Ex Parte SUNG et al

Patent Trial and Appeal Board

Dec 16, 2013

11939172 (P.T.A.B. Dec. 16, 2013)

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.
11/939,172 11/13/2007 Sang-Kyung SUNG 678-3219 (P15140) 5472
66547 7590 12/17/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
MAPA, MICHAEL Y
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
12/17/2013 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 SANG-KYUNG SUNG, KYUNG-TAK LEE,
WUK KIM, JAE-KWON OH, and SEUNG-YONG LEE
____________________

Appeal 2012-007611
Application 11/939,172
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007611
Application 11/939,172
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-41. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants’ claimed invention is generally related to a messaging
service, and more specifically, to a system and method for providing a
converged messaging service, which can be compatibly used with or replace
various services, such as an Instant Messaging (IM) service, a Short
Message Service (SMS), a Multimedia Message Service (MMS), a Voice
over Internet Protocol (VoIP) service, and a Push To Talk (PTT) over
Cellular (PoC) service. (Spec. 1.)
Independent claim 1, reproduced below, is representative of the
claimed subject matter.
1. A system for providing a converged messaging service, the
system comprising;
[a] a Converged Messaging Server (CMS) for receiving,
from an originating client, a message in the form of the
converged messaging service, which includes a converged
messaging service IDentification (ID) tag, and transmitting the
message to a target network; and
[b] a target Session Initiation Protocol (SIP)/Internet
Protocol (IP) core for, [b1] if the message is received and a
target client supports an IP Multimedia Core Network (CN)
Subsystem (IMS) service, [b2] translating the converged
messaging service ID tag to an ID tag corresponding to a
messaging service supported by the target client and [b3]
transmitting a message containing the translated ID tag to the
target client according to a process of the messaging service
supported by the target client,
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Application 11/939,172
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[c] wherein the converged messaging service ID tag does
not indicate a messaging service type supported by the target
client.
(Disputed limitations emphasized, elements lettered).
REJECTIONS
R1. The Examiner rejected claims 29 and 31 under 35 U.S.C. 102(b)
as anticipated by Son (US Patent Publication 2005/0243978 A1, Nov. 3,
2005).
R2. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Son.
R3. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Son and Boberg (US Pat. App. Pub. No. 2008/0008106
A1, Jan. 10, 2008).
R4. The Examiner rejected claims 33 and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Son and Marriott (US Pat. App. Pub. No.
2004/0225753 A1, Nov. 11, 2004).
R5. The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Son, Marriott, and Boberg.
R6. The Examiner rejected claims 1-3, 6-8, 13-18, 21-23, 28, and 36-
41 under 35 U.S.C. § 103(a) as unpatentable over Son and Osborn (US Pat.
App. Pub. No. 2007/0156909 A1, Jul. 5, 2007).
R7. The Examiner rejected claims 4, 5, 9, 19, 20, and 24 under 35
U.S.C. § 103(a) as unpatentable over Son, Osborn, and Boberg.
R8. The Examiner rejected claims 10, 11, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Son, Osborn and Marriott.
R9. The Examiner rejected claims 12 and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Son, Osborn, Marriott and Boberg.
Appeal 2012-007611
Application 11/939,172
4
GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the
anticipation rejection R1 of claims 29 and 31 on the basis of representative
claim 29. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
1

Based on Appellants' arguments, we decide the appeal of the
obviousness rejection R6 of claims claims 1-3, 6-8, 13-18, 21-23, 28, and
36-41 on the basis of claim 1. (Id.).
We address the rejections R2 - R5 and R7 - R9 separately, infra.

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 39 - 46). We highlight
and address specific findings and arguments below:
R1. CLAIM 29
Regarding the claim 29 limitation of "wherein the converged
messaging service ID tag does not indicate a messaging service type
supported by the target client," Appellants contend "the message service
field of Son includes an originating messaging service field and a recipient

1
Appellants filed a Notice of Appeal on Oct. 17, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.
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Application 11/939,172
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messaging service field" (Reply Br. 2) and "if only the originating
messaging service field exists [in Son's message service field], then the
Examiner's alleged converged messaging ID of Son does not exist." (Reply
Br. 3).
Appellants' contentions are not persuasive. Regarding the patentable
weight given to the negative limitation at issue, we find that in Appellants'
Specification (page 15, line 24 to page 16, line 30), the cited support for the
limitation at issue (App. Br. 6), does not identify any "descri[ption of] a
reason to exclude the relevant limitation." Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material." Id.).
Accordingly, we find there is no support in the cited section of
Appellants' Specification for the contested negative limitation, and therefore,
a question arises as to how much patentable weight, if any, should be given
to the limitation at issue. (App. Br. 6). Moreover, claim 29 is directed to a
hardware system that comprises a “Converged Messaging Server (CMS)”
and “CM data storage.” We observe the informational content of the
“converged messaging service ID” (within the “wherein” clause) does not
further limit the structure of the claimed (hardware) system of claim 29, thus

