Ex Parte Agarwal et al

Patent Trial and Appeal Board

Sep 26, 2017

14500962 (P.T.A.B. Sep. 26, 2017)

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.
14/500,962 09/29/2014 Devesh Agarwal 1322/385/3 DIV 1085
116095 7590 09/28/2017
Oracle-Jenkins, Wilson,
Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
PARK, JEONG S
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
u sptomail @ j wth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TEKELEC, INC.1
Appeal 2017-003252
Application 14/500,962
Technology Center 2400
Before JASON V. MORGAN, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
Appellant discloses the control of delivery of a “social network[]
service originated message directed to a mobile device.” Abstract.
1 The named inventors are Devesh Agarwal and Peter Joseph Marsico.
Appellant note that it is a subsidiary of Oracle International Corporation.
App. Br. 2.
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Application 14/500,962
Exemplary Claims
Claims 1, 6, and 8, reproduced below with key limitations
emphasized, are exemplary:
1. A method for controlling the delivery of a social networking
service originated message to a mobile device, the method
comprising:
at a DIAMETER signaling routing node:
receiving a social networking service originated message
directed to a mobile device wherein the message contains
media content;
accessing social networking service delivery rules
associated with the mobile device from a rules database;
and
delivering the media content to the mobile device in
accordance to the accessed social networking service
delivery rules, wherein delivering the media content
includes determining whether the social networking
service originated message containing the media content
requires conversion to a different protocol format
indicated by the accessed social networking service
delivery rules and, in the event the social networking
service originated message is determined to require the
conversion, converting the social networking service
originated message to the different protocol format.
6. The method of claim 1 wherein delivering the media content
to the mobile device includes querying a number portability
database and delivering the media content to a foreign network
indicated by data in the number portability database.
8. The method of claim 1 wherein accessing social networking
delivery rules includes querying a third party control database
to determine whether the media content should be delivered to
the mobile communications device.
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Rejections
The Examiner rejects claims 1—5, 8—13, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Sumner et al. (US 2002/0061003 Al;
published May 23, 2002), Lew et al. (US 2010/0035640 Al; published Feb.
11, 2010), and Kunz et al. (US 2010/0250685 Al; published Sept. 30, 2010).
Final Act. 2—7.
The Examiner rejects claims 6 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Sumner, Lew, Kunz, and Kindred et al. (US
8,213,899 Bl; issued July 3, 2012). Final Act. 7—8.
The Examiner rejects claims 7 and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Sumner, Lew, Kunz, and McNamara et al. (US
2003/0095555 Al; published May 22, 2003). Final Act. 8—9.
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellant’s arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
Claims 1—5, 7, 9—13, and 15
Claim 1 recites a “method for controlling the delivery of a social
networking service originated message to a mobile device, the method
comprising: at a DIAMETER signal routing node:'” performing steps of
receiving, accessing, and delivering (emphasis added). In rejecting claim 1,
the Examiner interprets the recitation of “a DIAMETER signal routing
node” as representing a mere “intended use of the claimed invention” that
does not “result in a structural difference between the claimed invention and
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the prior art.” Adv. Act. 2 (Mar. 10, 2016); see also Ans. 9-10 (“there is no
controlling definition of a ‘DIAMETER signaling routing node’ in the
specification, so the broadest reasonable interpretation is a signaling routing
node that is capable of implementing the DIAMETER protocol”). The
Examiner finds that “the prior art structure is capable of performing the
intended use” (i.e., serving as a DIAMETER signal routing node), and
therefore “meets the claim.” Adv. Act. 2. The Examiner further notes that
“Appellant admits . . . that [the] DIAMETER protocol is a well-known
protocol” and thus concludes that the prior art, in light of Appellant’s
admitted prior art, would have rendered obvious the claimed invention. Ans.
10.
Appellant contends the Examiner erred because “Sumner fails to
make any teaching or suggestion that the disclosed wireless messaging
engine and/or the disclosed wireless gateway is a DIAMETER signaling
routing node.” App. Br. 8. In particular, Appellant argues “that a
DIAMETER signaling node is a network element that processes
DIAMETER signaling messages and is located entirely within an Internet
Protocol (IP) network,” but that “the wireless messaging engine described in
Sumner is a gateway element that processes messages communicated
between the Internet and a wireless network.” Reply Br. 2 (citing Sumner
Figs. 3 and 4).
