Ex Parte Raether et al

Patent Trial and Appeal Board

May 19, 2016

10867942 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/867,942 06/14/2004
32205 7590 05/23/2016
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
FIRST NAMED INVENTOR
Helmut L. Raether
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.
LUC-503/Raether 1-6 4826
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
info@cplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELMUT L. RAETHER and MICHAEL JOSEPH RUDOLPH
Appeal2014-009030
Application 10/867,942
Technology Center 2400
Before CATHERINE SHIANG, TERRENCE W. McMILLIN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 10, 19, 23, 27-28, and 32-36, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ). We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to provisioning subscriber data. See
generally Spec. 1. Claim 10 is exemplary:
Appeal2014-009030
Application 10/867,942
10. A method for provisioning application server data from a
provisioning system for an IMS network to an IMS application server, the
method comprising the steps of:
receiving the application server data, for the IMS application server, at
the IMS HS S from the provisioning system over a common provisioning
path for a plurality of IMS application servers, wherein the common
provisioning path comprises a predetermined interface from the provisioning
system to the IMS HSS, wherein the application server data comprises
non-transparent data, which is understood syntactically and semantically by
the IMS HSS and transparent data, which is understood syntactically but not
semantically by the IMS HSS;
storing the non-transparent data with known attributes thereof at the
IMS HSS in a non-transitory computer-readable medium;
storing the transparent data as a data block in the non-transitory
computer-readable medium of the IMS HSS for service of the one IMS
application server;
receiving one or more subscription parameters at the IMS HSS from
the provisioning system over the predetermined interface, wherein the one or
more subscription parameters are for a subscribe/notify protocol between the
IMS HSS and the IMS application server and comprise a subscription
request type, a service indication, and an identity of the one IMS application
server, wherein the subscribe/notify protocol is a Sh interface;
subscribing, by the IMS HS S using the one or more subscription
parameters for the subscribe/notify protocol received from the provisioning
system, the one IMS application server to the transparent data of the
application server data on the IMS HSS;
pushing the transparent data to the one IMS application server by the
IMS HSS via the subscribe/notify protocol;
wherein a single service may be provisioned with transparent data
with a single service-indication, multiple services for a same subscriber may
be provisioned with transparent data with multiple service-indications.
References and Rejections
Castro US 2006/0015617 Al Jan. 19,2006
ETSI 3GPP Specifications 23.228 v5.12.0 Release 5, IP Multimedia
Systems Stage 2, published March 2004 ("ETS1-Stage2").
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Appeal2014-009030
Application 10/867,942
ETSI 3GPP Specifications 29.328 V5.7 Release 5, Sh Interface signaling
flows, published March 2004 ("ETSI-Sh").
Claim 10, 19, 23, 27-28, and 32-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over ETS1-Stage2, Castro, and ETSI-Sh.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's response to Appellants' arguments,
and the evidence of record. We concur with Appellants' conclusion that the
Examiner erred in finding ETS1-Stage2, Castro, and ETSI-Sh collectively
teach "subscribing, by the IMS HSS using the one or more subscription
parameters for the subscribe/notify protocol received from the provisioning
system," as recited in independent claim 10 (emphasis added). 1
The Examiner maps the claimed "IMS [IP Multimedia Subsystem]
HSS [Home Subscriber Server]" to ETSI-Sh's HSS. See Ans. 6. With
respect to the disputed claim limitation, the Examiner finds: "subscribing the
application server to the transparent data; (ETSI-Sh-Section 6.1.2 Data
update)[.]" Final Act. 12 (original emphasis omitted); and "ETSI-Sh
disclosed ... step 5 ... (ETSI-Sh-Annex A, Section A.3, 'Sh message
parameters', ETSI-Sh-Section 6.1.3 Subscription to Notifications)[.]" Ans.
7-8 (original emphases omitted).
We disagree. ETSI-Sh's Section 6.1.3 is entitled "Subscription to
notifications (Sh-Subs-Notif)" and states: "The procedure is invoked by the
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2014-009030
Application 10/867,942
AS [Application Servers] and is used: - To subscribe to Notifications."
ETSI-Sh§ 6.1.3 (emphasis added); ETSI-Sh§ 1 (AS is the abbreviation for
Application Server). Similarly, ETSI-Sh's Section 6.1.2 states "ASs that are
subscribed to Notifications" and "any other ASs that are subscribed to
Notifications." ETSI-Sh§ 6.1.2.
As discussed above, the Examiner maps the claimed "IMS HSS" to
ETSI-Sh's HSS. Therefore, we agree with Appellants that contrary to the
claim requirement of"subscribing, by the IMS HSS," the cited ETSI-Sh
portions teach subscribing by the AS-not the IMS HSS. See App. Br. 16.
In fact, the Examiner's response supports Appellants' argument, as the
Examiner finds "ETSI-Sh-Section 6.1.3 Subscription to Notifications
disclosed wherein the AS subscribes to changes in user data that is stored in
HSS." Ans. 25.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 10, and corresponding dependent
claims 23, 27-28, and 32 for similar reasons.
For similar reasons, we do not sustain the Examiner's rejection of
independent claim 19, and corresponding dependent claims 33-36.
DECISION
We reverse the Examiner's decision rejecting claims 10, 19, 23,
27-28, and 32-36.
REVERSED
4