Ex Parte Laurila et al

Patent Trial and Appeal Board

Dec 12, 2016

11285107 (P.T.A.B. Dec. 12, 2016)

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.
11/285,107 11/23/2005 Antti K. Laurila 39700-805001US/NC41496US 7998
12358 7590 12/14/2016
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
JONES, PRENELL P
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
IPDocketingBOS @ mintz.com
IPFileroomBOS@mintz.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTTI K. LAURILA and MIIKKA POIKSELKA
Appeal 2016-000083
Application 11/285,107
Technology Center 2400
Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a rejection
of claims 1, 3, 14, 16, and 24—26.2 Because the claims have been twice
rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). See
Ex parte Lemoine, 46USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We affirm.
1 According to Appellants, the real party in interest is Nokia Corporation.
App. Br. 2.
2 Claims 2, 15, 21, and 22 “are objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
. . . .” Non-Final Act. 8.
Appeal 2016-000083
Application 11/285,107
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention generally “relates to
group communication in communication systems providing a group
communication service” and “primarily relates to informing group members
about usable media types in a group.” Spec. ^fl[ 1, 15.3 “[Information on
usable media types in the group is sent to group members in a message
advertising the group,” and “[t]he message contains either a new field for the
information or an existing field is extended to contain the information.”
Abstract. The Specification explains that a “message advertising a group”
refers to any “message informing group members about an existing group.”
Spec. 1 6.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A method, comprising:
advertising a group, wherein the advertising comprises an
extensible markup language document management server
sending, before a creation of a group call, at least one message
advertising the group to at least one intended group member,
wherein the at least one message advertising the group includes
an indication of usable media types in the group,
wherein the usable media types include a plurality of the
media types usable by the group during the group call, and
3 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 23, 2005; “Non-Final Act.” for the Non-Final
Office Action, mailed May 19, 2014; “App. Br.” for the Appeal Brief, filed
December 29, 2014; “Ans.” for the Examiner’s Answer, mailed July 24,
2015; and “Reply Br.” for the Reply Brief, filed September 24, 2015.
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Application 11/285,107
wherein at least one processor implements at least the
advertising.
App. Br. 19 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Glitho et al.
(“Glitho”)
Benitez Pelaez et al.
(“Benitez Pelaez”)
Hoover
Brewer
Synnergren et al.
(“Synnergren”)
US 6,625,141 B1 Sept. 23, 2003
US 2004/0190689 Al Sept. 30, 2004
US 2006/0140173 Al June 29, 2006
WO 2005/020598 A2 Mar. 3, 2005
WO 2006/006897 Al Jan. 19, 2006
The Rejections on Appeal
Claims 1, 3, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brewer, Glitho, Hoover, and Benitez Pelaez. Non-Final
Act. 3—5; App. Br. 4; Ans. 3—5.
Claims 16 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brewer, Glitho, Hoover, Benitez Pelaez, and Synnergren.
Non-Final Act. 5—6; App. Br. 4; Ans. 5—6.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Brewer, Glitho, Benitez Pelaez, and Synnergren. Non-Final Act. 6—8;
App. Br. 4; Ans. 6—7.
ANAFYSIS
We have reviewed the rejections of claims 1, 3, 14, 16, and 24—26 in
light of Appellants’ arguments that the Examiner erred. For the reasons
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Application 11/285,107
explained below, we disagree with Appellants’ assertions regarding error by
the Examiner. We adopt the Examiner’s findings and reasoning in the
Non-Final Office Action and Answer and add the following primarily for
emphasis.
The Rejections of Claims 1, 3, 14, 16,
24, and 25 Under 35 U.S.C. § 103(a)
“Message Advertising the Group Includ[ing]
an Indication of [a Plurality of] Usable Media Types”
Appellants argue that the Examiner erred in rejecting claim 1 because
Benitez Pelaez and Glitho do not disclose or suggest a “message advertising
the group includ[ing] an indication of usable media types . . . wherein the
usable media types include a plurality of the media types usable by the group
during the group call,” as recited in claim 1. App. Br. 10, 14—16; Reply
Br. 2, 6—8, 10-12. Appellants seek to distinguish Benitez Pelaez by
asserting that a querying message in Benitez Pelaez “does not include the
media types usable by the group during the group call” but instead “simply
asks the called party to respond with the media type preferred by the called
party.” App. Br. 10; Reply Br. 2. Appellants further assert that the querying
message (1) “does not advertise the useable media types for the group, as
required by claim 1,” and (2) concerns “the called party’s usable media
types, not the group’s usable media types, as required by claim 1.” App.
Br. 10, 16; Reply Br. 2, 7.
For Glitho, Appellants admit that Glitho discloses invitation messages
that carry “descriptions that allow participants to agree on a set of
compatible media types.” Reply Br. 11. Appellants argue, however, that
Glitho does not “mention the contents of’ the descriptions in the invitation
messages. Id. Appellants also argue that the invitation messages are sent
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Application 11/285,107
“after a group advertisement” and “likely only include[] the sender’s media
type.” Id. at 11—12.
Appellants’ arguments have not persuaded us of Examiner error. The
Examiner explains that the rejection relies on the combination of Glitho and
Benitez Pelaez. Ans. 9—11; see Non-Final Act. 4—5; Ans. 3^4. The
Examiner finds, and we agree, that Glitho teaches “providing services via
[session initiation protocol] SIP protocol messaging in a multimedia
communication system” where invitation messages include “the option for
participants to agree on a set of compatible (e.g. usable) media types.”
Ans. 9—10 (citing Glitho 4:31—43); see Non-Final Act. 4; Ans. 3. Further,
the Examiner finds that Benitez Pelaez teaches “multiple media types are
available to users of a call session, wherein [the] multiple media types are
provided as optional choices after initiation of [the] call session (during [the]
call session). . . .” Ans. 9 (citing Benitez Pelaez || 68—69); see Non-Final
Act. 5; Ans. 4.
In essence, Appellants’ arguments attack the references individually.
App. Br. 10, 14—16; Reply Br. 2, 6—8, 10-12. Where a rejection rests on a
combination of references, however, an appellant cannot establish
nonobviousness by attacking the references individually. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, “the test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.” In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d413, 425 (CCPA
1981). Appellants do not address what the Glitho-Benitez Pelaez
combination “taken as a whole would suggest to one of ordinary skill in the
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art” and, therefore, have not established Examiner error. App. Br. 10, 14—
16; Reply Br. 2, 6—8, 10-12.
Further, Appellants’ argument that Glitho’s invitation messages are
sent “after a group advertisement” does not respond to the rejection because
the Examiner relies on Brewer, not Glitho, for teaching “advertising a group
. . . before a creation of a group call,” as recited in claim 1. Non-Final
Act. 3; Ans. 3. Similarly, Appellants’ argument that Glitho’s invitation
messages “likely only include[] the sender’s media type” does not respond to
the rejection because the Examiner relies on Benitez Pelaez, not Glitho, for
teaching “the usable media types include a plurality of the media types
usable by the group during the group call,” as recited in claim 1. Non-Final
Act. 5; Ans. 4.
Summary for Claim 1
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Brewer, Glitho, Hoover, and Benitez Pelaez. Hence, we sustain the
rejection of claim 1.
Claims 3,14,16,24, and 25
Appellants do not argue claims 3, 14, 16, 24, and 25 separately from
claim 1. App. Br. 10—17; Reply Br. 6—12. We therefore sustain the
rejections of those claims. See 37 C.F.R. § 41.37(c)(l)(iv).
The Rejection of Claim 26 Under 35 U.S.C. § 103(a)
Appellants argue that the Examiner erred in rejecting claim 26
because “[cjlaim 26 includes similar features as claim 1” and distinguishes
over the references for the same reasons as claim 1. App. Br. 17; Reply
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Br. 8, 12—13. As noted above, Appellants’ arguments have not persuaded us
that the Examiner erred in rejecting claim 1.
Appellants also argue that the Examiner erred in rejecting claim 26
because Synnergren and Glitho do not disclose or suggest “storing, by the
user equipment, the indication” of “a plurality of media types usable in the
group during the group call,” as recited in claim 26. App. Br. 17; Reply
Br. 8—9, 13—14. More specifically, Appellants assert that in Synnergren an
application server rather than user equipment stores a plurality of media
types in an invitation message sent by a client (user equipment). App.
Br. 17; Reply Br. 9, 13. Appellants further assert that Glitho does not
“mention the contents of’ the descriptions in the invitation messages and
that the invitation messages are sent “after a group advertisement” and likely
“only include a single media type, rather than a plurality of media type[s].”
Id. at 13—14.
Appellants’ arguments have not persuaded us of Examiner error.
Appellants’ arguments again attack the references individually instead of
addressing what the combination “taken as a whole would suggest to one of
ordinary skill in the art.” See McLaughlin, 443 F.2d at 1395; see also
Keller, 642 F.2d at 425.
In addition, the Examiner finds, and we agree, that while
Synnergren’s application server “stores media messages, the client [user
equipment] beforehand provided the server with invite messages which
include media types” and, therefore, “Synnergren teaches that the client
[user equipment] provided storage for invite messages prior to sending the
messages to the server for storage.” Ans. 11 (citing Synnergren 14:23—32).
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In the Reply Brief, Appellants do not address the finding that Synnergren
teaches user equipment message storage prior to sending. Reply Br. 13—14.
Appellants’ arguments regarding Glitho applied to claim 26 parallel
Appellants’ arguments regarding Glitho applied to claim 1. Reply Br.
11—12, 13—14. For the reasons discussed above, those arguments have not
persuaded us of reversible error.
Accordingly, Appellants’ arguments have not persuaded us that the
Examiner erred in rejecting claim 26 for obviousness based on Brewer,
Glitho, Benitez Pelaez, and Synnergren. Hence, we sustain the rejection of
claim 26.
DECISION
We affirm the Examiner’s decision to reject claims 1, 3, 14, 16, and
24—26.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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