Ex Parte Chin et al

Patent Trial and Appeal Board

Nov 19, 2013

11312174 (P.T.A.B. Nov. 19, 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.
11/312,174 12/20/2005 Frances Mu-Fan Chin CHIN 21-19-4-137 3419
50525 7590 11/20/2013
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
KHAKHAR, NIRAV K
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
11/20/2013 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 FRANCES MU-FAN CHIN,
PEGGY H. HASAN, HUIXIAN SONG,
and SANDRA L. TRUE
____________

Appeal 2011-013020
Application 11/312,174
Technology Center 2100
____________

Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
In reaching the decision, we have considered only the arguments that
Appellants actually raised. Arguments that Appellants did not make are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

Appeal 2011-013020
Application 11/312,174

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STATEMENT OF THE CASE
The present invention relates to communication networks. See
generally Spec. 1. Claim 1 is illustrative:
1. A method of providing a library service in an IMS
network to a user of a phone, the method comprising:
receiving a SIP request message from the phone in an
application server of the IMS network offering the library
service, wherein the application server acts as an interface
between the phone and a remote library database, and wherein
the SIP request message includes at least one library search
parameter entered by the user of the phone;
querying the remote library database with the application
server based on the at least one library search parameter;
receiving library search results from the remote library
database in the application server;
determining a type of response for providing the library
search results to the user;
formatting the library search results based on the
determined type of response; and
transmitting the response from the application server to
the user.

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THE REJECTIONS
Claims 1-7, 9-17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gormley (US 5,628,004), and Costa Requena (US
2004/0068574 A1). Ans. 4-11.
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gormley, Costa Requena, and Mani (US 5,848,406). Ans.
12-13.

ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding that
Gormley and Costa Requena collectively teach
receiving a SIP request message from the phone in an
application server of the IMS network offering the library
service, wherein the application server acts as an interface
between the phone and a remote library database, and wherein
the SIP request message includes at least one library search
parameter entered by the user of the phone; and
querying the remote library database with the application
server based on the at least one library search parameter
of Claim 1 (emphasis added)?

ANALYSIS
THE OBVIOUSNESS REJECTIONS
Claims 1-20
On this record, we find that the Examiner did not err in rejecting
claim 1.
Appellants contend that the references do not teach the disputed claim
limitations because the Examiner has failed to consider the word “library”
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when examining claim 1. See App. Br. 6-10; see also Reply Br. 2-4.
Appellants argue that Gormley describes general database operations and
Costa Requena describes general IMS operations, and neither reference
describes implementing a library service in an IMS network in the manner
recited in claim 1. See id. Appellants further argue that because neither
reference mentions a library service, one skilled in the art would not have
combined the references to create a method of providing a library service in
an IMS network. See id. Appellants contend that the obviousness rejection
is improper because the cited references do not discuss library services,
library search parameters, or a remote library database in any manner. See
App. Br. 9.
We disagree with Appellants’ arguments (App. Br. 6-10; Reply Br. 2-
4), and agree with the Examiner’s conclusion. The Examiner correctly finds
that
While it is true that the reference does not explicitly state that it
is used as a library database, Costa Requena, at paragraph 0161
discloses that the system is used for sharing content such as
images and documents. This feature is inherently the purpose
of a library database.

Ans. 13. As a result, the Examiner assigns patentable weight to the “library”
database, and correctly finds that Costa Requena teaches a “library” database
within the meaning of claim 1. Appellants have not persuasively rebutted
the Examiner’s findings.1

1 Appellants’ argument about literary and artistic materials (Reply Br. 2-3) is
unpersuasive, as Appellants do not contend that such materials are not
“images and documents.”
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Because Costa Requena teaches “library,” and the Examiner already
finds that Gormley teaches at least one [] search parameter (Ans. 5;
Gormley, Fig. 11), and Costa Requena teaches offering the [] service (Ans.
6; Costa Requena ¶ 0034), Gormley and Costa Requena collectively teach
the terms “at least one library search parameter” and “offering the library
service.” Combining the teachings of Gormley and Costa Requena would
have predictably used prior art elements according to their established
functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
In the Reply Brief and for the first time, Appellants belatedly assert
that the cited references fail to teach (1) an application server that receives a
SIP request message that includes search parameters entered by the user of a
phone, and (2) an application server that receives [library] search parameters
in a SIP request message that are entered by the user of a phone, and which
are used to query a remote [library] database, but do not provide adequate
analysis. See Reply Br. 3. To the extent that Appellants’ assertion
constitutes arguments, Appellants have waived such arguments since they
are untimely. See 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.”).
We also note that Appellants’ belated assertion is not commensurate
with the scope of claim 1, as the recited SIP request message includes at
least one library search parameter. We further note that Appellants’
assertion is unpersuasive, as it is conclusory and carries little persuasive
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weight. We agree with the Examiner’s conclusion, and adopt the
Examiner’s reasoning and findings on pages 5-6 of the Answer as our own.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and corresponding dependent claims.
For similar reasons, we sustain the Examiner’s rejection of
independent claim 11, and corresponding dependent claims.

DECISION
The Examiner’s decision rejecting claims 1-20 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc