Ex Parte Griot et al

Patent Trial and Appeal Board

Oct 31, 2016

12851679 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/851,679 08/06/2010
23696 7590 11/02/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Miguel Griot
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.
093206U2 2214
EXAMINER
CHEN, PETER
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL GRIOT and OSOK SONG
Appeal2015-008181
Application 12/851,679
Technology Center 2400
Before JUSTIN BUSCH, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-10, 12-16, 18--41, and 55---65. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is QUALCOMM
Incorporated. App. Br. 3.
2 Claims 11, 17, and 66-71 are not before us, as they have been objected to
as being dependent upon a rejected base claim, but the Examiner indicated
they would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims. Final Act. 10.
Appeal2015-008181
Application 12/851,679
fNVENTION
Appellants' invention relates to identifying a domain for delivery of
message service information. Abstract. Claim 1 is illustrative and reads as
follows:
1. A method of communication, comprising:
determining that message service information is to be sent
by an access terminal subsequent to the access terminal storing
an indication that indicates whether a message service originated
by the access terminal is preferred to be invoked over an Internet
Protocol domain or that the message service is not to be invoked
over the Internet Protocol domain;
identifying a domain for delivering the message service
information based on the indication stored at the access terminal,
wherein the domain for delivering the message service
information is identified when the access terminal originates the
message service; and
sending the message service information from the access
terminal over the identified domain.
REJECTIONS
Claims 1-5, 9, 13, 15, 19, 21-25, 27-32, 34--39, 41, and 59-61 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Wu (US 2011/0028120 Al; Feb. 3, 2011) 3 and Oyama et al. (US
2008/0254791 Al; Oct. 16, 2008) ("Oyama").
3 In the Answer, the Examiner noted that "previous Pub No. of Wu reference
in the Office Action of November 25, 2014 and Appellant's Appeal Brief
were typed wrong, but contents and paragraph numbers cited were from the
correct Pub Number." Ans. 13. The Examiner inadvertently used the
Publication No. of Hallenstal et al., another prior art reference used in the
Final Action. Because Appellants' arguments reflect the teachings of the
2
Appeal2015-008181
Application 12/851,679
Claims 6-8, 10, 12, 14, 16, 18, 20, 26, 33, 40, 55-58, and 62-65 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Wu, Oyama, and Hallenstal et al. (US 2010/0254313 Al; Oct. 7, 2010)
("Hallenstal").
ANALYSIS
We have considered Appellants' arguments, but do not find them
persuasive of error. 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 provide the following explanation for
emphasis.
In rejecting claim 1, the Examiner found Wu teaches or suggests all of
the recited limitations, except "determining that message service information
is to be sent by an access terminal subsequent to the access terminal storing
an indication," for which the Examiner relied on Oyama. Final Act. 2-3
(citing Wu Fig. 3, i-f 40; Oyama Fig. 6, i-fi-17, 35).
Appellants contend the cited portions of Wu and Oyama fail to teach
the "determining" step of claim 1. App. Br. 8-9. Appellants argue "Wu
does not disclose the UE stores the indication, much less storing the
indication prior to determining any message service information is to be
sent." Id. at 9. Appellants further argue that Oyama does not teach that the
UE stores any indication of a preferred domain and is silent with respect to
the UE storing any indication. Id. at 11. Appellants also argue that simply
registering with a domain, as Oyama teaches, does not teach the user storing
intended Wu reference, we find the Examiner's error harmless. The correct
Publication No. is shown here.
3
Appeal2015-008181
Application 12/851,679
an indication of a preferred domain for invoking the message service, as
claim 1 requires. Id. at 12.
Appellants' arguments are not persuasive because they attack the prior
art references individually, even though the Examiner relies on the
combination of Wu and Oyama as teaching or suggesting the disputed
features. Final Act. 2-3; Ans. 12. In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) ("The test
for obviousness is what the combined teachings of the references would
have suggested to those having ordinary skill in the art."). The Examiner
found Wu teaches that user equipment (UE) may originate the service in
either an IMS domain or a CS domain, and that the indication of the domain
is from a stored data/profile at the UE. Final Act. 3 (citing Wu Fig. 3, i-f 40);
Ans. 12 (citing Wu Fig 3, i-f 40, 11. 1-2, 7-9). The Examiner further found
Oyama teaches determining that message service information is to be sent
occurs subsequent to storing service domain information. Ans. 12 (citing
Oyama Figs. 4, 6, i-f 35).
Appellants argue Wu does not disclose that the UE stores the
indication. 4 App. Br. 9. Appellants, however do not persuasively explain
why the Examiner erred in finding that an artisan of ordinary skill would
appreciate that, in order for Wu to originate the service in a particular
