Mark Sheppard

Patent Trials and Appeals Board

Aug 29, 2019

13631396 - (D) (P.T.A.B. Aug. 29, 2019)

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.
13/631,396 09/28/2012 Mark Sheppard 4366YDT-166 3723
48500 7590 08/29/2019
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
YU, XIANG
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK SHEPPARD
____________________

Appeal 2018-006963
Application 13/631,3961
Technology Center 2400
____________________

Before MARC S. HOFF, STEVEN M. AMUNDSON,
and JASON M. REPKO, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–12, 14–16, and 19–23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appellants’ invention is a method for creating one or more composite
presence notifications indicating the availability of contacts. Spec. 1. A
subscribe request that incorporates an availability request is generated,
inquiring about an availability of each contact in a set of multiple contacts.

1 Appellants state that the real party in interest is Avaya Inc. App. Br. 2.
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The method further comprises submitting a composite presence subscribe
request to a presence server, which identifies each contact in the set of
multiple contacts, and generating, from the presence server, a composite
presence report indicating the availability of each contact. Spec. 5–6.
Claim 1 is exemplary of the claims on appeal:
A method comprising:
receiving, at a presence server comprising a
microprocessor, a composite presence subscribe request that
incorporates an availability request such that the availability
request inquires about an availability of each contact in a set of
multiple contacts that includes two different users, and the
composite presence subscribe request identifies the each contact
in the set of multiple contacts; and
generating, by the microprocessor, a composite presence
report that indicates the availability of the each contact.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Cox US 2007/0266076 A1 Nov. 15, 2007
Linder US 2011/0219117 A1 Sept. 8, 2011
Benedyk US 2010/0017472 A1 Jan. 21, 2010
Claims 1–6, 82–12, 14–16, and 19–23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Cox and Linder.
Claims 7 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox, Linder, and Benedyk.

2 The Examiner’s statement of rejection does not include claim 8, and
Appellants’ statement of the grounds of rejection to reviewed does not
include claim 8. Final Act. 8; App. Br. 5. The Examiner and Appellants both
discuss the limitations of claim 8 and argue the propriety of its rejection. We
therefore consider claim 8 to be rejected by the Examiner and appealed by
Appellants.
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Throughout this decision, we make reference to the Appeal Brief
(“App. Br.”), filed December 18, 2017, the Reply Brief (“Reply Br.”), filed
June 19, 2018, and the Examiner’s Answer (“Ans.”) mailed April 19, 2018
for their respective details.

ISSUE
Appellants’ arguments present us with the following issue:
Does the combination of Cox and Linder disclose or suggest a
composite presence subscribe request that incorporates an availability
request?
PRINCIPLES OF LAW
An argument that merely points out what a claim recites is
unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).

