Ex Parte Niemoeller et al

Patent Trial and Appeal Board

Aug 30, 2016

13375903 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/375,903 01124/2012 Joerg Niemoeller
24112 7590 08/30/2016
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
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.
4015-7920 1037
EXAMINER
NGUYEN, TUX
ART UNIT PAPER NUMBER
2649
MAILDATE DELIVERY MODE
08/30/2016 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 JOERG NIEMOELLER, EUGEN FREITER,
IOANNIS FIKOURAS, and ROMAN LEVENSHTEYN
Appeal2015-002289
Application 13/375,903
Technology Center 2600
Before: JOSEPH L. DIXON, ERIC S. FRAHM, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002289
Application 13/375,903
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (a) from a rejection of
claims 13-20, 22-29, and 31. Claims 21 and 30 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. Claims 1-12 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
The claims are directed to a method for invoking a constituent service
provided in a telecommunication network and an application server for
providing a composite service. Claim 13, reproduced below, is illustrative
of the claimed subject matter:
13. A method for invoking a constituent service in a
telecommunication network, wherein a plurality of constituent
services are aggregated to create a composite service, the method
compnsmg:
determining a first group of parameters associated with the
composite service,
determining a second group of parameters associated with
the constituent service, the second group of parameters relating
to execution properties of the constituent service,
comparing the first and the second group of parameters,
when there are matching parameters in the first and the second
group,
determining input parameters for the constituent service
based on the matching parameters in the first and the second
group, and
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Application 13/375,903
invoking the constituent service according to the matching
parameters.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wong et al. US 2008/0261593 Al Oct. 23, 2008
REJECTION
The Examiner made the following rejection:
Claims 13-20, 22-29, and 31 stand rejected under pre-AIA 35 U.S.C.
§ 102( e) as being anticipated by Wong.
ANALYSIS
With respect to claim 13, Appellants contend that the Wong reference:
discloses a system that interposes a Service Capability
Interaction Management (SCIM) server between the S-CSCF
and the ASs. See Fig. 3. The SCIM retrieves a service tree from
a Generic User Profile (GUP) database. i-f 0032. The SCIM
"walks" the service tree, with its route through the branches being
influenced by dynamic factors, such as which Networks the UE
may access, changes in the service provider policy, and the like.
i-f 0043. . . . By walking this service tree, the SCIM may
dynamically select different MVNOs to provide services to a
user. The MVNOs may thus differentiate their services to gain
competitive advantage.
. . . Indeed, the entire point of Wong's tree walk is to arrive a
"leaf node," or destination node of the tree, which specifies one
service provider. Hence, Wong is fundamentally about selecting
services in the alternative, not about creating composite services
by aggregating constituent services.
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Application 13/375,903
(App. Br. 6.)
The Examiner maintains:
Thus, each of network operator's policy, service profile allows
the user to use a certain server, and/or whether the user supports
a particular combinational service request, to determine one or
more logical paths, "Service Trees", based on user subscriptions
onto multiple service options (par. 041-044).
Contrary to Appellant alleges that Wong fails to disclose
parameters are compared or matched, Wong discloses the
dynamical call models are based on Service Trees that map a
variety of service options based on to a variety parameters (par.
029, par.044 "UE, subscription, and/or environmental
parameters, onto multiple service options"). [T]he Service Trees
provide Multi layers services (constituent services) that are
invoked base[d] on trigger conditions (par. 042 "conditional
elements that can be triggered by one or more parameters, such
as a network being available to the UE, a subscription to a
particular MVNO") that match the trigger policies defined within
that level's service specific profile provisioned for the user (par.
068-069).
(Ans. 3--4.) We disagree with the Examiner's interpretation of the Wong
reference. We further note the Wong reference discloses:
The system includes storage media storing a service tree, which
defines potential call models that map potential UE service
requests onto ASs. At least two potential call models map a
specified potential UE service request onto different ASs that can
provide different service experiences.
(Abstract.) Consequently, we agree with Appellants that the Wong
reference traverses the service tree to map the available service rather than
comparing, matching, and invoking constituent services as recited in the
language of illustrative claim 13.
Appellants further contend:
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Application 13/375,903
[t]he Examiner also equated the claimed constituent services
with the ESPN and Disney services (subsidiary services of the
retailer Comcast). This claim interpretation fails to meet the
clear definition of composite service within the independent
claims themselves, much less comport with the specification as
it would be understood by one of ordinary skill in the art. The
claims recite, "wherein a plurality of constituent services are
aggregated to create a composite service." The ESPN and
Disney services are never aggregated - they are selected in the
alternative only, based on parameters such as the UE received
signal strength. In fact, it is nonsensical to even discuss
"aggregating" MVNOs such as ESPN and Disney to create the
Sprint wholesale service - Spring is the backbone network over
which a subscriber receives either ESPN or Disney
programmmg.
Furthermore, no parameters associated with the ESPN or
Disney Service Profiles which "relat[ e] to execution properties
of' ESPN and Disney are compared to parameters associated
with the Sprint wholesale service, as claimed. Rather,
parameters associated with the ESPN and Disney Service
Profiles are compared to properties of a subscriber's UE, such as
its received signal strength for different networks (e.g., WLAN
vs. 3G network; see i-f 0042), to select one or the other service.
The Answer fails to address the deficiency in the § 102
rejection of claims 13 and 31, as detailed on page 8 of the Appeal
Brief, that the Examiner cited precisely the same disclosure of
Wong as disclosing three disparate limitations of the claims.
(Reply Br. 2.). We agree with Appellants that the Examiner failed to
address the appropriate mapping of the express teachings of the Wong
reference to the claimed limitations.
We note that the Board is a reviewing body and not a place of initial
examination. Moreover, it is our view that the rigorous requirements of 35
U.S.C. § 102 essentially require a one-for-one mapping of each argued
limitation to the corresponding portion of the reference, which the Examiner
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must identify with particularity. Here, in that the Examiner's anticipation
rejection is not well supported by the express disclosure of the Wong
reference and relies on conjecture, such conjecture would require us to resort
to speculation, unfounded assumptions, or hindsight reconstruction. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such
speculation or assumptions to cure the deficiencies in the factual basis in
order to support the Examiner's anticipation rejection. Consequently, we
cannot sustain the rejection of independent claims 13, 22, and 31 and their
corresponding dependent claims 14--20 and 23-29.
CONCLUSION
The Examiner erred in rejecting claims 13-20, 22-29, and 31 under
35 U.S.C. § 102.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
13-20, 22-29, and 31.
REVERSED
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