Suzann Hua et al.

Patent Trials and Appeals Board

Feb 28, 2020

14573628 - (D) (P.T.A.B. Feb. 28, 2020)

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.
14/573,628 12/17/2014 Suzann Hua 816181-US-NP 6623
22046 7590 02/28/2020
Nokia of America Corporation
600-700 Mountain Avenue
Docket Administrator - Room 6E-264
Murray Hill, NJ 07974-0636
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
narpatent@nokia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SUZANN HUA and YIGANG CAI
____________________

Appeal 2018-004720
Application 14/573,628
Technology Center 2600
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to systems and methods implementing a
“Public Safety/Security UE [(user equipment)] communication framework
for Proximity Services (ProSe) via presence information,” the
communication framework enabling reciprocal discovery between UEs of
PuSa (public safety) service providers (presentities). (Spec. ¶¶ 18–21; Title

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Alcatel-Lucent. Appeal Br. 3.
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(capitalization altered).) In Appellant’s communication framework, a UE
(e.g., a mobile computing device of a watcher presentity) directs its presence
information—including “public-safety (PuSa) specific proximity-based
services (ProSe) information”— toward a presence server (PS), and also
directs to the PS a request to subscribe to PuSa-specific ProSe information
of a target ProSe presentity, the request including a dedicated PuSa service
ID. (Spec. ¶ 7; Abstract.) The mobile computing device may thereafter
discover a UE of the target presentity on the condition that the PS returns the
presence information of the target presentity. (Abstract.)
Independent claims 1 and 13, reproduced below, are illustrative of the
claimed subject matter:
1. An apparatus, comprising:
a processor; and
a computer-readable nontransitory storage medium
operably coupled to said processor and including instructions
that when executed by the processor configure the processor to:
direct presence information toward a presence
server (PS), the presence information including public-
safety (PuSa) specific proximity-based services (ProSe)
information; and
direct to the PS a request to subscribe to a target
presentity’s PuSa-specific ProSe information, the request
including a dedicated PuSa service identification (ID).

13. An apparatus, comprising:
a processor; and
a computer-readable nontransitory storage medium
operably coupled to said processor and including instructions
that when executed by the processor configure the processor to:
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receive, from a target user equipment (UE),
presence information, including public-safety (PuSa)
specific proximity-based services (ProSe) information;
receive, from a watcher UE, a request to subscribe
to said presence information; and
direct said presence information to said watcher
UE on the condition that said watcher presentity is
determined to be a PuSa ProSe user based on PuSa
subscription rules.
(Appeal Br. 10–13 (Claims Appendix).)

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bekiares et al. US 2011/0161397 A1 June 30, 2011
(“Bekiares”)
Blankenship et al. US 2014/0057667 A1 Feb. 27, 2014
(“Blankenship”)
Patel et al. US 2014/0348066 A1 Nov. 27, 2014
(“Patel”)
Kim et al. US 2015/0043429 A1 Feb. 12, 2015
(“Kim”)

REJECTIONS
The Examiner made the following rejections:
Claims 1–4, 7, 8, 10, and 11 stand rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Kim.
Claims 13, 16, 18, and 21 stand rejected under 35 U.S.C. § 102(a)(2)
as anticipated by Patel.
Claims 5 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Bekiares.
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Claims 6 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Blankenship.
Claims 14, 15, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Patel in view of Bekiares.
Claims 17 and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Patel in view of Blankenship.

