Ex Parte Oprescu-Surcobe et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10823185 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VALENTIN OPRESCU-SURCOBE and SHAHAB M. SAYEEDI
____________

Appeal 2009-001,978
Application 10/823,185
Technology Center 2600
____________

Decided:1 June 15, 2009
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001,978
Application 10/823,185

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 6-9, 12-14, 17, and 27-38 (Br. 5).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
According to Appellants, the invention includes a wireless presence
proxy (WPP) that wirelessly monitors messaging responses of a mobile
station (MS). Based upon this monitoring, the WPP infers the presence state
change for the MS and maintains MS location information. The messaging
responses do not explicitly specify a presence state or state change for the
MS. The WPP infers a MS presence state from MS messages indicating that
the MS powers down, deregisters, enters an unavailable mode, hands off to
an outside wireless communication network, or involves other
communication. (Spec. 3:9-16; 6:19-30).
Exemplary claims 1 and 34 follow:
1. A method for enabling wireless presence-based services comprising:
monitoring, by a wireless communications network, messaging and
messaging responses of a mobile station (MS), wherein the messaging and
the messaging responses do not specify a presence state of the MS or a
presence state change by the MS;
inferring, by the wireless communications network, a change in the
presence state of the MS based upon the monitoring, wherein inferring
comprises inferring the MS presence state has changed when the presence
state of the MS indicates that the MS is present and messaging is detected

2 Appellant’s Brief (filed May 17, 2007) (“Br.”) and the Examiner’s Answer
(mailed Sept. 14, 2007) (“Ans.”) detail the parties’ positions.
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that indicates MS activity from the group consisting of powering down,
deregistering, entering an unavailable mode, handing off outside the wireless
communication network, and involved in other communication;
communicating, by the wireless communications network, the state
change to a presence server.
34. A method comprising:
receiving, by a base station (BS) from network equipment, a short
data delivery message;
signaling by the BS a mobile station (MS) in response to the short
data delivery message;
sending by the BS a short data acknowledgment message to the
network equipment indicating whether a response from the MS was received
for the signaling of the MS by the BS.

The Examiner relies on the following prior art references:

Chen US 2003/0157945 A1 Aug. 21, 2003
(filed Feb. 21, 2002)
Blackett US 2004/0138834 A1 Jul. 15, 2004
(filed Jun. 29, 2001)
Magee US 2004/0198379 A1 Oct. 7, 2004
(filed Aug. 28, 2002)
The Examiner rejected claims 34-38 as anticipated under 35 U.S.C.
§ 102(e) based on Chen; claims 1, 6, and 28 as obvious under 35 U.S.C.
§ 103(a) based on Magee and Blackett; and claims 2, 7-9, 12-14, 17, 27, and
29-33 under 35 U.S.C. § 103(a) based on Magee, Blackett, and Chen.
ISSUES
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Did Appellants demonstrate that the Examiner erred in finding that
Chen discloses “sending by the BS a short data acknowledgment message to
the network equipment indicating whether a response from the MS was
received for the signaling of the MS by the BS” as required by claim 34?
Did Appellants demonstrate that the Examiner erred in finding that
Magee and Blackett collectively teach a network that monitors “messaging
responses [that] do not specify a presence state” and infers “a change in the
presence state of the MS based upon the monitoring,” wherein inferring
comprises detecting messages “that indicate[] MS activity from the group
consisting of powering down, deregistering, entering an unavailable mode,
handing off outside the wireless communication network, and involved in
other communication” as set forth in claim 1?

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Under § 102, anticipation is established when a single prior art
reference discloses expressly or under the principles of inherency each and
every limitation of the claimed invention. Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
Under § 103,

“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
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for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness . . . .” Kahn, 441 F.3d at 985-986 (citation
omitted).
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result,” KSR, 550 U.S. at 416. “‘Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.’” Id. at 421 (citation omitted).
“It is the applicant’s burden to precisely define their invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“The problem
in this case is that the appellants failed to make their intended meaning
explicitly clear.”).

