Ex Parte Noldus et al

Patent Trial and Appeal Board

Feb 21, 2017

13376471 (P.T.A.B. Feb. 21, 2017)

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.
4015-7910/P27694-US1 1089
EXAMINER
MOBIN, HASANUL
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
13/376,471 12/22/2011 Rogier August Caspar Joseph Noldus
24112 7590 02/21/2017
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
02/21/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGIER AUGUST CASPAR JOSEPH NOLDUS
and JOS DEN HARTOG1
Appeal 2016-001917
Application 13/376,471
Technology Center 2100
Before MICHAEL M. BARRY, JOHN D. HAMANN, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 17—32, which are all the claims pending in this appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Telefonaktiebolaget L M
Ericsson (publ). App. Br. 2.
Appeal 2016-001917
Application 13/376,471
Introduction
Appellants state their claimed invention “relates to a method of
processing a request associated with a user from a requesting node to an
answering node in a network.” Spec. 1. Claim 17 is illustrative:
17. A method of processing a request associated with a
user from a requesting node to an answering node in a
telecommunications network; wherein a repository is associated
with the answering node, the repository including a data
structure including a plurality of user profiles associated with a
plurality of users; and wherein a user profile of the plurality of
user profiles is associated with the user; the method comprising:
assigning a unique user index to each user profile in the
data structure, wherein the user index is representative of the
location of the user profile within the data structure;
communicating at least one user index to the requesting
node;
incorporating the user index associated with the user in
the request by the requesting node;
transmitting the request from the requesting node to the
answering node; and
retrieving the user profile corresponding to the user by
the answering node on the basis of the user index in the request.
App. Br. 17 (Claims App’x).
References and Rejections
Claims 17—21, 23, and 25—32 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gallant (US 2002/0165969 Al; Nov. 7, 2002) and
Glitho (US 2002/0160810 Al; Oct. 31, 2002). Final Act. 5-12.
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Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gallant, Glitho, and Gourraud (US 2004/0122895 Al;
June 24, 2004). Final Act. 12—14.
ANALYSIS
Claim 17
In rejecting claim 17, the Examiner finds Gallant teaches all
requirements except for the recited “incorporating” and “transmitting” steps,
which the Examiner finds Glitho teaches. Final Act. 6—8. Appellants argue
the Examiner errs because neither Glitho, nor Gallant, nor their combination
teaches or suggests either of those two steps. App. Br. 7—11. Appellants
further argue the Examiner’s Advisory Action in response to Appellants’
request for reconsideration of the Final Action violates the Administrative
Procedure Act (id. at 9—10), and that there would have been no motivation
for one of ordinary skill in the art to combine Gallant and Glitho as proposed
by the Examiner (id. at 11—13).
Appellants do not persuade us. Instead, we adopt as our own the
Examiner’s findings and reasons for the rejection of claim 17 as set forth in
the Final Action (pp. 6—8) and in the Answer (pp. 2—5). We provide the
following discussion for emphasis.
Appellants argue the Examiner errs because Glitho’s “teach[ing] that
the call server requests location information and user information from a
user profile repository” does not provide a basis for finding Glitho teaches
the recited “incorporating the user index associated with the user in the
request.” App. Br. 8. Appellants contend “[njothing in Glitho teaches or
suggests that the user location disclosed by Glitho is interchangeable with
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just any location, such as the claimed user profile location within a data
structure.” Id. We find this unpersuasive.
Each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference^] . . .
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981)).
The Examiner finds, and Appellants do not contest, Gallant teaches a
user index that “is representative of the location of the user profile within the
data structure,” as recited by claim 1. Final Act. 6—7 (citing Gallant H 75,
81—82, Figs. 3—4). In responding to the argument that Glitho does not teach
claim l’s “incorporating” step, the Examiner explains as follows how the
teachings of Glitho, in combination with teachings of Gallant, teach or
suggest the limitations of that step:
That is, [in Glitho, an] HER incorporates a] user index in the
request to the requesting node (call server 11) to query the
answering node (IN-SCP 10) for call-control instructions with
the provided user index. Glitho [0030] and Fig. 1 discloses that
within the IN-SCP 10 is a Basic Call Process (BCP) 13 that
receives a User Identity (User ID) and a trigger 12 from the call
server 11 related to a specific call event (i.e., [a] requesting
node transmitting the request to the answering node). For the
User ID and trigger received, a user database 14 is accessed to
retrieve a service logic (SF) list for the identified user from a
plurality of user lists. Gallant [0081-0082] and Fig. 3-4
discloses that in step 406, alias table 300 is searched to
determine if the USERID derived in step 404 happens to match
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Application 13/376,471
any of the USERID entries in the table. If so, then process 400
continues at step 408 with use of alias table 300 to map the
particular USERID 302 as an index to a SUBID 304 or
subscriber ID. In step 410, the particular SUBID 304 is then
used as an index into User Profile Table 320 (i.e., assigning
index to the user profile in the data structure). Therefore,
Gallant and Glitho disclose the above argued limitation of the
claim.
Ans. 3.
Glitho’s disclosure of incorporating a user index that differs from the
claimed user index, in view of and in combination with Gallant’s teaching of
the claimed user index, teaches “incorporating the user index . . .,” as
recited. In view of these findings by the Examiner, with which we agree, we
find unpersuasive Appellants’ contention that
nothing in [the Examiner’s] response addresses [Appellants’]
point that the location information of Glitho cannot be
construed as the claimed user index because the location