ANALYSIS
35 U.S.C. § 102 and § 103 Rejections of Claims 1–12
The Examiner, among other things, finds Kim discloses claim 1’s
“presence information including public-safety (PuSa) specific proximity-
based services (ProSe) information” directed toward a presence server,
because (i) Kim’s UE-1 transmits a publication request message including
P/P (presence/ProSe) publication information to publish presence
information, (ii) Kim discloses “the potential uses of ProSe includes
public safety,” and (iii) Kim’s UE is capable of performing communication
using a public safety spectrum. (Ans. 2–4 (citing Kim ¶¶ 98, 190, 266, Fig.
12); Final Act. 2–3 (citing Kim ¶¶ 58–59); see also Kim ¶ 171 (explaining
the notation “P/P”).)
The Examiner further finds Kim discloses the claimed “direct[ing] to
the PS a request to subscribe to a target presentity’s PuSa-specific ProSe
information,” because Kim’s UE-2 transmits a subscription request message
for subscribing to a presence information notification service of UE-1. (Ans.
2 (citing Kim ¶¶ 270, 274, Fig. 12); Final Act. 2–3.) The Examiner
additionally finds Kim discloses the claimed request including “a dedicated
PuSa service identification (ID)” because Kim’s UEs provide subscriber
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information, and “it is inherent that service subscription is being identified
by the server from the subscription information.” (Ans. 2–3 (citing Kim
¶¶ 23, 28, 145); Final Act. 2–3 (citing Kim ¶¶ 17, 66).)
Having reviewed the evidence, we do not agree with the Examiner’s
finding that Kim discloses “presence information including public-safety
(PuSa) specific proximity-based services (ProSe) information,” “a request to
subscribe to a target presentity’s PuSa-specific ProSe information,” and “the
request including a dedicated PuSa service identification (ID),” as recited in
claim 1. Rather, we agree with Appellant’s arguments that “the Office
Action fails to identify [in Kim] proximity information that is ‘public-safety
(PuSa) specific.’” (Appeal Br. 7.) As Appellant explains, Kim’s paragraphs
58 and 59 merely provide definitions of technical terms used in Kim’s
specification, only referring to public safety in the context of the spectrum
capability of Kim’s UE. (Id.) Kim’s paragraph 98 mentions “potential use
cases of ProSe [that] may include . . . public safety” but does not explicitly
disclose public-safety specific information being included in the presence
information. (See Kim ¶ 98.) Kim’s paragraph 190 describes
communication paths between UEs being determined based on “ProSe
capability information of a UE” and “information about the location of UEs
related to session setup, i.e., information about a specific cell, specific
eNodeB or specific tracking area (TA) on which a corresponding UE is
camped (for example, a location which is set by an operator to use ProSe for
public safety.” (See Kim ¶ 190.) None of these portions of Kim disclose
that presence information would include public-safety (PuSa) specific
information, or that a target presentity has subscribable PuSa-specific
information, as required by claim 1.
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Kim also does not disclose Appellant’s claimed request to subscribe
(to a target presentity’s PuSa-specific ProSe information) including a
dedicated PuSa service identification (ID). (Reply Br. 3–4; Appeal Br. 7–
8.)2 That is, although Kim describes communication peer identifiers and
identity management of subscribers (see, e.g., Kim ¶¶ 17, 66), Kim does not
specifically disclose “a dedicated PuSa service identification” as claim 1
recites. (Appeal Br. 7–8; Reply Br. 3.)
As the Examiner has not identified sufficient evidence to support the
anticipation rejection of claim 1, we do not sustain the Examiner’s
anticipation rejection of claim 1 and claims 2–4 dependent therefrom.3

2 Appellant’s Reply Brief does not have numbered pages. We count the
pages starting from the first page.
3 In the event of any further prosecution, we suggest the Examiner consider
whether Kim renders claim 1 obvious under 35 U.S.C. § 103, in view of
Kim’s teachings in paragraphs 126–128, 134, 172–173, 266, and 270. For
example, Kim teaches that (i) UE-1 transmits “a publication request message
(e.g., SIP PUBLISH message) to publish presence information thereof. . . .
the publication request message may include P/P publication information
(see Scheme 4)” (¶ 266) and (ii) Scheme 4 provides for “P/P publication
information [that] may include ProSe capability information” (¶ 173), where
(iii) the “ProSe capability information may be configured per bearer or
connection type (e.g., . . . emergency bearer[)]” where “if ProSe is
considered only for an emergency bearer, the ProSe capability information
may be maintained only with respect to the emergency bearer” (¶ 134), may
suggest to one skilled in the art that the presence information (having P/P
publication information with ProSe capability information) would include
public-safety specific information (e.g., related to an emergency bearer), as
recited in claim 1. (See Kim ¶¶ 126–128, 134, 173, 266 (emphases added).)
Further, Kim teaches that (i) UE-2 transmits “a subscription request message
(e.g., SIP SUBSCRIBE message) for subscribing to a presence information
notification service of the UE-1. . . . the subscription request message may
include P/P subscription information (see Scheme 4)” (¶ 270) and (ii)
Scheme 4 provides for “P/P subscription information [that] may include . . .
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Independent claim 7 includes limitations similar to those of claim 1,
and the Examiner’s rejection of claim 7 relies upon similar findings based
upon Kim. (Final Act. 3.) Accordingly, we do not sustain the Examiner’s
anticipation rejection of claim 7, and claims 8, 10, and 11 dependent
therefrom for the same reasons as claim 1.
The Examiner also has not shown that the additional teachings of
Bekiares and Blankenship (used in combination with Kim in the obviousness
rejections of dependent claims 5, 6, 9, and 12) make up for the above-noted
deficiencies of Kim. Thus, for the reasons set forth above, we do not sustain
the Examiner’s obviousness rejections of dependent claims 5, 6, 9, and 12.

