Payam Torab Jahromi

Patent Trials and Appeals Board

Nov 18, 2019

15213284 - (D) (P.T.A.B. Nov. 18, 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.
15/213,284 07/18/2016 Payam TORAB JAHROMI 122293-6419 1753
107592 7590 11/18/2019
Morgan, Lewis & Bockius LLP (Broadcom)
600 Anton Boulevard
Suite 1800
Costa Mesa, CA 92626
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
11/18/2019 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):
OCIPDocketing@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAYAM TORAB JAHROMI
Appeal 2018-009032
Application 15/213,284
Technology Center 2600
BEFORE JAMES B. ARPIN, KARA L. SZPONDOWSKI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Avago
Technologies General IP (Singapore) PTE. LTD. Appeal Br. 3.
Appeal 2018-009032
Application 15/213,284

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CLAIMED SUBJECT MATTER
The claims are directed to “[a] device seeking to access a combination
of services” by way of “a pre-association discovery procedure to identify
[another] device in [a] network that can provide the combination of the
services of interest.” Spec. ¶ 3.2
Claims 1, 10, and 16 are independent. Claims 1 and 10, reproduced
below with limitations at issue emphasized, are illustrative of the claimed
subject matter:
1. A device comprising:
at least one processor configured to:
determine at least one combination of services of interest;
encode the at least one combination of the services of
interest;
generate a pre-association request message that includes
identifiers of the services of interest, wherein the pre-association
request message further includes the encoded at least one
combination of the services of interest separate from the
identifiers of the services of interest; and
transmit the pre-association request message.
10. A method comprising:
identifying services of interest;
determining a plurality of combinations of the services of
interest;

2 Throughout this Decision, we refer to: (1) Appellant’s Specification filed
July 18, 2016 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
November 13, 2017; (3) the Appeal Brief filed May 14, 2018 (“Appeal
Br.”); (4) the Examiner’s Answer (“Ans.”) mailed July 20, 2018; and the
Reply Brief filed September 20, 2018 (“Reply Br.”).
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generating a pre-association request message that
identifies the services of interest and the plurality of
combinations of the services of interest; and
transmitting the pre-association request message.
Appeal Br. 26, 27 (Claims Appendix).

REFERENCES
The references3 relied upon by the Examiner are:
Name Reference Date
Kyung et al. US 2009/0279472 A1 Nov. 12, 2009
Vimpari US 2012/0066767 A1 Mar. 15, 2012
Chen et al. US 2014/0126563 A1 May 8, 2014
Yang et al. US 2014/0293978 A1 Oct. 2, 2014
Venkata Naga Ravi US 2015/0106499 A1 Apr. 16, 2015
Cicchino et al. US 2015/0117442 A1 Apr. 30, 2015

REJECTIONS
The Examiner rejects claims 1–4 under 35 U.S.C. § 103 as
unpatentable over Vimpari, Cicchino, and Chen. Final Act. 13–19.
The Examiner rejects claim 5 under 35 U.S.C. § 103 as unpatentable
over Vimpari, Cicchino, Chen, and Yang. Id. at 19–21.
The Examiner rejects claims 6–8 under 35 U.S.C. § 103 as
unpatentable over Vimpari, Cicchino, Chen, and Venkata Naga Ravi. Id. at
21–24.

3 All citations to the references use the first-named inventor only.
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Application 15/213,284

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The Examiner rejects claim 9 under 35 U.S.C. § 103 as unpatentable
over Vimpari, Cicchino, Chen, Venkata Naga Ravi, and Kyung. Id. at 24–
26.
The Examiner rejects claims 10–12 and 16–18 under 35 U.S.C. § 103
as unpatentable over Vimpari and Cicchino. Id. at 26–35.
The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable
over Vimpari, Cicchino, and Yang. Id. at 35–37.
The Examiner rejects claims 14 and 19 under 35 U.S.C. § 103 as
unpatentable over Vimpari, Cicchino, and Venkata Naga Ravi. Id. at 37–39.
The Examiner rejects claims 15 and 20 under 35 U.S.C. § 103 as
unpatentable over Vimpari, Cicchino, Venkata Naga Ravi, and Kyung. Id.
at 39–42.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
The Examiner relies on Cicchino to teach “encode the at least one
combination of the services of interest” and “generate a pre-association
request message that includes identifiers of the services of interest,” as
recited in claim 1. Final Act. 13–14 (citing Cicchino ¶ 54). Specifically, the
Examiner relies on Cicchino’s encrypting of data to teach encoding of data,
as claimed. Id.; see also Cicchino ¶ 48 (“the encryption unit 406 of the
telephony communication setup unit 402 uses the obtained items of data or
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Application 15/213,284

