Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 21, 2015

12829179 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/829, 179 07/01/2010
121312 7590 12/23/2015
Foley & Lardner LLP/ Broadcom Corporation
3000 K Street N.W
Suite 600
Washington, DC 20007-5109
FIRST NAMED INVENTOR
XueminChen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106861-0535 8053
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
ipdocketing@foley.com
cmckenna@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUEMIN CHEN, GORDON YONG LI, SAM ANDERSON, and
PIERRE COUILAUD
Appeal2014-000823
Application 12/829, 1 79
Technology Center 2400
Before ST. JOHN COURTENAY, III, JOHN A. EV ANS, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejections of claims 1, 2, 4--9, and 11-19.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
The present patent application relates prioritizing and scheduling
services in an IP multimedia network. Spec. i-f 3.
1 Appellants identify Broadcom Corporation as the real party in interest.
App. Br. 2.
2 The Examiner has objected to claims 3, 10, 13, and 20. Final Act. 10.
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Application 12/829, 179
Claim 1 is illustrative (emphasis added):
1. A method for communication, the method
comprising: in an IP multimedia gateway:
determining capabilities and a proposed service
priority profile of a communication device that is
communicatively coupled to said IP multimedia gateway,
said proposed service priority profile of said
communication device based at least in part on said
determined capabilities of said communication device;
transmitting said determined capabilities and said
determined proposed service priority profile to a service
manager that is operable to provide services to said
communication device;
receiving an actual service priority profile from
said service manager, wherein said received actual
service priority profile is generated by said service
manager based at least in part on said transmitted
capabilities and said transmitted proposed service priority
profile; and
communicating content for services provided by
said service manager between said communication
device and said service manager based at least in part on
said received available actual service priority profile.
The Rejections
Claims 1, 2, 4---6, 11, 12, and 14--16 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Davidson (US 2009/0225762 Al; Sept. 10, 2009).
Claims 7-9 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davidson and Towle (US 2006/0221828 Al; Oct. 5,
2006).
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
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Application 12/829, 179
Claims 1-20 stand rejected under nonstatutory obviousness-type
double patenting as unpatentable over Davidson and claims 1-20 of
copending Application No. 12829212 (the "'212 Application).
ANALYSIS
Indefiniteness
The Examiner rejects claims 1-20 as indefinite because the limitation
"said received available actual service priority profile", as recited in claims 1
and 2, lacks sufficient antecedent basis. We agree with the Examiner.
Claim 1 recites "receiving an actual service priority profile," but makes no
mention of an "available" profile prior to the use of that term within the
limitation at issue. Accordingly, we sustain the Examiner's rejections of
independent claim 1 and dependent claims 2-10, 12, 13, and 15, each of
which either recites or inherits the limitation at issue. Independent claim 11
and dependent claims 14 and 16----'20, however, do not recite or inherit the
limitation at issue. Accordingly, we do not sustain the Examiner's rejection
of claims 11, 14, and 16-20.
Anticipation
Claim 1 recites, in relevant part, "said proposed service priority
profile of said communication device based at least in part on said
determined capabilities of said communication device." Independent claim
11 recites similar limitations.
Appellants' contend the Examiner errs in finding Davidson anticipates
the limitation at issue. App. Br. 9-14; Reply Br. 4--7. Specifically,
Appellants contend, "determining a [Quality of Service] level to apply based
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Application 12/829, 179
on an organization is not the same as [the claimed] determining a service
priority profile based on the capabilities of a communication." App. Br. 12.
We agree with Appellants. Initially, as a matter of claim construction,
we do not agree with the Examiner that the broadest reasonable
interpretation of "based at least in part on" encompasses "any type of
relationships, as long as there is some sort of relatedness." Ans. 9. Rather,
we find that one of ordinary skill in the art would understand the phrase
"based at least in part on" within the context of the claim to require that the
determined capabilities at least partly underlie or inform the profile.
Applying our construction, we disagree with the Examiner's finding
that Davidson's proposed Quality of Service levels are "based at least in part
on" connection identifiers because the two are provided concurrently. Ans.
11. Such a finding of concurrent determination, absent more, does not
equate to the claimed relationship. Further, we agree with Appellants that
Davidson's determining of Quaiity of Service based on an organization's
rules does not anticipate the claimed determination of a proposed service
priority profile based at least in part on determined capabilities of the device.
Reply Br. 5.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 102(e)
rejections of independent claims 1 and 11 as well as dependent claims 2, 4--
6, 12, and 14--16.
Obviousness
The Examiner relies on the same findings in Davidson discussed
above in rejecting as obvious claims 7-9 and 17-19. Accordingly, we do
not sustain the Examiner's 35 U.S.C. § 103(a) rejections of dependent
claims 7-9 and 17-19 for the same reasons discussed above.
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Application 12/829,179
Obviousness-Type Double Patenting
The Examiner's provisional non-statutory obviousness-type double
patenting rejection relies on claims 1-20 of the '212 Application and
Davidson. As of the date of our Decision, the '212 Application remains
pending. Further, at least some of the claims in the '212 Application relied
upon in the provisional rejection have been amended since briefing of the
instant appeal closed. We decline to reach this rejection in light of the
continued prosecution of the '212 Application. See Ex parte Moncla, 95
USPQ2d 1884 (BP AI 2010) (precedential) (panels have flexibility when
determining whether to reach provisional double-patenting rejections).
DECISION
We affirm the Examiner's decision to reject as indefinite claims 1-10,
12, 13, and 15.
We reverse the Examiner's decision to reject as indefinite claims 11,
14, and 16-20.
We reverse the Examiner's decision to reject as anticipated claims 1,
2, 4---6, 11, 12, and 14--16.
We reverse the Examiner's decision to reject as obvious claims 7-9
and 17-19.
We affirm the Examiner's decision to reject provisionally claims 1-20
for nonstatutory obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Application 12/829, 179
lv
AFFIRMED-IN-PART
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