11503279 (P.T.A.B. May. 27, 2014)

Ex Parte Pattan et al

Patent Trial and Appeal BoardMay 27, 2014

11503279 (P.T.A.B. May. 27, 2014)

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. 11/503,279 08/11/2006 Basavaraj J. Pattan 678-2736 (P14682) 9568 66547 7590 05/27/2014 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER NGUYEN, THANH T ART UNIT PAPER NUMBER 2448 MAIL DATE DELIVERY MODE 05/27/2014 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 BASAVARAJ J. PATTAN and RADHIKA RAGHAVENDRAN ____________ Appeal 2012-011661 Application 11/503,279 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and JEFFREY S. SMITH, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-24.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants’ appeal claims 1-24 (App. Br. 2). The Examiner stated claims 11 and 25 are allowable if rewritten in independent form (Final Rej. 4-5). As Appellants note, there is no claim 25, and it appears the Examiner meant claims 11 and 23 (App. Br. 2). The Examiner has not challenged this assumption. Appeal 2012-011661 Application 11/503,279 2 STATEMENT OF THE CASE The invention is directed to a method of transferring system messages for distinguishing the system messages from normal messages (Spec. 3:7- 10). Independent claim 1 is reproduced below. 1. A method for transferring system messages using Session Initiation Protocol (SIP) of a client terminal in a system for providing communication service using the SIP, comprising the steps of: receiving a system message request from a server; making up a system message response corresponding to the received system message request by introducing a feature tag distinguishing the system messages from general SIP messages and a Multipurpose Internet Mail Extensions (MIME) content type indicative of a format of a message included in a message body of an SIP message into a message header of the SIP message, and introducing a system message response document describing content for responding to the system message request in the message body of the SIP message; and transmitting the system message response to the server. REFERENCES and REJECTION The Examiner rejected claims 1, 7, 13, and 17 under 35 U.S.C. § 103(a) based upon the teachings of Campbell (“Session Initiation Protocol (SIP) Extension for Instant Messaging,” RFC 3428, Dec. 2002) and Horvitz (US 2003/0101190 A1, May 29, 2003).2 2 Although the Examiner indicated on form PTOL-326 claims 1-24 are pending and rejected, no rejection was made for claims 2-6, 8-12, 14-16, and 18-24 in the Answer. Appeal 2012-011661 Application 11/503,279 3 ANALYSIS Appellants contend the Examiner relies on Campbell when the Examiner means to rely on Rosenberg, as Campbell is only 18 pages in length and the Examiner refers, for example, to pages 126, 181, 182, and 187 (App. Br. 4; Ans. 4; Final Rej. 3). Appellants also assert the Examiner has continued to make this error without clarifying which reference the Examiner is relying (App. Br. 4). Appellants further contend Horvitz discloses “a schematized notification may accompany any transmission of data, and the encoding for the various schema metadata can be in different formats, such as MIME,” but does not disclose a “feature tag in the header of an SIP message that distinguishes the system messages from general SIP messages” as claimed (App. Br. 4). We agree. The Examiner has not addressed Appellants’ concerns regarding Campbell, except to assert “The Examiner clearly stated that Campbell discloses introducing a system message response document . . . ,” as claimed, and referenced pages not found in Campbell (Ans. 7). Further, the Examiner asserts he has clearly pointed out “Horvitz discloses making up a system message response . . . by introducing a feature tag distinguishing the system messages from general SIP message,” again, citing Horvitz’ paragraph [0076]. However, the Examiner has not addressed Appellants’ contentions that Horvitz discloses “a schematized notification may accompany any transmission of data, and the encoding for the various schema metadata can be in different formats, such as MIME, but Horvitz does not disclose a feature tag distinguishing system messages from general SIP messages (Ans. 7; App. Br. 4; Reply Br. 2). Appeal 2012-011661 Application 11/503,279 4 Thus, because the Examiner has not addressed Appellants’ contentions we do not sustain the Examiner’s rejection of claims 1, 7, 13, and 17.3 DECISION The Examiner’s decision rejecting claims 1, 7, 13, and 17 under 35 U.S.C § 103 is reversed. REVERSED tc 3 Claims 2-6, 8-12, 14-16, and 18-24, for which no rejection was entered by the Examiner, stand with their ultimate base claims.