Ex Parte Przybysz et al

Patent Trial and Appeal Board

May 12, 2016

12596748 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/596,748 02/24/2010
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
05/16/2016
FIRST NAMED INVENTOR
Hubert Przybysz
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.
P23342-US1 4171
EXAMINER
ZONG, RUOLEI
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUBERT PRZYBYSZ and TIMO FORSMAN
Appeal2014-009109
Application 12/596,748 1
Technology Center 2400
Before JEAN R. HOMERE, JASON V. MORGAN, and
DAVID J. CUTITTA, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, and 4-19. App. Br. 1. Claim 3 has been
canceled. Claims App. We have jurisdiction over this appeal under 35
U.S.C. § 6(b) (2015).
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson (publ) (see Appeal Br. 1 ).
Appeal2014-009109
Application 12/596,748
SUMMARY OF DECISION
We AFFIRM-IN-PART and designate our affinnance as NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
SUMMARY OF INVENTION
According to Appellants, the invention relates to a node and method
of handling of user identities in a Session Initiation Protocol (SIP) request
received by an IP Multimedia Subsystem ("IMS") network. Spec. 2: 5-8.
In particular, upon determining that the SIP destination identity is within a
range of identities owned by an operator of the network, but is currently
unallocated to a subscriber or service of the network, a message is routed to
one or more SIP application servers within the network, and a service logic
is implemented at the application server(s) specific to a network-owned but
unallocated SIP identity. Spec. 4: 26-33.
Of those claims before us on appeal, claims 1 and 17 are independent.
Claim 1, reproduced below, is exemplary of the claimed subject matter:
1. A method of handling a SIP request received by an IP
Multimedia Subsystem (IMS) network, the method comprising
the steps of:
determining whether or not a SIP destination identity is
within a range of identities owned by an operator of the IMS
network but is currently unallocated to a subscriber or service
of the IMS network; and,
if yes, routing the SIP request to one or more SIP
application servers within the IMS network and implementing
service logic at the one or more application servers specific to
the network owned, but unallocated, SIP identity.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Stafford
Torabi
Garcia-Martin
US 7,796,578 B2
US 2002/0160776 Al
US 2006/0212511 Al
REJECTIONS
Sep. 14, 2010
Oct. 31, 2002
Sep.21,2006
Claims 1, 2, 4-13, and 16-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stafford in view of Torabi.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stafford modified by Torabi, and further in view of
Garcia-Martin.
ISSUES
Did the Examiner err by finding the combination of Stafford and
Torabi teaches or suggests a method as recited in claim 1?
Did the Examiner err by finding the combination of Stafford and
Torabi teaches or suggests a node as recited in claim 17? More specifically,
did the Examiner err by finding Torabi's description of an unattached,
unregistered user mobile telephone teaches a SIP destination identity that is
unallocated to a subscriber or service of the IMS network, as recited in claim
17?
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Application 12/596,748
ANALYSIS
Claims 1, 2, 4-16
In rejecting claim 1, the Examiner finds that Stafford discloses
"determining whether or not a SIP destination identity is within a range of
identities owned by an operator of the IMS network" (emphasis added).
Final Act. 2-3. Appellants do not present persuasive arguments or
evidence rebutting the Examiner's finding, which we find reasonable and
adopt as our own.
The Examiner finds that Stafford does not explicitly disclose:
determining whether the identity is currently unallocated to a
subscriber or service of the IMS network and, if yes, routing the
SIP request to one or more SIP application servers within the
IMS network and implementing service logic at the one or more
application servers specific to the network owned but unallocated
SIP identity.
Final Act. 3. Instead, the Examiner turns to Torabi at paragraphs 13-17 to
teach these limitations. Final Act. 3.
Appellants contend the Examiner erred in relying upon Torabi
because "[n]either 'unattached' nor 'unregistered' are equivalent to
'unallocated' as that term is used in claim l." App. Br. 4.
For the reasons that follow, Appellants' arguments regarding Torabi
are not persuasive because they are not commensurate with the broadest
reasonable interpretation of claim 1.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims
broadly during prosecution is not unfair to the applicant ... because the
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applicant has the opportunity to amend the claims to obtain more precise
claim coverage." Id.
Claim 1 is directed to a method of handling a SIP request received by
an IMS network, where the method includes several steps that are performed
only if certain conditions precedent are met. See Appeal Br. 13, Claims
Appendix. For example, claim 1 recites, in pertinent part:
determining whether or not a SIP destination identity is
within a range of identities owned by an operator of the IMS
network but is currently unallocated to a subscriber or service
of the IMS network; and,
if yes, routing the SIP request to one or more SIP
application servers within the IMS network and implementing
service logic at the one or more application servers specific to
the network owned, but unallocated, SIP identity.
Id. (emphases added).