We find Appellant’s arguments unpersuasive because Appellant fails
to show the Examiner erred in concluding that the DIAMETER signaling
routing node recitation is merely an intended use of the device that performs
the recited steps of claim 1. “Method claim preambles often recite the
physical structures of a system in which the claimed method is practiced,
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and claim 1 is no different.” Microprocessor Enhancement Corp. v. Texas
Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (calling a similar
drafting format a “seeming preamble within a preamble structure”). The “at
a DIAMETER signaling routing node” recitation similarly serves as a
“preamble within a preamble”—one that is not referred to in the recited
method steps. Cf. Eaton Corp. v. RockwellInt’l Corp., 323 F.3d 1332, 1340
(Fed. Cir. 2003). Moreover, Appellant’s acknowledgment that
“DIAMETER signaling routing nodes are well known to being able to route
DIAMETER signaling messages via the DIAMETER protocol” (Reply Br.
3) accords with the Examiner’s claim interpretation.
Appellant does not identify a patentable distinction between a
signaling routing node “being capable o/implementing the DIAMETER
protocol” (Ans. 10, emphasis added) and a signaling routing node “being
able to route DIAMETER signaling messages” (Reply Br. 3). In particular,
Appellant does not identify any steps in the claimed method that are directed
to the routing of DIAMETER signaling messages. Therefore, we agree with
the Examiner that claim 1 ’s recitation of “at a DIAMETER signaling routing
node” merely encompasses an intended use that fails to distinguish claim 1
from the prior art.
In rejecting claim 1, the Examiner further relies on Sumner’s use of
rules stored in database 325 to determine the processing and formatting of
messages, as modified by Lew’s unified messaging server—which converts
a message format to and from a number of formats—and Kunz’s interactions
with a social network service, to render obvious: (1) delivering media
content to accessed social networking service delivery rules', (2) determining
whether the social networking service originated messages containing the
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media content requiring conversion to a different protocol format indicated
by the accessed social networking service delivery rules', and (3) in the event
the social networking service originated message is determined to require
the conversion, converting the social networking service originated message
to the different protocol format. Final Act. 3—5 (citing, e.g., Sumner 140,
Figs. 3, 4; Lewi 31; KunzH 34, 36).
Appellant contends the Examiner erred because Lew merely
“discloses that the conversion of a message 506 (e.g., a text message) that is
communicated between a mobile telephone and a personal computer (neither
of which is a social networking service) is conducted by a unified messaging
server.” App. Br. 10 Appellant argues that “Lew executes the conversion of
a[n] SMS/MMS text message to an instant messaging format based on the
software (e.g., instant messaging software)” rather than “to a different
protocol format indicated by accessed social networking service delivery
rules.” Id. at 10-11 ; see also Reply Br. 5. Although Appellant
acknowledges that Sumner discloses “‘a set of rules determined by the
subscriber’ which may indicate preferences set or changed by a mobile
subscriber” (App. Br. 11, citing Sumner 151), Appellant argues “there is no
teaching or suggestion that the unified messaging server in Lew would
utilize such a set of rules since Lew indicates that the conversion is based
upon the software being utilized by the user parties’ endpoint devices that
are currently conducting the messaging session” (App. Br. 11).
Appellant’s arguments are unpersuasive because the Examiner
correctly relies on Sumner to render obvious use of service delivery rules to
determine processing and formatting. See Ans. 11 (citing Sumner 1 52, Fig.
3). The Examiner correctly relies on Lew and Kunz to modify Sumner such
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that the rules can further require conversion of a social networking service
originated message to a different protocol format. See Ans. 11 (citing Lew
131); Final Act. 5 (citing Kunz || 34—35).