domain, the indication of the domain would be stored at the UE. Appellants
4 Appellants further argue for the first time in the Reply Brief, without a
showing of good cause, that "Wu expressly discloses that 'the UE does not
determine the service domain at the beginning when originating the
service'." Reply Br. 4 (citing Wu i-f 54). Appellants did not raise paragraph
54 of Wu in the Appeal Brief. Thus, Appellants waived that argument. See
37 C.F.R. § 41.41(b)(2) (2012).
4
Appeal2015-008181
Application 12/851,679
argue that Oyama does not teach that the UE stores any information (App.
Br. 1 O; Reply Br. 6), but Appellants present no persuasive explanation or
evidence to rebut the Examiner's findings. Rule 41.37 "require[s] more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Moreover, an obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim"
because the analysis "can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Here, based on the portions of Wu
cited by the Examiner, we agree with the Examiner that an artisan of
ordinary skill would appreciate that, when the domain to which a UE is to
connect is variable, an indication of which domain to connect to would be
stored at the UE. See Final Act 3; Ans. 11-12. We agree that the limitation
"the access terminal storing an indication that indicates whether a message
service originated by the access terminal is preferred to be invoked over an
Internet Protocol domain or that the message service is not to be invoked
over the Internet Protocol domain," recited in claim 1, is broad enough to
encompass storing a pre-configured indication of the domain. See Final Act.
3; Ans. 12. Such interpretation is consistent with the disclosure in
Appellants' Specification of preconfiguring the access terminal with an
indication "when the access terminal is initially programmed, when the
access terminal is initially deployed, or at some other time," including when
the device is manufactured. Spec. i-fi-1 40-42.
5
Appeal2015-008181
Application 12/851,679
Appellants next contend the cited portions of Wu and Oyama fail to
disclose the "identifying" step of claim 1. App. Br. 12. Appellants argue
Wu teaches that the UE originates the service and determines the domain for
performing the service only after receiving the indication from the network
regarding whether the network supports the domain. Id. at 13.
Appellants' arguments are unpersuasive. The Examiner found Wu's
teaching that "the UE may originate the service and .... [t]he first service
domain may be referred as to an IP multimedia subsystem (IMS) domain or
a circuit switched (CS) domain" would have taught or suggested "that the
domain is identified when the access terminal originates the message
service" and that "the IMS or CS domain is stored in the terminal." Final
Act. 3 (citing Wu Fig. 3, i-f 40). Appellants present no persuasive
explanation or evidence to rebut the Examiner's findings. Moreover, in the
Answer, the Examiner found that Wu in combination with Oyama also
teaches this limitation. Ans. 12 (citing Oyama Figs. 4, 6 i-f 35). In response,
Appellants argue only that Oyama is silent regarding the access terminal
identifying a domain for delivering message service information when the
message service is originated. Appellants' arguments do not address the
combination proposed by the Examiner, but instead attack the references
individually. Mouttet, 686 F.3d at 1332.
Appellants further contend that the Examiner erred in combining the
teachings of Wu and Oyama because Wu, in paragraph 40, teaches away
from determining which message service domain to invoke when the service
is originated. App. Br. 13; Reply Br. 2. Appellants point to the statement
"the UE may determine the service domain after acquiring network
6
Appeal2015-008181
Application 12/851,679
capability rather than determine the service domain when originating the
service. " Id.
We are not persuaded the Examiner erred. A teaching away requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find
that paragraph 40 of Wu does not actually criticize, discredit, or otherwise
discourage the UE from originating the service with a preferred domain.
Moreover, we find that the Examiner provides persuasive articulated
reasoning with rational underpinning for an artisan of ordinary skill to have
modified the system of Wu with the teachings of Oyama. Final Act. 3
(citing Oyama i-f 35).
For these reasons, we are not persuaded that the Examiner erred in
combining Wu and Oyama or in finding that the combination of Wu and
Oyama teaches or suggests the limitations of claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 21, 28, and 35, which Appellants argue are patentable
for similar reasons. App. Br. 14. We also sustain the 35 U.S.C. § 103(a)
rejection of dependent claims 2-5, 9, 13, 15, 19, 22-25, 27, 29-32, 34, 36-
39, 41, and 59-61, for which Appellants make no additional arguments. Id.
We also sustain the 35 U.S.C. § 103(a) rejection of dependent claims 6-8,
10, 12, 14, 16, 18, 20, 26, 33, 40, 55-58, and 62---65, for which Appellants'
argue only that Hallenstal fails to overcome the deficiencies of Wu and
Oyama. Id. at 14--15.
7
Appeal2015-008181
Application 12/851,679
DECISION
We affirm the decision of the Examiner rejecting claims 1-10, 12-16,
18--41, and 55---65.
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).
AFFIRMED
8