Claims 34-38 - Anticipation Based on Chen
Findings of Fact (FF)
Chen
1. Chen’s message delivery system includes service provider packet
data service nodes (PDSNs), base station controllers (BSCs), packet control
functions (PCFs), mobile station controllers (MSCs), and mobile stations
(MSs). (¶¶ 0002, 0006-0009, 0022).
2. When a PCF receives packet data from a PDSN destined for a
particular dormant MS, the PSF may deliver the data to a BSC in a short
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data burst (SDB) format. The BSC may send the data in SDB format either
directly to the mobile, or if unsuccessful, send it in SDB format to the MSC
for delivery to the MS via an application data delivery service (ADDS) page.
(¶¶ 0046-47; Fig. 4).
3. Chen’s Figure 4 appears below:

Figure 4, reproduced above, depicts Chen’s MS SDB delivery
signaling details for one embodiment (Chen ¶¶0015, 0048).
4. As seen supra (FF 3) and as described by Chen, the PCF delivers
data 406 in short data bursts on an A9 connection to a BSC. The BSC may
send an SDB 410 directly to an MS and then wait for a response
acknowledgement 412 from an MS. If the MS fails to acknowledge the
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delivery, the BSC may indicate this by sending an SDB to the MSC in a
BSC service request message 414. (¶¶0049-52).
5. The MSC then may send an ADDS 418 message to the BSC with
the SDB included therein, and the BSC may then forward the SDB 420 to
the MS which then sends an acknowledgement 422 back to the BSC. In
response, the BSC may then either send an acknowledgement 424 to the
MSC or 426 to the PCF “to indicate successful transmission of the SDB to
the mobile [i.e., MS].” (¶¶ 0052-0053).
Analysis
Appellants’ arguments (Br. 10-12) focus on claim 34. In particular,
Appellants argue (Br. 12) that the Examiner (see Ans. 3-5) should be
reversed because: “message 426 does not indicate whether a response from
the MS was received for the signaling of the MS by the BS, as the claim
recites.” Appellants base this argument on the following reasons (Br 12.):
“Chen [0053] teaches that message 426 is sent ‘to indicate successful
transmission of the SDB to the mobile’ by the MSC via ADDS paging
mechanism. Chen [0052] and Chen [0054] teach that the BSC may send the
SDB to the MSC instead of the MS for delivery via ADDS paging.”
Chen does not factually support Appellants’ reasoning. As the
Examiner found (Ans. 12-14), and as Chen’s Figure 4 depicts and Chen
describes (FF 1-5), the BSC sends either the SDB 410 or 420 to the MS. In
other words, the MSC does not send the SDB directly to the MS, contrary to
Appellants’ implied argument. Consequently, either acknowledgement 424
or 426 acknowledges the SDB 410 or 420 “signaling of the BS by the MS”;
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and therefore, either 424 or 4263 constitutes “sending by the BS a short data
acknowledgment message to the network equipment indicating whether a
response from the MS was received for the signaling of the MS by the BS”
as required by claim 34.
Therefore, we will sustain the Examiner’s rejection of claim 34, and
claims 35-38 not separately argued.
Claims 1 , 6, and 28 - Obviousness Based on Magee and Blackett
Findings of Fact
Appellants’ Disclosure
6. As background, Appellants state:
Presence services, such as instant messaging (IM), are
well-known to Internet users. These services are also part of
3rd generation (3g) wireless offerings. However, the current
wireless paradigm does not handle these services very
efficiently. For example, existing presence servers typically
maintain presence information by periodically pinging the
target mobile stations (MS) and use the response or lack of it, as
a presence “heart beat” signal.

(Spec. 2:24-29 (under “Background of the Invention”)).

7. Appellants’ invention monitors messages that do no explicitly
specify a presence, but rather, the network infers a change in the presence
state of an MS based on the message monitoring (Spec. 3:23-29).
Appellants briefly describe the system as follows: “Thus, based upon this

