Ex Parte Tisserand et al

Patent Trial and Appeal Board

Apr 23, 2013

09913885 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUNO TISSERAND and LUC DAVIT
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Appeal 2013-003066
Application 09/913,885
Technology Center 2400
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Before KRISTEN L. DROESCH, JUSTIN BUSCH, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1, 10-12, 16, and 18-21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.3

1 Real Party in Interest is Imerj, Ltd.
2 Claims 2-7, 13-15, and 17 have been canceled, and claims 8 and 9 have
been withdrawn from consideration. As such, claims 2-9, 13-15, and 17 are
not on appeal.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to transmission of a user message (i.e.,
personal identification number “PIN”) during a signaling phase associated
with setting up a call via a transmission network (i.e., mobile telephone
network). See Appellants’ Spec. pg. 2, ll. 11-19 and Abstract. In particular,
the user message (i.e., PIN) is inserted into a spare field of a signaling
message during an attempt to establish a connection between a mobile
terminal and an authentication center, via a transmission network, and once
the user message (i.e., PIN) is received, the attempt to establish such a
connection between the mobile device and the authentication center is
terminated before the connection is established. Spec. pg. 2, ll. 25-36. This
way a user message is transmitted and received without ever establishing a
connection in order to reduce the cost of call.
Claims on Appeal
Claims 1 and 10 are the only independent claims on appeal. Claims 1
and 10 are representative of Appellants’ invention, and are reproduced
below with disputed limitations emphasized:
1. A method of receiving a user message through a
transmission network, the method comprising:

receiving, in a transaction authentication center, a
signaling message as part of an attempt to establish a
connection between a mobile terminal and the transaction
authentication center through the transmission network, the

3 Our decision refers to Appellants’ Appeal Brief filed May 14, 2012 (“App.
Br.”); Examiner’s Answer mailed October 3, 2012 (“Ans.”); Final Rejection
mailed November 23, 2011 (“FOA”); and the original Specification filed
August 17, 2001 (“Spec.”).
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signaling message including a data field that initially includes
data and a spare field that initially does not include data, a user
message being disposed in the spare field of the received
signaling message, and the received signaling message,
including the user message placed in the spare field, has a
parameter that indicates that the user message has been placed
in the spare field;

detecting the parameter in the spare field; and

responsive to successfully receiving the user message,
terminating the attempt to establish the connection between the
mobile terminal and the transaction authentication center
before the connection is established.

10. A method of sending a user message through a
transmission network, the method comprising:

generating, in a mobile terminal, a signaling message as
part of an attempt to establish a connection between the mobile
terminal and a transaction authentication center through the
transmission network, the signaling message including a data
field that initially includes data and a spare field that initially
does not include data;

placing, by the mobile terminal, a user message in the
spare field of the generated signaling message, the generated
signaling message, including the user message has, a parameter
that indicates that the user message has been placed in the spare
field;

transmitting the signaling message to the transaction
authentication center after placing the user message in the spare
field of the generated message;

receiving a reply message from the transaction
authentication center in reply to the transmitted signaling
message, the reply message indicating that the user message
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was successfully received by the transaction authentication
center; and

responsive to receiving the reply message indicating that
the user message was successfully received by the transaction
authentication center, terminating the attempt to establish the
connection between the mobile terminal and the transaction
authentication center before the connection is established.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lindsay US 6,301,242 B1 Oct. 9, 2001
Ranta US 6,775,259 B1 Aug. 10, 2004
Official Notice