information of Glitho represents the location of the user within
the wireless network, not the location of the user profile within
a data structure.
Reply Br. 2. Appellants provide no convincing argument or evidence that
combining the teachings of Gallant and Glitho as set forth by the Examiner
was “uniquely challenging or difficult for one of ordinary skill in the art.”
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Regarding Appellants’ contention the Examiner errs in finding a
motivation for an ordinarily skilled artisan to combine Glitho and Gallant to
achieve claim 1, because “it is unclear how the operations of the network
node of Glitho, which is in communication with a call server, could or would
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Application 13/376,471
be incorporated with the calling station (i.e., mobile user device) of Gallant”
(App. Br. 11—13), we again disagree.
We note that a reason to combine teachings from the prior art “may be
found in explicit or implicit teachings within the references themselves, from
the ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed.
Cir. 1998)). Also, “an analysis of obviousness . . . may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009). We find the Examiner’s Answer (pp. 4—5; see also Adv.
Act. 2) provides a thorough explanation for the combination of Gallant’s and
Glitho’s teachings, and sufficiently articulates “reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir 2006).
Regarding Appellants’ argument that the Examiner’s Advisory Action
in response to Appellants’ request for reconsideration of the Final Action
violates the Administrative Procedure Act, Appellants contend the Examiner
failed to address or answer the substance of Appellants’ argument “that
Glitho fails to disclose the claimed incorporation of any location (much less
the claimed user index representative of the location of the user profile
within a data structure) in a request sent from a requesting node to an
answering node.” App. Br. 9. We disagree. The Examiner directly
responded to Appellants’ argument by finding, substantially as discussed
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Application 13/376,471
above, the combination of Gallant and Glitho teaches this requirement. See
Adv. Act. 2.2
Accordingly, we sustain the rejection of claim 17. Appellants provide
no substantive arguments for the patentability of claims 18—24 and 27—32
separate from the arguments for claim 1 and, thus, we also sustain the
rejection of those claims. See 37 C.F.R. § 41.37(c)(i)(iv).
Claim 25
Appellants also argue the Examiner errs in rejecting dependent claim
25, for which the Examiner finds Gallant paragraph 82 teaches the recited
limitation “wherein incorporating the user index associated with the user in
the request by the requesting node comprises: adding the user index in an
existing data element in the request; or incorporating the user index in an
existing data element in the request message” added to claim 17. Final Act.
10 (simply stating “Gallant as modified” teaches the recited requirements).
Appellants contend it is unclear how Gallant teaches the specific
limitation recited in claim 25. App. Br. 14. We agree. Gallant paragraph 82
discusses use of a unique index into a “User Profile Table” for obtaining
“any number of parameters and settings that affect service processing for the
destination user.” Although the Examiner responds by finding Gallant
“discloses adding the user index with an existing data element” (Ans. 6),
Appellants persuade us the identified disclosure of Gallant does not teach or
2 Additionally, we note that arguments relating to the conduct of the
prosecution are properly reviewed by petition to the Director under
37 C.F.R. § 1.181, not by appeal to this Board. No petition having been
filed, it appears that this particular complaint (that in the Advisory Action
the Examiner “fail[ed] to specifically respond to the Appellants’
arguments”) has been waived. See 37 C.F.R. § 1.181(f).
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suggest adding or incorporating the user index “in an existing data element
in the request,” as recited. See Reply Br. 4—5 (emphasis added).
Accordingly, Appellants persuade us the Examiner errs in rejecting
claim 25, and we do not sustain its rejection.
Claim 26
Appellants further argue the Examiner errs in rejecting dependent
claim 26, which adds the limitation “wherein communicating at least one
user index to the requesting node comprises communicating at least one user
index to the requesting node during registration by the user as a network
user” to claim 17. In rejecting claim 26, the Examiner cites Gallant
paragraph 63 and states “Gallant as modified” teaches the recited
requirement. Final Act. 10. Appellants contend “while 1 [0063] discusses
the registration of a user of a SIP phone, nothing in the cited section or the
rest of Gallant, even when combined with Glitho as proposed, teaches or
suggest the communication of location information.” App. Br. 15.
The Examiner responds that Gallant paragraph 63 discloses “name
and password obtained through an authentication challenge to ensure that the
registration is allowed” and also finds Gallant paragraph 66 teaches “user
information can be propagated to other locations during [a] user’s
registration.” Ans. 6—7. Appellants reply that this new finding “appears to
switch gears” and still fails to teach the recited requirement. Reply Br. 5.
We agree.
Gallant paragraph 66 discusses that user “contact information is
typically maintained in location server 240 or in a presence registry” in the
context of seeking to establish communications with that user. While this
disclosure of Gallant mentions that users register “as being present at various
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terminal devices 222,” the Examiner’s explanation that information “can be
propagated” during registration does not explain, and neither is it apparent,
why the cited disclosure of retrieving existing information from a registry
(i.e., of already registered users) teaches the recited requirement of
communicating a user index during registration.
Accordingly, Appellants persuade us the Examiner errs in rejecting
claim 26, and we do not sustain its rejection.
DECISION
For the above reasons, we affirm the rejection of claims 17—24 and
27—32, and reverse the rejection of claims 25 and 26.
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-IN-PART
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