Appellant’s arguments posit that it would not have been obvious to
modify Lew’s protocol conversion using Sumner’s processing and
formatting rules. See App. Br. 11; Reply Br. 3—5. Appellant further argues
that “while Sumner does generally disclose the determination of a proper
message format or protocol, there is no disclosure of requiring conversion to
a different protocol format indicated by the accessed social network service
delivery rules.” Reply Br. 3. However, Appellant’s arguments fail to
address persuasively the Examiner’s reliance on Lew’s protocol conversion
and the social network service teachings of Kunz to modify the scope of
Sumner’s processing and formatting rules to include protocol conversions in
the manner recited. See Final Act. 3—5; Ans. 11. Rather, Appellant’s
arguments unpersuasively posit either that it would not have been obvious to
modify Lew (rather than addressing the Examiner’s findings that modifying
Sumner in light of Lew and Kunz would have been obvious) or that Sumner
in isolation is deficient (rather than addressing Sumner as modified by Lew
and Kunz). Therefore, we agree with the Examiner that the combination of
Sumner, Lew, and Kunz would have rendered obvious the delivering,
determining, and converting recitations of claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and of claims 2—5, 7, 9-13, and 15, which Appellant does not
argue separately with persuasive specificity. App. Br. 11—12, 14.
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Claims 6 and 14
In rejecting claim 6, the Examiner finds that Kindred’s use of a
mobile phone directory number to identify the carrier of a mobile phone
renders obvious modifying the teachings and suggestions of Sumner, Lew,
and Kunz such that delivering the media content to the mobile device
includes querying a number portability database and delivering the media
content to a foreign network indicated by data in the number portability
database. Final Act. 7—8 (citing Kindred col. 3,11. 45—63); see also Ans. 13
(further citing Kindred claim 5).
Appellant contends the Examiner erred because “there is no
disclosure, teaching, or suggestion in Kindred of querying a number
portability database and delivering the media content to a foreign network
indicated by data in the number portability database as recited.” App. Br.
13—14. However, Appellant’s argument does not address the Examiner’s
reliance on Kindred to render obvious modifying the combined teachings
and suggestions of Sumner, Lew, and Kunz, in the manner recited in claim
6. See Final Act. 8; Ans. 13. Neither Appellant’s attack of Kindred in
isolation, nor Appellant’s conclusory assertion that “the combination of
Sumner, Lew, and Kunz is similarly silent,” show error in the Examiner’s
findings and conclusions. Therefore, we agree with the Examiner that the
combination of Sumner, Lew, Kunz, and Kindred renders obvious the
disputed recitation of claim 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 6, and claim 14, which Appellant does not argue separately. App.
Br. 13-14.
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Claims 8 and 16
Claim 8 recites wherein accessing social networking delivery rules
includes querying a third party control database to determine whether the
media content should be delivered to the mobile communication device. In
rejecting claim 8, the Examiner finds that “Sumner teaches . . . determining
[a] delivery method based on the preference/profile data base as presented
above.” Final Act. 7. The Examiner acknowledges that “Sumner does not
explicitly teach the database as a third party database.” Ans. 12. However,
the Examiner concludes it would have been obvious ... to modify Sumner
... to include a third party company independently maintaining the
preference/profile database.” Id.', see also Ans. 6. The Examiner finds this
modification would “reduce workload on the wireless messaging engine.”
Final Act. 7.
Appellant contends the Examiner erred because Sumner’s subscriber
profile “is not the same as a third party control database that is queried in
order to determine whether media content should be delivered to a mobile
device.” App. Br. 12. However, Appellant’s argument does not show how
mere ownership of a database by a third party distinguishes the claimed
database from Sumner’s database, nor does Appellant’s argument address
the Examiner’s proffered reason why it would have been obvious to an
artisan of ordinary skill to modify the prior art in the recited manner.
Furthermore, Sumner renders obvious using preference information to
ensure that “the wireless subscriber unit 340a—340c is only sent the message
content that is desired by the subscriber or is capable of being presented by
the wireless subscriber unit.” Sumner 138 (cited in Ans. 3). Appellant does
not distinguish querying to determine whether the media content should be
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delivered to the mobile communications device from Sumner’s limiting
message content that is sent out (i.e., determining whether the media content
should be delivered) to media content that is desired or capable of being
presented. Therefore, we agree with the Examiner that the combination of
Sumner, Lew, Kunz, and Kindred renders obvious “accessing social
networking delivery rules includes querying a third party control database to
determine whether the media content should be delivered to the mobile
communications device,” as recited in claim 8.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 8, and claim 16, which Appellant does not argue separately. App.
Br. 12-13.
DECISION
We affirm the Examiner’s decision rejecting claims 1—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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