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information to create an encrypted code.”). Cicchino discloses the obtained
items of data that may be encrypted include “a media access control (MAC)
address” or “a telephone number that is associated with or assigned to the IP
telephony device 400.” Cicchino ¶ 45. Cicchino further discloses an
embodiment in which a SIP (Session Initiation Protocol) invite message
includes (1) a unique Call-ID (2) a device telephone number and (3) an
encrypted portion including an encrypted version of one of the obtained
items of data such as the device telephone number. See Cicchino ¶ 54 (“In
other embodiments, both the telephone number associated with or assigned
to the user telephony device and the encrypted code are combined with a call
ID generated in the normal manner, and the combination is inserted into the
call-ID field of a SIP Invite message”). The Examiner relies on Cicchino’s
telephone number and Call-ID to teach the encoded at least one combination
of the services of interest. See Ans. 4 (“There’s combinations of two
services provided by the service provider. One is the phone number and the
other one is the caller ID [sic]. Those two combinations are encoded as
claimed by applicant in claim 1.”).
Appellant argues “there is only a single service of interest represented
by the ‘telephone number’ combined with the ‘unique Call-ID’ in Cicchino,
and that single service is the ‘telephony communication’ being requested.”
Appellant continues “[t]here is no disclosure or suggestion in Cicchino that
the ‘unique Call-ID’ has any implicit or explicit relation to any additional
service beyond the telephony communication itself.” Appeal Br. 11.
We find Appellant’s argument persuasive because the Examiner has not
demonstrated that Cicchino’s call-ID and telephone number relate to two
different services, as required by claim 1.
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Appellant next argues “there is no disclosure or suggestion in
Cicchino of encrypting the ‘call ID.’ Instead, Cicchino discloses that ‘a call
ID is generated for a new telephony communication setup request in the
normal manner, meaning a unique call-ID value is generated, and the
encrypted code is appended to that unique call-ID value.’” Reply Br. 3
(citing Cicchino ¶ 54).
We also find this argument persuasive. Cicchino discloses that
encryption unit 506 encrypts either a MAC address or a telephone number to
create an encrypted code and then appends the encrypted code to the call-ID
value. Cicchino ¶¶ 45, 48, 54. The Examiner has not shown where
Cicchino discusses encrypting the call-ID, as required by claim 1.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant’s other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of independent
claim 1, and, for the same reasons, of dependent claims 2–9.
Claim 10
The Examiner finds Cicchino teaches “generating a pre-association
request message that identifies the services of interest and the plurality of
combinations of the services of interest,” as recited in claim 10. Final
Act. 28 (citing Cicchino ¶ 54).
Appellant argues the Examiner’s finding “is clearly in error as there is
only a single service of interest represented by the ‘telephone number’
combined with the ‘unique Call-ID’ in Cicchino, and that single service is
the ‘telephony communication’ being requested.” Appeal Br. 15.

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The Examiner determines
[s]ince Applicant defines “pre-association request” as a
“request” to identify a device that can provide the services in
paragraph 14 of the specification, hence the setup request that
includes combination of phone number associated to the user and
the call ID of interest identifying a user of a device of Cicchino
et al reads on this broad interpretation.
Ans. 14 (emphasis omitted). Appellant further argues the Examiner
also fails to show how multiple combinations (i.e., “plurality of
combinations”) can be formed from two services. To the extent
that the Examiner’s Answer is asserting that the multiple
combinations can be the two services in different orders (of
which only two are possible), then Appellant asserts that there is
no disclosure or suggestion in Cicchino of a message that
includes any such multiple combinations of the same two
services.
Reply Br. 5.
We find that, in view of Appellant’s Specification, the claimed
“plurality of combinations of the services of interest” requires the Examiner
demonstrate that at least three services are taught in the applied references
and that the three services are arranged in at least two different
combinations. The Examiner has not shown this. The Examiner cannot
ignore or broadly interpret the “the plurality of combinations” limitation out
of the claim.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 10, we need not reach the merits of
Appellant’s other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of independent
claim 10. Independent claim 16 similarly recites “code to generate a pre-
association message that includes the encoded plurality of combinations of
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Application 15/213,284

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the plurality of available services” and, consequently, we also do not sustain
the rejection of independent claim 16. We also do not sustain, for the same
reasons, the rejections of claims 11–15 and 17–20, which depend from
independent claims 10 and 16, respectively.
CONCLUSION
The Examiner’s rejections of claims 1–20 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 103 Vimpari, Cicchino, Chen 1–4
5 103 Vimpari, Cicchino,
Chen, Yang
5
6–8 103 Vimpari, Cicchino,
Chen, Venkata Naga
Ravi
6–8
9 103 Vimpari, Cicchino,
Chen, Venkata Naga
Ravi, Kyung
9
10–12
16–18
103 Vimpari and Cicchino 10–12
16–18
13 103 Vimpari, Cicchino, Yang 13
14, 19 103 Vimpari, Cicchino,
Venkata Naga Ravi
14, 19
15, 20 103 Vimpari, Cicchino,
Venkata Naga Ravi,
Kyung
15, 20
Overall
Outcome
1–10

REVERSED