Ex Parte Witzel

Patent Trial and Appeal Board

Mar 22, 2016

13319085 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/319,085 01119/2012 Andreas Witzel
24112 7590 03/23/2016
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.
4015-7881 5170
EXAMINER
NEALON, WILLIAM
ART UNIT PAPER NUMBER
2643
MAILDATE DELIVERY MODE
03/23/2016 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 ANDREAS WITZEL 1
Appeal2014-005770
Application 13/319,085
Technology Center 2600
Before JOSEPH L. DIXON, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
16, 17, 19-30. Claims 1-15 and 18 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Telefonaktiebolaget LM Ericsson (publ) as the real
party in interest. App. Br. 2.
Appeal2014-005770
Application 13/319,085
STATEMENT OF THE CASE
Claim 16, reproduced below, is illustrative of the claimed subject
matter:
16. A method for providing a name information of a calling
party to a called party at call setup for a call name presentation
service, the method comprising:
checking whether the called party has subscribed to the
call name presentation service,
retrieving the name information of the calling party from
a presence server, wherein retrieving comprises transmitting a
SIP subscribe request to the presence server, and
including the name information retrieved from the
presence server into a call setup request message.
APPELLANT'S CONTENTIONS
Appellant contends the Examiner erred in rejecting under 35 U.S.C.
§ 103(a) claims 16, 17, 19-22, 24-28, and 30 as obvious in view of Lee et
al. (US 2007/0127676 Al; May 1, 2008) and Khadri (US 2008/0102806 Al;
June 17, 2007)2 and claims 23 and 29 as obvious in view of Lee and Mun et
al. (US 2003/0022659 Al; Jan. 30, 2003). App Br. 4.
2 After the Examiner's Final Rejection, Appellant amended claim 16 to
include the limitations of claim 18 and canceled claim 18. Appellant also
amended claim 26. As Appellant acknowledges (App. Br. 4; Reply Br. 2),
following Appellant's amendments, claims 16, 17, 19-22, 24-28, and 30 are
subject to obviousness rejections, not anticipation rejections as stated in the
Examiner's Answer. Appellant did not file a petition or otherwise contest
the Board's jurisdiction to decide the obviousness rejections in this Appeal.
See 37 CPR§ 1.181.
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Application 13/319,085
ANALYSIS
Appellant argues Lee discloses that an MSC checks whether a calling
lli!tlY subscribes to a Calling Name Presentation (CNAP) service, not
whether the called party subscribes to the CNAP. App. Br. 5. In addition,
Appellant contends that in Lee, the mobile switching center (MSC) does not
include the name information retrieved from a presence server in the setup
request message sent to the called party, as Lee teaches the MSC sends the
name information back to the calling party as a response to the request for
caller information. App. Br. 6. Appellant also contends the Examiner erred
in equating the name database in Lee to the "presence server" recited in
claim 1, arguing that the term "presence server" "has a well-known meaning
in the art and denotes a particular kind of server." App. Br. 7 (citing Third
Generation Partnership Project (3GPP) Standard TS23.141version11.0.0
(September 2012) as defining a presence server as a "network entity
responsible for managing presence information on behalf of a presence
entity").
The Examiner finds, and we agree, that a person of ordinary skill
would have understood Lee to teach an MSC that checks subscriptions to a
CNAP service and includes calling name information in a call setup request
to the called party, in addition to Lee's disclosures of interactions between
the MSC and the calling party. See Ans. 7-9 (citing Lee Fig. 2, ,-i,-i 22, 38,
40-41 ); Final Act. 3 (citing Lee ,-i,-i 21, 40, 41 ); see also Lee Fig. 2 (depicting
information exchanged to both mobile communication terminals 1 and l ',
representing a calling party and a called party), ,-i,-i 27-33 (describing Figure
2 as a system for providing a caller information service including a network
in which both the called party and the calling party are connected to network
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Appeal2014-005770
Application 13/319,085
components including MSCs 4 and 4', visitor location registers (VLRs) 5
and 5' and name database 6). Indeed, the following portion of Lee's
"Background" discussion evidences that it was known that CNAP provides
the calling party's name information to the called party while originating a
call:
The CNAP is a supplementary service that enables a
mobile communication terminal user to transmit a calling name
or a context associated with a call pre-registered with a network
... to a called party's mobile communication terminal while
originating a call, thus permitting the called party to view the
calling name information.
Lee ,-i 7; accord Khadri ,-i,-i 23-25 (explaining that an initial addressing
message can include caller ID information); Mun ,-i 24 (describing caller ID
information as part of a set-up message during a call attempt).
We are also unpersuaded of error in the Examiner's findings regarding
the claimed presence server. We agree with the Examiner that the claimed
presence server would have been obvious to a person of ordinary skill in
view of Lee's disclosure of a name database (see Ans. 9), as well as
Khadri's disclosure of a presence server (see Khadri (passim)) and the
acknowledgment in Appellant's Specification that presence servers were
known in the art (see Spec. 1-3). See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) ("Common sense teaches ... that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.").
Having considered the Examiner's rejections in view of each of
Appellant's arguments and the evidence of record, we are unpersuaded of
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Appeal2014-005770
Application 13/319,085
error and adopt as our own the Examiner's findings, conclusions, and
reasonings consistent with the above. We sustain the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
16, 17, 19-30.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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