Mark SheppardDownload PDFPatent Trials and Appeals BoardAug 29, 201913631396 - (D) (P.T.A.B. Aug. 29, 2019) Copy Citation 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. Appeal 2018-006963 Application 13/631,396 2 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. Appeal 2018-006963 Application 13/631,396 3 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. Appeal 2018-006963 Application 13/631,396 4 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 Appeal 2018-006963 Application 13/631,396 5 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 Appeal 2018-006963 Application 13/631,396 6 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 Appeal 2018-006963 Application 13/631,396 7 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 Appeal 2018-006963 Application 13/631,396 8 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. Appeal 2018-006963 Application 13/631,396 9 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 Copy with citationCopy as parenthetical citation