC. See Blanco i-fi-137, 39; Figs. 3, 4. We disagree with Appellants that the claimed user terminals should be limited to mobile terminals based on the cited embodiments from the Specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (stating when construing a claim term, a court should not import narrower definitions for terms based on specific embodiments disclosed in the specification); In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating limitations not appearing in the claims cannot be relied upon for patentability). In addition, the Specification makes clear embodiments are not limited to mobile terminals: Referring to FIG. 1, an illustration of one type of system that may benefit from exemplary embodiments of the present invention is provided. The system, method and computer program product of exemplary embodiments of the present invention will be primarily described in conjunction with mobile communications applications. It should be understood, however, that the system, method and computer program product of exemplary embodiments of the present invention may be utilized in conjunction with a variety of other applications, both in the mobile communications industries and outside of the mobile communications industries. For example, the system, method and computer program product of exemplary embodiments of the 5 Appeal2014-006549 Application 12/811,071 present invention may be utilized in conjunction with wireline and/or wireless network (e.g., Internet) applications. Spec. 5, 11. 13-22 (emphasis added). Appellants also argue "the language of the claims requires that the user terminals be wireless because the wireless terminals utilize an 'internet protocol multimedia subsystem' which is a subsystem for passing internet protocol data." Reply Br. 11-12 (citing claims 27, 28). We find this argument unpersuasive, including because claim 26 lacks the "internet protocol multimedia subsystem" limitation. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (finding "the name of the game is the claim"). Instead, "internet protocol multimedia subsystem" appears in claims 27 and 28, which depend from claim 26. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en bane) (stating the presence ofa dependent claim adding a particular limitation creates a presumption that the limitation is not present in the independent claim); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (finding the doctrine of claim differentiation is at its strongest where Appellants want to read a feature from a dependent claim into a term in an independent claim). (2) Shared identity Appellants argue Blanco fails to disclose "first and second user terminals configured to receive communication requests to the shared identity," as recited in claim 26. See App. Br. 14. Appellants first argue "Blanco does not disclose an identity that is shared between two user terminals because Blanco only discloses one mobile terminal." See id. (emphasis omitted). In addition to being mobile terminals, Appellants contend the claim language of a first user terminal and second user terminal 6 Appeal2014-006549 Application 12/811,071 refers to terminals of ajzrst user and a second user, rather than two user terminals belonging to a single user. See Reply Br. 14 ("As a matter of logic and grammar, the 'terminal' of a 'first user' may be written as either 'first user's terminal' or the claimed 'first user terminal."'); see also App. Br. 14. Appellants then argue Blanco fails to disclose this limitation because Blanco's identities are not shared between two users. See App. Br. 14 (citing Blanco i-f 57, Fig. 8 (arguing "Blanco merely discloses various ways for one user ... to contact/call another user")). The Examiner finds Blanco discloses this disputed limitation. See Ans. 5---6. As discussed above, the Examiner finds the first and second user terminals are not limited to mobile terminals, and finds Blanco discloses first and second user terminals (e.g., 9a, 9b, and 9d) configured to receive communication requests to the shared identity (i.e., user alias IMPU-6). See supra; Ans. 6 (citing Blanco i-fi-137, 39, 60; Figs. 3, 8, 10). As to the number of users, the Examiner finds claim 26 does not limit the shared identity to being between two different users. See Ans. 6. The Examiner finds "[t]he users can be the same, but the terminals must be different." Id. We are not apprised by Appellants of error in the Examiner's findings and reasoning. As above, we agree with the Examiner that Blanco discloses a first user terminal and a second user terminal (e.g., 9a, 9b, and 9d) having a shared identity (i.e., user alias IMPU-6) in accordance with the claim language. See Blanco i-fi-137, 39, 60; Figs. 3, 8, 10. We also agree with the Examiner that the broadest reasonable interpretation of the claim language provides for one user with multiple user terminals rather than being limited to two users. Furthermore, we disagree with Appellants that the phrases "first user's terminal" and "first user terminal" have the same meaning. 7 Appeal2014-006549 Application 12/811,071 CONCLUSION Based on our findings above, we sustain the Examiner's rejection of claim 26, as well as claims 35 and 43 which Appellants assert recite similar features to claim 26 and for which Appellants did not provide separate arguments for patentability. We also sustain the Examiner's rejection of claims 27-34, 36-42, and 44--46 for which Appellants did not provide separate arguments for patentability, but instead relied upon their dependence on either claim 26, 35, or 43. DECISION In accordance with the reasoning above, we affirm the Examiner's rejections of claims 26-46. 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 8 Copy with citationCopy as parenthetical citation