Ex Parte Sanchez Herrero et al

Patent Trial and Appeal Board

Sep 24, 2013

11573500 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUAN ANTONIO SANCHEZ HERRERO,
JOHN MICHAEL WALKER, and
MARIA ESTHER TERRERO DIAZ-CHIRON
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Appeal 2011-004621
Application 11/573,500
Technology Center 2400
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Before JOSEPH L. DIXON, JASON V. MORGAN, and JUSTIN BUSCH,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/573,500

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Introduction
According to Appellants, the invention relates to systems and methods
for providing public service identities created dynamically by application
servers and statically by operation and maintenance systems. Abstract.

STATEMENT OF THE CASE

Exemplary Claims
Claims 1 and 17, reproduced below, are illustrative of the claimed
subject matter:
1. A central entity for handling Public Service Identities in a
network, each Public Service Identity identifying a service
running in an application server, the central entity comprising:
- means for storing Public User Identities for users with a
subscription in the network;
- means for receiving a proposed Public Service Identity
identifying a service;
- means for checking the uniqueness of the received
Public Service Identity against existing Public Service Identities
and Public User Identities;
- means for storing a unique Public Service Identity
assigned to the service along with an identifier of a Home
Subscriber Server assigned to hold the assigned Public Service
Identity; and
- means for providing the identifier of the assigned Home
Subscriber Server upon a query based on the assigned Public
Service Identity.
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17. An application server for executing a service identified
by a Public Service Identity in a network, the service being
invoked by one or more users in the network, or by the network
itself as a result of applying Initial Filter Criteria to a user
registering into the network, the application server having
processing means for executing the service logic and
comprising:
- means for sending a proposed Public Service Identity
identifying a service running in the application server along
with an identifier towards a central entity arranged for carrying
out a subscription locator function; and
- means for receiving from the central entity a valid
unique Public Service Identity assigned to the service along
with an identifier of a Home Subscriber Server assigned to hold
the assigned Public Service Identity.

Reference
Westman U.S. 2005/0002381 A1 Jan. 6, 2005

Rejection
Claims 1-25 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Westman. Ans. 3-8.

ANALYSIS
Missing Limitations
Appellants argue Westman does not disclose a “means for checking
the uniqueness of the received Public Service Identity against existing Public
Service Identities and Public User Identities,” as recited in independent
claim 1. App. Br. 4-7. Appellants also assert that “[i]ndependent claims 17
and 20 recite substantially similar elements.” App. Br. 5. Appellants provide
a review of each of the sections of Westman cited by the Examiner and
assert the portions of Westman relied upon merely use a signal in order to
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determine whether an identity is a Public Service Identity (“PSI”) or a Public
User Identity (“PUI”), whereas claim 1 recites checking whether a Public
Service Identity is unique as compared to other Public Service Identities and
Public User Identities. App. Br. 5. With respect to Westman’s disclosure in
paragraph 6 that PSI uniqueness “shall be ensured” when created, Appellants
argue this is a presumption and does not disclose “means for checking the
uniqueness.” App. Br. 7.
The Examiner finds the broadest reasonable interpretation of
“checking the uniqueness” is simply “distinguishing one object from
another,” which “makes it possible to conclude if one object is similar or
distinct to another object.” Ans. 9. Thus, the Examiner relies on paragraph
105 of Westman, which teaches using an identifier so that the system knows
whether an identity is a PSI or a PUI.
We disagree with the Examiner’s construction. In particular, claim 1
does not recite merely “checking the uniqueness,” but checking the
uniqueness of a PSI “against existing Public Service Identities and Public
User Identities.” A reading of the entire limitation indicates that the means
checks the identification to see if the PSI is unique from other PSIs and
PUIs. Merely determining whether an “object is similar or distinct to another
object” does not meet the recited limitation, when properly construed. Ans.
9. Therefore, we do not sustain the rejection of claim 1. Claim 20 recites
“checking the uniqueness of the received Public Service Identity against
existing Public Service Identities and Public User Identities,” which is
commensurate in scope with the disputed limitation of claim 1. Dependent
Claims 2-16 and 21-25 ultimately depend from independent claims 1 and 20,
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respectively. Therefore, we do not sustain the rejection of claim claims 2-16
and 20-25 for the same reasons as discussed above.
However, claim 17 recites “means for receiving from the central
entity a valid unique Public Service Identity.” There is no recitation in claim
17 that requires checking the uniqueness of a PUI. Thus, Appellants’
arguments are inapposite because they are not commensurate with the scope
of claim 17. Therefore Appellants have not apprised us of error in the
rejection of claim 17, or claims 18 and 19, which depend therefrom.

Combining Multiple Embodiments
Appellants also argue the Examiner has failed to present a prima facie
case of anticipation because the Examiner’s rejection takes elements from
different embodiments within Westman. App. Br. 7-8.
We find this argument unpersuasive. Appellants are correct that an
anticipation rejection may be improper when combining different
embodiments from a single reference. However, in this case, the Examiner’s
citation to portions of Westman described in different embodiments is
appropriate. In Westman, each of the embodiments builds on the prior
embodiments. As can be seen from a review of Westman, the portions of the
third embodiment relied upon by the Examiner in rejecting claims 17-19
(specifically paragraph 105) are also present in the seventh embodiment. The
Examiner has cited to paragraph 105 of Westman because Westman does not
repeat the disclosure for the aspects that are common to multiple
embodiments. Therefore, while at first glance, it may appear that the
rejection combines two separate embodiments, the rejection is actually
relying on a single embodiment, but pointing to the description of part of
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that same embodiment, which is described in discussing a separate
embodiment. Therefore, because claims 17-19 do not include a limitation
commensurate in scope with the limitation argued by Appellants and
because we do not find Appellants’ argument that the anticipation rejection
improperly combines multiple embodiments, we sustain the rejection of
claims 17-19.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-16 and
20-25 is reversed and the Examiner’s rejection of claims 17-19 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ELD