3 As another alternative, message 414 constitutes “a short data
acknowledgement to the network indicating whether a response from the
MS” was received. That is, if the MS fails to acknowledge the SDB
delivery, the BSC may indicate this by sending an SDB to the MSC in a
BSC service request message 414 (FF 3, 4).
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monitoring, the WPP infers the present state / change for the MS and
maintains MS location information” (Spec. 3:13-14).
8. To infer presence, Appellants employ certain MS message types
already provided on existing systems that do not provide presence services,
including “MS indications that it is powering up or down, registering or
deregistering, entering or exiting an unavailable mode, handing off outside
or into wireless communication network 210, or involved in or completing
other communication” (Spec. 6:7-11)
Magee
9. Magee’s system uses a presence server 70 and location server 60 to
deliver location specific messages from specific businesses to a mobile
device 10 (Abstract). For example, a subscriber, upon entry into a mall, can
elect to receive sporting goods messages (¶0021).
10. Magee’s process involves powering on the mobile station (MS)
(110) and determining if the mobile station has the presence feature (112)
(Fig. 2; ¶0016).
11. Magee, as background, discloses that newer telephone systems,
including current 2.5G and 3G mobile systems, can monitor the subscriber’s
geographic location (¶0004). On the other hand, “[o]lder mobile telephone
systems did not locate the user per se” (¶0002). These older systems hand
off the mobile telephone from one antenna to another in a different cell (id.).
With respect to Magee’s disclosed invention, “[t]ypically, the mobile station
10 determines its geographic location and updates location server 60 with its
location” ¶0015).
12. Magee refers to “presence” in terms of 1) location; i.e., “presence
in the mall” (¶0021), and 2) in terms of telephone status; i.e.; “the mobile
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device then sends the user selected presence status to the presence server 70.
Sample statuses are busy, away, online, etc” (¶0019).
Blackett
13. Blackett also refers to several types of “presence,” including
location or status types:
Presence is a way for a device to make it’s [sic] connection or
availability known or available to the network it is connected
to. . . . There are several types of presence that can be used to
signify the presence of a recipient or sender. Temporary
Presence indicates where, on the network, the recipient was
several minutes ago; Predicted Presence indicates where the
sender thinks the recipient is now; Network Presence indicates
the recipient client is logged in somewhere . . .and Real
Presence indicates that the recipient is logged in and
communicating. . . . It can be appreciated by one skilled in the
art that there are several variations, extensions and permutations
of the above types of presence such as ‘away’, ‘do not disturb’,
sleeping’ etc. Presence can also . . . offer insight into other
necessary information. For instance presence may also indicate
information such as location, geographic, logical or physical, or
other application specific data . . . .

(¶ 0127) (emphasis added).
14. Blackett discloses another example of presence: “This feature
ensures that if a client goes offline, but is unable to send an error, the server
will automatically update the client presence to show a presence error 1570
(¶ 0134).”
15. Blackett categorizes the types of events that “trigger a presence
change” as either related to: 1) the detection of “an event which may alter its
[i.e. the client] status or presence or 2) the elapse of a pre-determined time
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“without any event then the presence or status is determined again.”
(¶ 0133).
Analysis
Claims 1 and 6
Appellants focus on claim 1 and argue as follows (Br. 13):
[T]he claims recite that . . . the messaging responses monitored
do not specify a presence state of the MS or a presence state
change by the MS. Assuming one equates ‘location’ with
‘presence state,’ as it appears the Examiner is doing, Magee
[0015] appears to teach away from this portion of the claim
language with the MS determining its geographic location and
then updating the location server 60 with its location, i.e.,
specifying its location.

