Ex Parte Connelly et al

Patent Trial and Appeal Board

Oct 27, 2016

13017455 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/017,455 0113112011 Lisa M. Connelly
114592 7590 10/31/2016
Alcatel-Lucent USA Inc.
C/O Davidson Sheehan LLP
8834 North Capital of TX Hwy
Suite 100
Austin, TX 78759
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.
4100-808950-US 6675
EXAMINER
LIU, TIJNG-JEN
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
10/3112016 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):
docketing@ds-patent.com
kasey.larocca@ds-patent.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA M. CONNELLY, JACOB HILLIS, SUBHASHISH GHOSH,
HA WNLI NIAN, ANNE Y. LEE, and MA-LUNG CHUNG
Appeal2015-004432
Application 13/017, 455
Technology Center 2400
Before ERIC S. FRAHM, NATHAN A. ENGELS and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-22, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to providing alerts to particular
subscribers in a communications systems. Spec. 2. Claims 1, 11, and 19 are
independent. Claim 1 is illustrative of the invention and the subject matter
of this appeal, and reads as follows (with the disputed limitations in italics):
1 Appellants identify Alcatel Lucent as the real party in interest. App. Br. 3.
Appeal2015-004432
Application 13/017,455
1. A method of operating a communication portal, the
method comprising:
accessing, at the communication portal, an alert message
addressed to a group registered to receive an alert service;
generating, at the communication portal, user identifiers
corresponding to users that are registered to the group, wherein
the user identifiers are assigned to the users for use within the
communication portal, and wherein the user identifiers are not
communicated outside the communication portal to the users or
a provider of the alert service; and
transmitting the alert message from the communication
portal to the users indicated by the user identifiers.
App. Br. A-1 (Claims App.).
Claims 1-22 stand rejected underpre-AIA 35 U.S.C. § 103(a) as
unpatentable over Siegel et al. (US 2009/0191870 Al; pub. July 30, 2009)
("Siegel") and Vainik et al. (US 2013/0157609 Al; June 20, 2013)
("Vainik"). Final Act. 6-52.
ANALYSIS
We have reviewed the Examiner's rejections in light of the arguments
raised in the Briefs, on the record before us. For the reasons set forth below,
we do not sustain the Examiner's rejections.
Appellants argue the Examiner erred in rejecting independent claim 1
because, according to Appellants, the prior art does not teach "wherein the
user identifiers are not communicated outside the communication portal to
the users or a provider of the alert service," as recited in claim 1. App. Br.
6-8. Specifically, Appellants argue the Examiner erred in finding the
disputed limitation in Siegel. Id. Appellants allege the Examiner has
provided multiple interpretations of "user identifier" as taught in Siegel, and
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Application 13/017,455
under each interpretation, Siegel plainly teaches such "user identifier" being
communicated outside the communication portal and to users and provider
of the alert service, contrary to the claim limitations. Id. On the record
before us, we are persuaded by Appellants' argument.
As Appellants allege, App. Br. 6-7, the Examiner finds Appellants'
claimed "user identifier[s]" in Siegel's teaching of a "Public User Identity
(PUID)" or, alternatively, a "Private User Identity (PRUID)." Final Ans. 7,
8 (citing Siegel Figs. lA-lH, 2A-2B, 3, 16; i-fi-189, 100). Siegel, however,
teaches the "PUID" being the user's public address of record, Siegel i19,
known to (and thus communicated to) the user, id. at i-fi-1 31, 100, and
communicated to application servers, id. at i-f l 00. See App. Br. 6. These
communications occur outside what the Examiner finds to be the
"communication portal." See Final Act. 6 ("P-CSCF, S-CSCF, or I-CSCF
may function as a portal"). Similarly, Siegel teaches the "PRUID" is known
to the user and communicated outside the communications portal, including
in a header of an IMS register message sent from the user equipment to the
home network. Siegel Fig. 7, i-fi-f 110, 113; App. Br. 7.
In response to Appellants' arguments, the Examiner asserts that
Appellants' own Specification includes embodiments in which the "user
identifier" is stored (in databases) outside the communication portal, just as
in Siegel. Ans. 55 (citing Appellants' Fig. 2). The Examiner suggests this
disclosure broadens claim 1 such that Siegel teaches the disputed limitation.
Id. We disagree. The plain language of claim 1 requires "the user
identifiers are not communicated outside the communication portal to the
users or a provider of the alert service." App. Br. A-1 (emphasis added).
Although we give claims their broadest reasonable interpretation consistent
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Application 13/017,455
with the specification, we do not read limitations or embodiments from the
specification into the claims. See, e.g., E-Pass Techs., Inc. v. 3Corn Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003). To interpret claim 1 as allowing
communication of the user identifier to users outside the portal, as the
Examiner suggests, would directly contradict the claim language, and
therefore we decline to do so. Id.; see also In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Because we find, on the record before us, the Examiner erred in
finding the foregoing disputed limitation of claim 1 taught in the prior art,
we need not reach Appellants' remaining arguments on that claim.
Appellants' arguments also persuade us, for the same reasons as discussed
above, the Examiner erred in rejecting independent claims 11 and 19, which
include limitations commensurate in scope to the disputed limitation of
claim 1. See App. Br. 10, 12.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 11, and 19 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Siegel and Vainik. For the same reasons, we also do not
sustain the same rejection of dependent claims 2-10, 12-18, and 20-22,
which depend from claims 1, 11, and 19 and therefore also include the
disputed limitation.
DECISION
We reverse the Examiner's rejection of claims 1-22.
REVERSED
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