TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Dec 8, 2021

2020005006 (P.T.A.B. Dec. 8, 2021)

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.
15/740,109 12/27/2017 Francesca MARFIA 0111-309/P046485US01 7651
113648 7590 12/08/2021
Patent Portfolio Builders, PLLC
754 Warrenton Road
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EXAMINER
PHAM, TITO Q
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANCESCA MARFIA and LORENZO FIORILLO
___________

Appeal 2020-005006
Application 15/740,109
Technology Center 2400

____________

Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR. and
TREVOR M. JEFFERSON, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–13 under
35 U.S.C. § 134(a). See Appeal Brief 2. Claims 1 and 7 are independent.
We have jurisdiction under 35 U.S.C. § 6(b).

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed December 20, 2019), the
Reply Brief (filed June 18, 2020), the Final Action (mailed July 5, 2019) and
the Answer (mailed May 22, 2020), for the respective details.

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
Appeal 2020-005006
Application 15/740,109
2

We reverse.
Introduction
According to Appellant, “The present technology is related to Lawful
Interception of IP Multimedia subsystem data communication. More
specifically, the present technology refers to Lawful Interception
management system and methods for removing redundant content of
communication, CC, flows. Specification 1.
“Appellant’s disclosure and claimed combinations are directed to
resolving redundancy problems in interception of content of communication,
CC, flows.” Appeal Brief 6.
To solve this problem, as discussed in the disclosure and as set
forth in Appellant’s claimed combinations, when a received CC
[content of communication] flow’s TID (target identifier) and CI
(correlation identifier) are identical to the TID and CI of another
CC flow being delivered to a LEA [Law Enforcement Agency],
the sending IAP (intercept access point) address of the received
CC flow is compared to the sending IAP address of the another
CC flow being delivered, and if they are identical, both the
received CC flow and the another CC flow are sent to the LEA.
Appeal Brief 6.
Representative Claim3 (disputed limitations emphasized)
1. A method for removing redundant content of communication, CC,
flows, which are generated by Lawful Interception of one or more intercepted

§§ 1.43, 1.45, or 1.46.”). Appellant identifies TELEFONAKTIEBOLAGET
LM ERICSSON (PUBL) as the real party in interest. Appeal Brief 2.

3 Appellant does not argue the claims individually. Appeal Brief 5
(“Di Donato, Santoro, TS 133.108, and/or Yamana do not disclose all of the
features and the arrangement of Appellant’s independent claims 1 and 7.”).
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
Appeal 2020-005006
Application 15/740,109
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target communication sessions of intercepted targets, wherein each CC flow
comprises a flow of data packets, each data packet comprising a flow identity of
the CC flow, wherein the flow identity comprises an address of a sending
intercept access point, IAP, at least one identifier of the target, TID, and a
communication session Correlation Identifier, CI, the method comprising:
receiving a CC flow from a sending IAP address, wherein the CC flow
comprises a flow of data packets;
retrieving a CC flow identity from the received CC flow, wherein the flow
identity comprises the sending IAP address, a TID, and a CI;
identifying any other CC flow being delivered to a Law Enforcement
Agency, LEA, wherein said other CC flow has an identical TID and CI,
respectively, as the received CC flow;
checking if the sending IAP address of the received CC flow is identical to
a sending IAP address of the identified other CC flow with the identical TID and
CI, respectively; and
forwarding to the LEA only one or both of the CC flows having the
identical TID and CI, respectively, based on the checking step.

§ 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”).
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References
Name4 Reference Date
Di Donato US 2011/0032840 A1 February 10, 2011
Santoro US 2011/0287781 A1 November 24, 2011
Le US 2012/0096145 A1 April 19, 2012
Yamana US 2016/0226751 A1 August 4, 2016
Universal Mobile
Telecommunications System
(UMTS); LTE; 3G security;
Handover interface for Lawful
Interception (LI) (3GPP TS 33.
108 version 12.8.0 Release 12)

April 2015

Rejections on Appeal5
Claims 1–4, 7–10 and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Di Donato, Santoro, Universal Mobile
Telecommunications System (UMTS); LTE; 3G security; Handover
interface for Lawful Interception (LI) (3GPP TS 33.108 version 12.8.0
Release 12) [TS 133.108] and Yamana. Final Action 2–7.
Claims 5, 6, 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Di Donato, Santoro, TS 133.108, Yamana and Le. Final
Action 7–8.