ANALYSIS
CLAIMS 1, 10, AND 11
Independent claims 1 and 10 recite “a composite presence subscribe
request that incorporates an availability request.” Independent claim 11
recites receiving a composite presence subscribe request that requests an
availability of each contact in a set of multiple contacts.
Appellants argue that Cox is silent regarding “a composite presence
subscribe request that incorporates an availability request.” App. Br. 8.
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According to Appellants, “the SUBSCRIBE request in Cox would create a
SIP dialogue and hence a subscription prior to parsing the subscription body.
At a minimum, Cox would have to parse the entire SUBSCRIBE body prior
to knowing what form of SUBSCRIBE request is to be handled.” App. Br. 8
(emphasis omitted); Cox ¶ 29.
We do not agree with Appellants that the subscribe request in Cox
does not incorporate an availability request. Like the invention under appeal,
Cox sends presence updates using extensions to the Session Initiation
Protocol (SIP) and SIP for Instant Messaging and Presence Leveraging
Extensions (SIMPLE) protocols. Cox ¶ 21. Appellants disclose “exemplary
presence subscription processes in SIP and XMPP protocols.” Spec. 9.
Among those exemplary processes in known protocols, “a user may generate
an availability request at the 1XC SIP client for a list of multiple contacts by
searching for a contact or set of contacts.” Spec. 9:19–21. “The search
results are returned from the user search facility in the 1XC SIP client, and
the 1XC SIP client creates a subscription list, containing the contact(s)
names.” Spec. 9:26–27; Ans. 4. Appellants do not seek to invent SIP or
XMPP. Appellants’ Specification makes clear here that the cited section
describes known presence subscription aspects of the known protocols.
We also do not agree with Appellants’ Reply Brief argument that the
Examiner improperly relies on Appellants’ “explanation within the
specification of advantageous embodiments of the claimed invention over
the prior art.” Reply Br. 2. Appellants make clear that the cited discussion of
“exemplary presence subscription processes” is laid out for the reader
“[b]efore describing the steps of FIG. 1,” which is described as “a presence
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system 100 according to an exemplary architecture of the present
disclosure.” Spec. 9.
With this interpretation of “presence subscription request” in mind,
we agree with the Examiner that a subscribe request incorporates an
availability request. We agree with the Examiner’s finding that Cox
discloses accepting a subscription request from a user who is interested in
multiple users within a single request, and the use of tags to filter out
unwanted presence information. Ans. 5; Cox ¶¶ 25, 26, 29, 30.
We conclude that the Examiner did not err in rejecting independent
claims 1, 10, and 11. We sustain the Examiner’s § 103(a) rejection over Cox
and Linder.
CLAIM 3
Appellants argue that the prior art is silent regarding any composite
presence report that is a single NOTIFY report. App. Br. 11. Appellants
contend that Cox’s disclosure of using SIP protocol does not relate to a
composite presence subscribe request, and that Linder’s disclosure of a SIP
NOTIFY message is also unrelated to a composite request subscribe request.
App. Br. 12.
Appellants’ argument is unpersuasive. We agree with the Examiner’s
finding that Linder discloses a SIP NOTIFY message confirming “that the
user status has been subscribed to, and includes an initial list of group
members meeting the criteria.” Linder ¶ 67; Ans. 8.
We will sustain the Examiner’s § 103(a) rejection of claim 3.
CLAIMS 4 AND 14
The Examiner finds that Cox discloses the claimed composite
presence subscribe request that comprises a parameter of “list=ad hoc” in a
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TO address. Final Act. 14–15. The Examiner finds that Cox discloses a SIP
SUBSCRIBE function that may specify an “” tag. Final Act. 15;
Cox ¶ 29, Fig. 4.
We find error in the Examiner’s rejection. We agree with Appellants’
argument that the Examiner’s reliance on Figure 4 of Cox is misplaced. App.
Br. 13. Neither Figure 4 nor paragraph 29 of Cox teach or suggest a
parameter of “list=ad hoc” in a TO address. Id. As a result, we do not sustain
the Examiner’s § 103(a) rejection of claims 4 and 14 over Cox and Linder.
CLAIM 8
The Examiner finds that the claimed “ACL privacy policy,”
interpreted in light of Appellants’ Specification, is established when a user is
publishing their presence or permitting it to be known to other inquiring or
subscribing users. The Examiner finds that Cox discloses various examples
of published information only visible to select groups of users, which means
certain privacy settings are set in place. Ans. 10; Cox ¶¶ 6, 7, 36, 37, 39.
We find that the Examiner erred in rejecting the claim based upon this
interpretation. Even if we were to agree that Cox implicitly discloses certain
privacy settings, we agree with Appellants that do not find disclosure in Cox
of the particular “access control list (ACL) privacy policy,” as recited in
claim 8. App. Br. 14.
We find that the combination of Cox and Linder fails to disclose all
the limitations of claim 8. We do not sustain the Examiner’s § 103(a)
rejection.
CLAIM 9
Appellants contend that Cox fails to disclose or suggest one
notification list containing an indication of the availability of the each
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contact in the set. App. Br. 14–15. Appellants’ argument is not persuasive.
As discussed supra with respect to claim 3, the Examiner finds that Linder
discloses a SIP NOTIFY response that contains presence or availability of a
group of participants. Linder ¶¶ 67, 69; Ans. 10; Final Act. 18–19.
Consequently, we will sustain the Examiner’s § 103(a) rejection of claim 9.
CLAIMS 5, 6, 15, AND 16
The Examiner finds that Cox discloses the claimed composite
presence subscribe request including an “expires=0.” Ans. 11. The Examiner
finds that the limitation “is really about unsubscribing from a presence,” and
that Cox teaches functionally equivalent ways a subscription request can be
treated as an unsubscribe request. Id.
We do not agree with the Examiner’s finding. The Examiner relies on
Appellants’ Specification for the explanation that a subscribe request with an
Expires header of zero constitutes a request to unsubscribe from an event.
Spec. 10. Assuming arguendo that the Examiner is entitled to rely on this
disclosure as prior art, Cox discloses that a subscribe request with an empty
body indicates that all user and categories should be unsubscribed from. Cox
¶ 29. Cox thus neither discloses a subscribe request literally including
expires=0, nor discloses the functional equivalent of the specifically recited
command.
The combination of Cox and Linder fails to disclose all the limitations
of claims 5 and 15. We do not sustain the Examiner’s § 103(a) rejection of
claims 5 and 15, nor that of claims 6 and 16 dependent therefrom.
CLAIMS 2, 12, AND 19–22
In the Appeal Brief, Appellants merely pointed out what claims 2, 12,
and 19–22 recite and thus did not present separate arguments for their
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patentability. See Lovin, 652 F.3d at 1357. We do not consider the new
arguments regarding these claims raised for the first time in the Reply Brief.
Absent good cause, any argument not raised in the Appeal Brief is waived
and will not be considered by the Board. See 37 C.F.R. § 41.41(b)(2); Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”). Thus, we sustain the Examiner’s § 103(a) rejection of claims 2,
12, and 19–22 over Cox and Linder.
CLAIMS 7 AND 23
The Examiner admits that Cox and Linder lack disclosure of the
XMPP protocol, and proposes modifying the combination in view of
Benedyk, which discloses providing presence data from multiple presence
information providers and/or protocols. Final Act. 23. The Examiner further
finds that “under XMPP protocol rules, the subscription request and the
response would both be in the form of packets.” Id.
We find error in the Examiner’s statement. We have reviewed
Benedyk, and we do not find Benedyk to disclose returning the composite
presence report as “a presence response packet.” App. Br. 18. Therefore, we
find that the combination of Cox, Linder, and Benedyk does not teach all the
limitations of claims 7 and 23. We do not sustain the Examiner’s § 103(a)
rejection.
CONCLUSION
The combination of Cox and Linder discloses a composite presence
subscribe request that incorporates an availability request.
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ORDER
The Examiner’s decision to reject claims 1–3, 9–12, and 19–22 is
affirmed. The Examiner’s decision to reject claims 4–8, 14–16, and 23 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART