Ex Parte Lee et al

Patent Trial and Appeal Board

Jun 25, 2013

11591985 (P.T.A.B. Jun. 25, 2013)

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.
11/591,985 11/02/2006 Ji-Hye Lee 678-2650 (P14411) 8930
66547 7590 06/25/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
SOROWAR, GOLAM
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
06/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JI-HYE LEE, SANG-KYUNG SUNG,
WUK KIM, and HYEON-CHEOL PU
____________

Appeal 2011-011198
Application 11/591,985
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011198
Application 11/591,985

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Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
2-5, 7-9, 11-14, and 16-22. (App. Br. 3.) We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ claimed invention “relates to a method and a system in
which a client, intending to participate in a chat Push-to-talk over Cellular
(PoC) group, presents session participation-invitation reservation to a server
when the number limit has been exceeded pursuant to the policy of the chat
PoC group, or when a chat PoC group ID exists but a corresponding session
has not been initiated.” (Spec. 1).
Independent claim 19, reproduced below, is representative of the
subject matter on appeal:
19. A server for managing session participation in an
existing session, by a plurality of clients connected to a Session
Initiation Protocol/Internet Protocol (SIP/IP) core network, the
server comprising:

a transceiver for receiving a session participation
message including a session invitation reservation for reserving
participation in the existing session from a client of the plurality
of clients; and

a controller for identifying the session invitation
reservation included in the received session participation
message, for determining whether the existing session is in a
state in which the client can participate in the existing session,
according to the session invitation reservation, and if the client
cannot participate in the existing session, for monitoring the
existing session to determine whether the existing session goes
into the state in which the client can participate in the existing
Appeal 2011-011198
Application 11/591,985

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session, and if the client can participate in the existing session,
notifying the client of session participation.

REJECTION
The Examiner rejected claims 2-5, 7-9, 11-14, and 16-22 under 35
U.S.C. § 102(b) as being anticipated by Dorenbosch (US Pat. Appl. Pub.
2003/0235184 A1, published on December 25, 2003). Ans. 3-12.

CONTENTIONS
Appellants contend, inter alia:
[I]n independent Claims 19-22 a session participation message
is used to become a participant in an existing session. However,
Dorenbosch, as cited by the Examiner, especially, FIG. 4 and
paragraph [0042], clearly are directed to a floor reservation
request, i.e., a request to talk or input data, from a participant in
the session, i.e., somebody who is already participating in the
session. Therefore, contrary to the Examiner's assertion,
Dorenbosch does not teach receiving or transmitting a session
participation message including a session invitation reservation
for reserving participation in the existing session from a client
of the plurality of clients.

(App. Br. 10, emphasis omitted).

We agree. We observe each of independent claims 19 and 20-22
recites in commensurate form the limitation of notifying the client when the
existing session is in the state in which the client can participate in the
existing session.
We observe Dorenbosch expressly discloses:
Message flow diagram 400 begins when a participant in a
multi-participant communication session, such as a user of
communication device 112, who desires to reserve the floor in
Appeal 2011-011198
Application 11/591,985

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order to transmit user information, that is, to speak or to
transmit user data, inputs a floor reservation request (402) into
the participant's communication device, that is, communication
device 112.

(Dorenbosch, para. [0042], emphases added).
Therefore, we find the evidence (id.) supports Appellants’ contention
that “Dorenbosch, as cited by the Examiner, especially, FIG. 4 and
paragraph [0042], clearly are directed to a floor reservation request, i.e., a
request to talk or input data, from a participant in the session, i.e., somebody
who is already participating in the session.” (App. Br. 10; see also Reply
Br. 1, emphasis added).
Moreover, the Examiner’s own statement of record undermines the
Examiner’s finding of anticipation: the “Examiner agrees, Fig. 4 of
Dorenbosch's reference is directed to a floor reservation request from
somebody who is already participating in the session.” (Ans. 14, emphasis
added).
The rigorous requirements of an anticipation rejection require a one-
for-one mapping of each claim limitation to the corresponding portion of the
reference, arranged as claimed, which the Examiner must identify with
particularity. “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986) (citation omitted), overruled on other grounds by Knorr-
Bremse Systeme Four Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337
(Fed. Cir. 2004) (en banc).
For essentially the same reasons articulated by Appellants in the
Briefs, we find the weight of the evidence does not support the Examiner’s
finding of anticipation. Therefore, we reverse the Examiner’s rejection of
Appeal 2011-011198
Application 11/591,985

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independent claims 19 and 20-22, which recite the aforementioned disputed
limitation in commensurate form. Because we have reversed the rejection of
each independent claim, we also reverse the anticipation rejection of each
dependent claim on appeal.

DECISION
We reverse the Examiner's rejection of claims 2-5, 7-9, 11-14, and
16-22 under §102.
REVERSED

Vsh