Appeal 2012-007611
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raising the additional question of how much weight, if any, should be given
to the data content of the converged messaging service ID itself?
2

Even if we assume arguendo that the contested limitations may be
accorded patentable weight by our reviewing court, we find the weight of the
evidence supports the Examiner's finding of anticipation, as discussed
below.
Appellants' contention that Son's messaging service field includes
both (1) an originating messaging service field and (2) a recipient messaging
service field is not persuasive. (Reply Br. 3). The Examiner finds, and we
agree, that Son discloses an embodiment where the message service field
includes (1) the originating messaging service field, and does not include (2)
the recipient's messaging service field. (Ans. 42-43; ¶[0105] "Here, it
should be noted that a recipient messaging service field and/or an originating
messaging service field may be included in the message."). This
embodiment discloses the claimed "converged messaging service ID tag
does not indicate a messaging service type supported by the target client."
(Ans. 42-43; Son Fig. 10; ¶[0105]). For these reasons, on this record, we are
not persuaded the Examiner erred. Accordingly, we sustain the anticipation
rejection R1 of claim 29, and of claim 31, which falls therewith.

2
See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
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R6. CLAIM 1
A.
Regarding the claim 1 limitation [b2] "translating the converged
messaging service ID tag to an ID tag corresponding to a messaging service
supported by the target client," Appellants contend:
the Examiner describes how Son a message itself, not a
converged messaging service ID tag, is converted to a
messaging type supported by the recipient client. However,
converting a message to a format supported by a recipient is not
an equivalent of translating the converged messaging service ID
tag to an ID tag corresponding to a messaging service supported
by the target client.
(Reply Br. 3).
Appellants' contentions are not persuasive. At the outset, we conclude
that Appellants’ arguments urging patentability are predicated on non-
functional descriptive material that is not accorded patentable weight.
3

Specifically, the claimed "ID tag corresponding to a messaging service
supported by the target client" is a mere arrangement of data that is non-
functional descriptive material per se. Specifically, the claim does not
positively recite that the "ID tag . . . " is used to change or alter any machine

3
See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). See also MPEP §2111.05,
Eighth Edition, Rev. 9, Aug. 2012).
Appeal 2012-007611
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or computer function. Within the meaning of claim 1, the "ID tag . . . " is
mere data transmitted with the message.
4

Even if we assume arguendo that the nonfunctional descriptive
material may be accorded weight by our reviewing court, we find the weight
of the evidence supports the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness, as discussed below.
The Examiner finds, and we agree, that Son would have taught or
suggested limitation [b2] "translating the converged messaging service ID
tag to an ID tag corresponding to a messaging service supported by the
target client" by describing converting the originator's message content and
envelope including the recipients' messaging service field into a format
corresponding to the messaging service supported by the target client. (Ans.
14-15, Son ¶¶ [0078]-[0079], ¶¶ [0104]-[0107], ¶ [0133]; Figs. 8A and 10).
Specifically, Son's converted message's header includes "the
expansion of a given recipient address to the fully qualified address that
identifies the recipient messaging service." (Emphasis added; ¶[0080];
¶[0079]). Therefore, Son's converted message and header including a "fully
qualified address that identifies the recipient messaging service" would have
taught or suggested the broadest reasonable interpretation of the claimed "an
ID tag corresponding to a messaging service supported by the target client."

4
Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
also MPEP §2111.05 Eight Edition, Rev. 9, Aug. 2012.
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In particular, Son's converted message's qualified address ("ID tag")
"corresponds to a messaging service supported by the target client" because
Son's qualified address identifies the recipient messaging service. (Id.).
B.
Regarding the claim 1 limitation [c] "wherein the converged
messaging service ID tag does not indicate a messaging service type
supported by the target client," Appellants assert claim 1 is patentable for the
same reasons advanced regarding claim 29's commensurate limitation.
(Reply Br. 1-2). However, we find no deficiencies in the rejection R1 of
claim 29 for the reasons discussed above.
C.
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection R6 of claim 1 and of claims 2,
3, 6-8, 13-18, 21-23, 28, and 36-41, which fall therewith.

R2 - R5 AND R7- R9
Regarding the rejections R2 –R5 and R7 – R9, Appellants contend the
rejected claims are patentable by virtue of their dependence from their
corresponding independent claims 1, 16, 29, 36, and 40 (rejected under R1
and R6). (App. Br. 13-18). However, we find no deficiencies in the
rejections R1 and R6 of the independent claims for the reasons discussed
above. Therefore, we sustain the Examiner's rejections R2-R5, and R7-R9.

Appeal 2012-007611
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DECISION
We affirm the Examiner's rejection R1 of claims 29 and 31 under
§ 102.
We affirm the Examiner’s rejections R2-R9 under § 103 of claims
1-28, 30, and 32-41.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

ELD