Appellants’ argument is not persuasive. While Magee teaches that
newer telephone phone systems may explicitly identify location, Magee also
teaches that older telephone systems do not identify location “per se,” but
rather, infer such location by handing off the phone from one cell antenna to
the next (see FF 11). Moreover, by describing the use of such specific
location information in the newer systems as “typical[],” Magee does not
preclude the use of the older systems which merely infer location. Thus,
contrary to Appellants argument, Magee does not teach away from the claim
limitation of “not specify[ing] a presence state.”
Appellants fail to identify clearly what the clause “do not specify a
presence state” in claim 1 embodies, but, in light of the clause “inferring the
MS presence state has changed,” the claim and disclosure indicate that the
first clause does not preclude inferring, but does preclude explicitly
specifying, any type of presence state change, including location or power
state changes of the telephone, for example (see FF 6-8).
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Thus, the Examiner’s unchallenged finding (Ans. 14) that Magee,
however, does not specify the on/off state of the MS” constitutes an
alternative reasonable unspecified status, in addition to the unspecified
location status described supra. Hence, Magee discloses the argued
limitations of claim 1 pertaining to “not specify[ing] a presence state or . . . a
presence state change.” That is, Magee teaches detecting the presence of an
MS after it powers on (FF 10), which reasonably suggests “not specify[ing]”
the power status or power status change. For example, the amount of power
being used or consumed or the specific MS power state, such as idle, is not
specified, as the Examiner generally reasoned (see Ans. 14, 15), without
rebuttal by Appellants.
With respect to the “inferring” clause of claim 1, Appellants argue
that Magee and Blackett (Br. 14) fail to suggest inferring a presence state
change from one of the specific monitored message indications recited:
“powering down, deregistering, entering an unavailable mode, handing off
outside the wireless communication network, and involved in other
communication.” This argument also lacks merit.
As discussed supra, Magee teaches that older systems infer location
by a similar “handing off” as that recited in claim 1 (see FF 11). Blackett
also teaches a wide variety of inferences or indications obtainable from
various types of messages, including the inference of geographic location – a
teaching similar to that of Magee. For example, Blackett states: “It can be
appreciated by one skilled in the art that there are several variations,
extensions and permutations of the above types of presence such as ‘away’,
‘do not disturb’, sleeping’” - any one of which Blackett suggests can be
used to infer other presence states, including location (see FF 14).
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Blackett’s away, off-line, sleeping, or timed out presence statuses (FF
13-15), or Magee’s away or on-line statuses (FF 12), reasonably relate to
one of Appellants’ “powering down,” “unavailable,” or “other
communications” presence state message activity indicators. (As the
Examiner determined (Ans. 15), claim 1 requires only one such type of
message activity indicator from the “group consisting of” the message
indicators.) Further, Appellants describe the whole list of specific message
indicators recited in claim 1 as known MS messages (FF 8).
Therefore, the Examiner’s reliance on Blackett’s paragraph 0133
(Ans. 15) as suggesting an inference of “powering down,” based on a lack of
detected activity after an elapsed time, is reasonable. Further, skilled
artisans would have recognized that paragraph 0133 categorizes and
therefore includes the various known types of presence events described in
Blackett and discussed supra, further bolstering the Examiner’s findings (see
FF 13-15). Appellants, at most, merely substitute known data messages into
a known process of inferring presence from similar such data messages.4
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416 (citation omitted).
Accordingly, we will sustain the Examiner’s rejections of claim 1 and
dependent claim 6, not separately argued.

4 Moreover, under alternative reasoning, the specific message types
constitute nonfunctional descriptive material, because the claimed process
does not change based on the specific message activity detected. Non-
functional descriptive material cannot render patentable an otherwise
unpatentable product or process. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (Informative
Opinion) (aff’d, Rule 36, Fed. Cir., slip op. 06-1003, June 2006).
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Claim 28
Appellants present similar arguments (Br. 14-16) to those presented
for claim 1. Claims 1 and 28 are similar in scope. Accordingly, we will also
sustain the Examiner’s rejection of claim 28 for reasons similar to those
outlined above with respect to claim 1.
Claims 2, 7-9, 12-14, 17, 27, and 29-33 - Obviousness Based on Magee,
Blackett, and Chen
Appellants’ nominal arguments (Br.16) do not present separate
arguments for patentability. Appellants primarily rely on arguments
presented for claims 1 and 28. Accordingly, we will also sustain the
Examiner’s rejection of claims 2, 7-9, 12-14, 17, 27, and 29-33 for reasons
similar to those outlined above with respect to claims 1 and 28.

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
Chen discloses “sending by the BS a short data acknowledgment message to
the network equipment indicating whether a response from the MS was
received for the signaling of the MS by the BS” as required by claim 34.
Appellants also did not demonstrate that the Examiner erred in finding that
Magee and Blackett collectively teach a network that monitors “messaging
responses [that] do not specify a presence state” and infers “a change in the
presence state of the MS based upon the monitoring,” wherein inferring
comprises detecting messages “that indicate[] MS activity from the group
consisting of powering down, deregistering, entering an unavailable mode,
handing off outside the wireless communication network, and involved in
other communication,” as set forth in claim 1.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 6-9, 12-14,
17, and 27-38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD

MOTOROLA, INC.
1303 EAST ALGONQUIN ROAD
IL01/3RD
SCHAUMBURG, IL 60196
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