Examiner’s Rejections
(1) Claims 1, 10, 11, 16, 18, 19, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Lindsay and Ranta. Ans. 4-8.
(2) Claims 12 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lindsay, Ranta in further view of “Official Notice.”
FOA 14-15.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting
independent claims 1 and 10 under 35 U.S.C. § 103(a) because there is no
teaching, suggestion, or motivation to combine Lindsay and Ranta since
“[t]he skilled person would find no benefit and/or motivation in modifying
Lindsay in order to place information and/or a user message in a spare field
of a control traffic message and then terminating the set-up call channel once
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the user message has been communicated because this would not solve
Lindsay’s problem of establishing a rapid and reliable communication link
between a base station and a user station.” App. Br. 6-7, 10.
2. Appellants also contend that the Examiner erred in rejecting
independent claims 1 and 10 under 35 U.S.C. § 103(a) because Lindsay
teaches away from the combination because “terminating the attempt to
establish the connection between the base station and the user station,
responsive to successfully receiving the user message” does not solve
Lindsay’s problem of establishing a rapid and reliable communication link
between a base station and a user station. App. Br. 7 (emphasis added).
3. Appellants further contend that the Examiner erred in rejecting
independent claims 1 and 10 under 35 U.S.C. § 103(a) because the
combination of Lindsay and Ranta fails to disclose all the claim limitations,
i.e., the feature “responsive to successfully receiving the user message,
terminating the attempt to establish the connection between the mobile
terminal and the transaction authentication center before the connection is
established” as recited in claim 1, and similarly recited in claim 10. App.
Br. 8-11, 13 (emphasis added).

Issue on Appeal
The dispositive issue on appeal is whether the Examiner erred in
rejecting claims 1, 10-11, 16, 18-19, and 21 under 35 U.S.C. § 103(a) as
being obvious over Lindsay and Ranta?

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ANALYSIS
We have reviewed the Examiner’s comprehensive rejections in light
of Appellants’ arguments presented in the Appeal Brief that the Examiner
has erred.
We are persuaded by Appellants’ contentions. FIG. 9 of Lindsay
which is relied upon by the Examiner shows a mobile station (MS)
originating a call setup procedure to a base station (BS) during a signaling
phase. Lindsay at col. 24, ll. 30-50, states that:
The Release (CR-REL) control traffic message is sent by
the base station 104 to the user station 102 when the network
releases the connection in progress or during link setup. The
Cause Type and Cause information elements are as described
for the CT-CIP message. However, the Cause information
element for the CT-REL message indicates whether the
release was initiated by the network, or whether an
authentication rejection occurred.

(Emphasis added).

In other words, the CT-REL message is generated by the base station
104 and sent to the user station 102 during a signaling phase, as shown in
FIG. 9 of Lindsay, when: (1) the release of the connection in progress or
during link setup is initiated by the network; or (2) when an authentication is
rejected. However, termination of an attempt to establish a call (connection)
based on: (1) network release, or (2) the authentication rejection, as
described by Lindsay is very different from Appellants’ termination of an
attempt to establish a call (connection) between a mobile station and a
transaction authentication center, based on “successfully receiving the user
message” at the authentication center during a signaling phase, particularly,
when such an attempt to establish the call (connection) must be terminated
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in response to “successfully receiving user message” but “before the
connection is established,” as recited in Appellants’ independent claims 1
and 10.
We agree with Appellants that neither Lindsay nor Ranta, taken
individually or in combination, discloses the features “responsive to
successfully receiving the user message, terminating the attempt to establish
the connection between the mobile terminal and the transaction
authentication center before the connection is established” as recited in
claim 1, or alternatively “responsive to receiving the reply message
indicating that the user message was successfully received by the transaction
authentication center, terminating the attempt to establish the connection
between the mobile terminal and the transaction authentication center before
the connection is established” as recited in claim 10. App. Br. 8-11, 13.
Absent of such features, even if Ranta were to be incorporated into Lindsay
in the manner proposed by the Examiner, the combination of Lindsay and
Ranta still does not arrive at Appellants’ independent claims 1 and 10.
For the reasons set forth above, we cannot sustain the Examiner’s
obviousness rejection of independent claims 1 and 10 as well as claims 11,
12, 16, 18-21, which depend on independent claims 1 and 10 and thus stand
therewith. Likewise, we cannot sustain the Examiner’s obviousness
rejection of claims 12 and 20 over Lindsay, Ranta in further view of
“Official Notice.”

CONCLUSION
On the record before us, we conclude that the Examiner erred in
rejecting claims 1, 10-12, 16, and 18-21 under 35 U.S.C. § 103(a).
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DECISION
We REVERSE the Examiner’s final rejection of claims 1, 10-12, and
16, 18-21.

REVERSED

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