Due to the language in the "determining whether or not a SIP
destination identity ... is currently unallocated" and "if yes, routing ... "
steps, logically, the "if yes, routing ... "and "implementing service logic"
steps must be performed, if at all, after the "determining whether or not a
SIP destination identity is within a range of identities" and "is currently
unallocated" steps and only if the condition precedent recited in the steps is
met. That is, if the method determines the SIP destination identity is not
within a range of identities owned by an operator of the IMS network or is
not currently unallocated then the "if yes, routing ... " and "implementing
service logic" steps need not be performed. See, e.g., Spec. Fig. 2 and pg. 7,
lines 22-27.2
2 The cited portion of the Specification describes:
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Thus, given the language recited in the remaining steps of claim 1, the
remaining steps need be reached only if the method determines the SIP
destination identity is within a range of identities owned by an operator of
the IMS network and is currently unallocated to a subscriber or service of
the IMS network. See id. Consequently, in the event that the SIP
destination identity is not within a range of identities owned by an operator
of the IMS network or is not currently unallocated, the remaining steps of
claim 1 need not be performed in the method as recited.
Based on the claim limitations as written, the broadest reasonable
interpretation of claim 1 encompasses an instance in which the method ends
when the SIP destination identity is determined as not within a range of
identities owned by an operator of the IMS network, such that the steps of
"routing the SIP request to one or more SIP application servers within the
IMS network" and "implementing service logic at the one or more
application servers specific to the network owned, but unallocated, SIP
identity" are not reached. In other words, claim 1 as written covers at least
two methods, one in which the SIP destination identity is determined as not
within a range of identities owned by an operator of the IMS network and
one in which the SIP destination identity is determined as within a range of
Unallocated Identity Determination (UID) - new information
about the scope and range of public user identities and
telephone numbers owned by the operator will be introduced
into the IMS system, so that the IMS system will be able to
determine/recognize that a particular user identity belongs to
the operator's scope/range and that the identity is currently
unallocated.
(emphasis added).
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identities owned by an operator of the IMS network. Thus, the broadest
reasonable interpretation encompasses a method where only the step of
"determining whether or not a SIP destination identity is within a range of
identities owned by an operator of the IMS network" is performed to
determine that the SIP destination identity is not within a range of identities
owned by an operator of the IMS network. 3
The Examiner determined that the prior art would have rendered
unpatentable, the method covered by claim 1, and for the reasons that
follow, we do not find persuasive Appellants' arguments contesting this
rejection.
The Examiner in this case was able to present a prima facie case of
obviousness as to claim 1 by providing evidence to show obviousness of the
"determining whether or not a SIP destination identity is within a range of
identities owned by an operator of the IMS network" step over Stafford.
The Examiner did not need to present evidence of the obviousness of
the remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim (e.g., instances in
which the SIP destination identity is determined not to be within a range of
identities owned by an operator of the IMS network such that the condition
precedent for the "routing the SIP request ... and implementing service
logic" steps of claim 1 has not been met). The Examiner determined that
3 The Board has previously construed similar method steps in this same
manner. See, e.g., Ex parte Fleming, Appeal 2014-002849, 2014 WL
7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex
parte Urbanet, Appeal 2011-002606, 2012 \VL 4460637 (PTAB Sept. 19,
2012) (non-precedentia1), and Ex parte Kat::.:, Appeal 2010-006083, 2011
WL 514314 (BPAI Jan. 27, 2011) (non-precedential).
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Stafford, as modified by Torabi, renders obvious the method of claim 1,
including each of the recited steps. Final Act. 2--4. In this context,
Appellants' failure to present arguments in the Appeal Brief regarding the
Examiner's finding that Stafford discloses "determining whether or not a
SIP destination identity is within a range of identities owned by an operator
of the IMS network" is tantamount to a waiver of such arguments.
Furthermore, because Appellants' arguments are directed to the failure of the
Examiner to demonstrate adequately that the "if yes, routing the SIP request
... and implementing service logic" steps, of claim 1 are rendered obvious
by Stafford and Torabi, the arguments are not commensurate with the
broadest reasonable interpretation of claim 1, and are, therefore,
unpersuasive.
With respect to the rejection of dependent claims 2 and 4-16,
Appellants rely on the arguments presented above in response to the
rejection of claim 1. Appeal Br. 11. Because the claims are not separately
argued, they stand or fall together. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
We therefore also sustain the rejection of dependent claims 2 and 4-16
under 35 U.S.C. § 103(a) as being obvious over Stafford in view ofTorabi.
Claims 17-19
Independent claim 17 is directed to a different statutory class of
invention than method claim 1. Although claim 17 recites functions that are
similar to the steps recited in the method of claim 1, claim 17 is directed to a
node, which is a type of machine or device. The broadest reasonable
interpretation of a device claim having structure that performs a function,
which occurs only if a condition precedent is met, still requires structure for
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performing the function should the condition occur. This interpretation of
the node claim differs from the method claim because the structure (i.e., at
least one processor to execute instructions for carrying out the recited
function should the recited condition be met) is present in the node
regardless of whether the condition is met and the function is actually
performed.
Unlike claim 1, which is written in a manner that does not require all
of the steps to be performed should the condition precedent not be met,
claim 17 is limited to the structure capable of performing all the recited
functions. In other words, from this perspective, the node of claim 17 is
narrower in scope than the method of claim 1. Thus, in order to show
anticipation or obviousness of a claim reciting structure that performs a
function tied to a condition precedent, the Examiner must cite prior art that
discloses or renders obvious such structure.