35 U.S.C. § 102 and § 103 Rejections of Claims 13–22
With respect to independent claims 13 and 18, the Examiner finds
Patel anticipates claims 13 and 18. The Examiner, among other things, finds
Patel discloses the receipt of claim 13’s “presence information, including
public-safety (PuSa) specific proximity-based services (ProSe) information”
because Patel’s presence server receives presence information from a
multitude of presence sources, and Patel’s PoC (Push-to-talk-over-Cellular)
call sessions occur “in the context of public safety.” (Final Act. 3 (citing

ProSe capability information” (¶ 172), where (iii) the “ProSe capability
information may be configured per bearer or connection type (e.g., . . .
emergency bearer[)]” where “if ProSe is considered only for an emergency
bearer, the ProSe capability information may be maintained only with
respect to the emergency bearer” (¶ 134), which would suggest to one
skilled in the art that the request to subscribe (having P/P subscription
information with ProSe capability information) would include a dedicated
public-safety service identification (e.g., pertaining to an emergency bearer),
as recited in claim 1. (See Kim ¶¶ 126–128, 134, 172, 270 (emphases
added).)
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Patel ¶¶ 52, 98, 230); Ans. 4 (citing Patel ¶¶ 260–261).) The Examiner
further finds Patel’s notification to a subscribing watcher regarding presence
information of presentities “according to the rules associated with these
presentities” discloses the claimed “direct said presence information to said
watcher UE on the condition that said watcher presentity is determined to be
a PuSa ProSe user based on PuSa subscription rules.” (Ans. 5 (citing Patel
¶¶ 52, 260); Final Act. 3.)
Having reviewed the evidence, we do not agree with the Examiner’s
finding that Patel discloses receipt of “presence information [from a target
UE], including public-safety (PuSa) specific proximity-based services
(ProSe) information” and “direct[ing] said presence information to said
watcher UE on the condition that said watcher presentity is determined to be
a PuSa ProSe user based on PuSa subscription rules” as recited in claim 13.
(Appeal Br. 12 (claim 13 (emphasis added)).) Rather, we agree with
Appellant’s arguments that Patel “fails to disclose anything directly
regarding PuSa specific ProSe presence information received by the
presence server 110 from the PoC clients” or the PoC call session members.
(Reply Br. 4–5.) Although Patel describes PoC communications “occur[ing]
in the context of public safety” (see ¶ 230, emphasis added), Patel does not
describe that the presentities’ “Presence Information” (see ¶ 52) includes
public-safety (PuSa) specific information, as recited in claim 13. (Appeal
Br. 8–9; Reply Br. 4–5.)
Patel also does not disclose “the relevant condition in Claim 13, ‘on
the condition that said watcher presentity is determined to be a PuSa ProSe
user based on PuSa subscription rules.’” (Appeal Br. 9 (emphasis added).)
Rather, Patel’s paragraph 260 merely describes initiating communications
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with PoC clients/members based on criteria including members’
geographical area and whether specific members are available, and Patel’s
paragraph 52 describes notifications sent from a presence service to a
subscribed watcher when there is a change in presence information. (See
Patel ¶¶ 52, 260; Reply Br. 5; Appeal Br. 9.) However, Patel does not
determine whether a watcher presentity is a public-safety (PuSa) ProSe user,
and does not disclose directing presence information to a watcher UE on the
condition that the watcher presentity is determined to be a PuSa ProSe user
based on PuSa subscription rules, as claimed.
As the Examiner has not identified sufficient evidence to support the
anticipation rejection of claim 13, we do not sustain the Examiner’s
anticipation rejection of claim 13 and claim 16 dependent therefrom.
Independent claim 18 includes limitations similar to those of claim 13,
and the Examiner’s rejection of claim 18 relies upon similar findings based
upon Patel. (Final Act. 4.) Accordingly, we do not sustain the Examiner’s
anticipation rejection of claim 18 and claim 21 dependent therefrom.
The Examiner also has not shown that the additional teachings of
Bekiares and Blankenship (used in combination with Patel in the
obviousness rejections of dependent claims 14, 15, 17, 19, 20, and 22) make
up for the above-noted deficiencies of Patel. Thus, for the reasons set forth
above, we do not sustain the Examiner’s obviousness rejections of
dependent claims 14, 15, 17, 19, 20, and 22.

CONCLUSIONS
The Examiner erred in rejecting claims 1–4, 7, 8, 10, 11, 13, 16, 18,
and 21 as anticipated under 35 U.S.C. § 102(a)(2), and the Examiner erred in
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rejecting claims 5, 6, 9, 12, 14, 15, 17, 19, 20, and 22 based upon
obviousness.

DECISION
For the above reasons, we REVERSE (1) the Examiner’s anticipation
rejections of claims 1–4, 7, 8, 10, 11, 13, 16, 18, and 21 under
35 U.S.C. § 102(a)(2), and (2) the Examiner’s obviousness rejections of
claims 5, 6, 9, 12, 14, 15, 17, 19, 20, and 22 under 35 U.S.C. § 103.

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–4, 7, 8, 10,
11
102(a)(2) Kim 1–4, 7, 8, 10,
11
13, 16, 18, 21 102(a)(2) Patel 13, 16, 18,
21
5, 9 103 Kim, Bekiares 5, 9
6, 12 103 Kim,
Blankenship
6, 12
14, 15, 19, 20 103 Patel, Bekiares 14, 15, 19,
20
17, 22 103 Patel,
Blankenship
17, 22
Overall
Outcome
1–22

REVERSED