4 All reference citations are to the first named inventor only.

5 The statement of rejection omits currently pending claim 10 while adding
non-pending claims 14 and 15. See Final Action 2; Appeal Brief 2. We
view this as harmless error as the rejection’s analysis includes claim 10.
Final Action 6–7.
Appeal 2020-005006
Application 15/740,109
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ANALYSIS
The Examiner finds Di Donato discloses the invention recited in claim
1 with the exception that, “Di Donato does not teach CC flow with TID and
CI and IAP.” Final Action 3. Nonetheless, the Examiner further finds, “In
the same field of endeavor, Santoro discloses an IMDU [Intercept Mediation
and Delivery Unit] contains both the DF2 [Delivery Functions] which
receives the IRI [Interception Related Information] related to the CC, and
the DF3 which receives the CC (figure 1A and paragraph 3). The IMDU
correlates between the IRI and the CC for the same target” and concludes
that “it would have been obvious to one with ordinary skill in the art to
[implement Di Donato’s] CC flow with TID and CI and IAP.” Final Action
3 (citing Santoro Figure 3; paragraph 3).
Appellant contends:
Initially, it is noted Santoro’s Fig. 1A, discussed in the
Background section, is labeled “prior art” and refers to TS
33.108. (See Santoro, [0003]). This figure is identical to Di
Donato’s Fig. 1, which is also labeled “prior art,” discussed in
paragraph [0002], and likewise refers to TS 33.108. Neither
Santoro, nor TS 33.108, discuss two CC flows with “identical
TID and CI,” and the Final Office Action does not point out
where, in any of these documents, this feature is disclosed. In
addition, Santoro does not disclose an “intercept access point
(IAP),” as recited in Appellant’s claimed combinations.
Appeal Brief 10 (emphasis added).
The Examiner responds, “[On] page 10, the Appellant argues that
Santoro cannot be applied because it determines the common identities first.
Examiner notes that the main reference Di Donato teaches determining it at
the time of reception, and the combination of Di Donato and Santoro teaches
the claimed limitation.” Answer 11. Examiner’s response is in regard to
Appellant’s additional argument that, “Santoro is directed to determining the
Appeal 2020-005006
Application 15/740,109
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target identities first before being able to implement lawful interception. As
such, Santoro’s method is directed to determining a target identity (which is
initially unknown), prior to performing the lawful interception, which is not
similar to Appellant’s methods and systems.” Appeal Brief 10 (emphasis
omitted). Claim 1 recites, “identifying any other CC flow being delivered to a
Law Enforcement Agency, LEA, wherein said other CC flow has an identical
TID and CI, respectively, as the received CC flow.” The Examiner does not
address Appellant’s contention that, “Neither Santoro, nor TS 33.108,
discuss two CC flows with ‘identical TID and CI,’ and the Final Office
Action does not point out where, in any of these documents, this feature is
disclosed.” Appeal Brief 10 (emphasis added). Accordingly, we find
Appellant’s argument persuasive of Examiner error because neither Santoro,
TS 133.108 nor Yamana address Di Donato’s noted deficiency. See Final
Action 3–5. We are constrained by the record before us, we reverse the
Examiner’s obviousness rejection of independent claim 1, as well as,
independent claim 7 commensurate in scope. See Final Action 2. The
rejections of dependent claims 2–6 and 8–13 are also reversed for the same
reasons.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 7–10, 13 103 Di Donato, Santoro,
TS 133.108,
Yamana
1–4, 7–10, 13
5, 6, 11, 12 103 Di Donato, Santoro,
TS 133.108,
Yamana, Le
5, 6, 11, 12
Overall
Outcome
1–13

Appeal 2020-005006
Application 15/740,109
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REVERSED