In rejecting claim 1 7, the Examiner notes that:
Stafford does not explicitly discloses [sic] determining whether
the identity is currently unallocated to a subscriber or service of
the IMS network and, if yes, routing the SIP request to one or
more SIP application servers within the IMS network and
implementing service logic at the one or more application servers
specific to the network owned but unallocated SIP identity.
Final Act. 10-11. Instead, the Examiner turns to Torabi at paragraphs 13-17
to teach these limitations. Id.
More specifically, the Examiner relies upon Torabi's description of an
unattached, unregistered user mobile telephone equipment ("UE") to suggest
a SIP destination identity that is unallocated to a subscriber or service of the
IMS network, as claimed. Final Act. 11 and Answer 3.
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Appellants contend the Examiner errs because "neither 'unattached'
nor 'unregistered' are equivalent to 'unallocated"' as that term is used in
claim 17. App. Br. 4. In support of this contention, Appellants state:
So, the fact that the entity can be registered (i.e. it can
attach/register a UE with the system) or unregistered (i.e. it can
detach/deregister a UE from the system) in the system implies
that its identity is allocated. This fact is supported by the
teaching in Torabi that "[w]hen a UE is unattached or
unregistered, some or all services subscribed to by the
associated user may not be invoked."
App. Br. 5 citing Torabi ii 4;
Appellants thus contend the entity being registered or unregistered
"implies that its identitv is allocated; i.e., that the UE is subscribed to the
operator's service." Reply Br. 5.
We agree with Appellants that the Examiner erred in rejecting claim
17 as being obvious over Stafford and Torabi. The Examiner's rejection
cannot be sustained because the Examiner fails to present sufficient findings
that show the UE in Torabi teaches or suggests an SIP destination identity
unallocated to a subscriber or service in light of Torabi's indication that the
UE is associated with a subscriber. Torabi ii 13. That is, the Examiner relies
upon the unattached, unregistered UE described in the cited portions of
Torabi to suggest a SIP destination identity that is currently unallocated to a
subscriber or service. Final Act. 3 and Answer 3. Torabi states, however,
that the UE relied upon in the rejection is "associated with one of its
subscribers." Torabi ii 13. As persuasively argued by Appellants, the fact
that Torabi' s UE is "associated with one of its subscribers," even when
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determined to be unattached or unregistered to the home network, indicates
that the UE has been allocated to a subscriber. Moreover, we agree with
Appellants assertion that because Torabi's disclosure specifies that the
associated UE has subscribed to services, this also indicates that the UE has
been allocated an identity. App. Br. 5 (citing Torabi ,-i 4 ("[ w ]hen a UE is
unattached or unregistered, some or all services subscribed to by the
associated user may not be invoked")). Because Appellants have shown at
least one reversible error in the examiner's rejection, we need not reach
Appellants' remaining arguments.
Accordingly, we reverse the Examiner's rejection of independent
claim 17 as being obvious over Stafford in view of Torabi. Similarly, we do
not sustain the Examiner's rejection of claims 18 and 19, which depend from
claim 17.
DECISION
The Examiner's decision to reject claims 1, 2, 4-13, and 16 under 35
U.S.C. § 103(a) as unpatentable over Stafford and Torabi is AFFIRMED.4
4 In the event of further prosecution, the Examiner should consider
ascertaining whether independent claims 1 and 17 meet the requirements of
35 U.S.C. 112, second paragraph, to particularly point out and distinctly
define the metes and bounds of the subject matter to be protected by the
patent grant. As an example, the Examiner should ascertain whether there is
sufficient antecedent basis for the limitation "network owned, but
unallocated, SIP identity." Similarly, the Examiner should ascertain whether
claim 17 has sufficient antecedent basis for the limitations "the SIP
destination identity" and "the request" at line 7, and for the limitation "the
message" at line 9.
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The Examiner's decision to reject claims 14 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Stafford modified by Torabi, and further in
view of Garcia-Martin is AFFIRMED.
The Examiner's decision to reject claims 17-19 under 35 U.S.C.
§ 103(a) as unpatentable over Stafford and Torabi is REVERSED.
Because in some instances the claim interpretation and/or fact finding
and reasoning relied on by the Board to sustain the rejections of claims 1, 2,
and 4-16 differs from the facts and reasoning relied on by the Examiner, we
designate our affirmance of the rejections of these claims as NEW
GROUNDS OF REJECTION so as to provide Appellants with a full and fair
opportunity to respond to the thrust of the rejections. This decision should
not be construed to imply that, in all instances in which the Board affirms a
rejection based on a claim interpretation that differs from the claim
interpretation applied by the Examiner, the thrust of the rejection has
changed to as to warrant designation of the affirmance as a new ground of
rejection. Rather, in this particular case, in light of the scope of the
arguments presented by Appellants, the Board deemed it, in the interests of
fairness to Appellants, appropriate to designate the affirmance as a new
ground of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
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