MOTOROLA SOLUTIONS, INC

Patent Trials and Appeals Board

Dec 17, 2020

2019003722 (P.T.A.B. Dec. 17, 2020)

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.
15/244,325 08/23/2016 ANATOLY AGULNIK PATCM12346-
US-ORG-CON01
1043
22917 7590 12/17/2020
MOTOROLA SOLUTIONS, INC.
IP Law Docketing
500 W. Monroe
43rd Floor
Chicago, IL 60661
EXAMINER
YUN, CARINA
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
12/17/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USAdocketing@motorolasolutions.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANATOLY AGULNIK, TYRONE D. BEKIARES, and
PETER M. DROZT
____________

Appeal 2019-003722
Application 15/244,325
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 18–24, 27, and 29, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Motorola Solutions, Inc. as the real
party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to providing status or presence
information of users in a group communications system. See Spec. ¶¶ 1–2.
Claims 18 and 29 are independent. Claim 18, reproduced below, is
illustrative of the subject matter on appeal (emphases added):
18. A method for providing presence information to a first
push-to-talk (PTT) communication group comprising a plurality
of PTT group members implicitly subscribed to the presence
information by membership to the first PTT communication
group, the method comprising:
communicating, by a group watcher module, to at least one
presence server module, a set of subscription requests to
subscribe the first PTT communication group to a plurality of
presentities on behalf of the first PTT communication group,
wherein the group watcher module is subscribed to the plurality
of presentities by the set of subscription requests and wherein
each subscription request contains a set of event notification
criteria for a presentity for which current first PTT
communication group members will receive presence
information relative to the event notification criteria via the
group watcher module;
detecting, by the group watcher module, a change in the
presence information for the set of subscription requests;
responsive to detecting the change in the presence
information:
retrieving, by the group watcher module from a PTT
communication group server, current first PTT
communication group membership information for the
first PTT communication group and identifying current
first PTT communication group members of the first PTT
communication group based on the current first PTT
communication group membership information; and
distributing, by the group watcher module, the
change in the presence information to each of the
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identified current first PTT communication group
members as a result of each first PTT communication
group member being a member of the first PTT
communication group and without the presence server
module explicitly receiving, from any of the identified
current first PTT communication group members, a
request to receive the presence information, each first
PTT communication group member continuing to
receive the presence information for the set of
subscription requests as long as membership in the first
PTT communication group is maintained.
Appeal Br. 14 (Claims App.).
REJECTIONS
The Examiner rejects claims 18–24, 27, and 29 under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. Final Act. 3.
The Examiner rejects claims 18, 21, and 29 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wu,2 Cox,3 and Niekerk.4 Final
Act. 4–12.
The Examiner rejects claims 19, 20, 22, 24, and 27 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wu, Cox, Niekerk, and
Zhang.5 Final Act. 12–16.

2 Wu et al., US 2006/0248184 A1 (pub. Nov. 2, 2006).
3 Cox, US 2007/0100831 A1 (pub. May 3, 2007).
4 Niekerk et al., US 2006/0211450 A1 (pub. Sept. 21, 2006).
5 Zhang, US 2008/0125157 A1 (pub. May 29, 2008).
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The Examiner rejects claim 23 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Wu, Cox, Niekerk, and Ben Ezra.6 Final
Act. 16–17.
OPINION
§ 112 Rejection
The Examiner determines that claims 18–24, 27, and 29 lack written
description support for “PTT [push-to-talk] group members” and “PTT
communication group members.” Final Act. 3. According to the Examiner,
the Specification “mentions a Push to talk server storing membership
information and PTT server managing group memberships, but does not
disclose a PTT communication group or group members.” Final Act. 3
(citing Spec. ¶ 22); see also Ans. 17–18.
Appellant argues that the Examiner applies an incorrect ipsis verbis
standard and that the Specification makes clear that the inventors had
possession of the claimed subject matter at the time of filing. Appeal
Br. 5–6; Reply Br. 4. According to Appellant, the Specification “clearly
set[s] forth that the push-to-talk (PTT) communications server 120 tracks
group membership information . . . of a plurality of groups such as, for
example, in Group A 110, which may include a plurality of group
members (1–N).” Appeal Br. 6 (citing Spec. ¶¶ 21–22, Fig. 1). Appellant
argues that “the disclosed ‘groups’ and ‘group members’ explicitly described
throughout the specification and drawings as being monitored and stored at
the PTT communications server 120 are thus necessarily, and by their virtue

6 Ben Ezra et al., US 2009/0177729 A1 (pub. July 9, 2009).
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as being managed by the PTT communications server 120, ‘PTT
communications groups’ comprised of ‘PTT group members.’” Id. (citing
Spec. ¶¶ 13, 17) (emphasis omitted).
We agree with Appellant that the Specification’s disclosure provides
sufficient written description support for the recited “PTT group members”
and “PTT communication group members.” Specifically, we agree that the
Specification’s disclosure of PTT server 120 managing group memberships
for groups (e.g., Push-to-Talk over Cellular (“PoC”) Group A 110) having
group members (1–N) reasonably conveys to a person skilled in the art that
the inventors had possession of the claimed subject matter at the time the
application was filed. See Spec. ¶¶ 12, 17, 21–22, Fig. 1; Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Accordingly, we do not sustain the Examiner’s rejection of
claims 18–24, 27, and 29 under 35 U.S.C. § 112 as failing to comply with
the written description requirement.
§ 103 Rejection
The Examiner relies on Cox for the limitation of
distributing, by the group watcher module, the change in
the presence information to each of the identified current first
PTT communication group members as a result of each first PTT
communication group member being a member of the first PTT
communication group and without the presence server module
explicitly receiving, from any of the identified current first PTT
communication group members, a request to receive the presence
information, each first PTT communication group member
continuing to receive the presence information for the set of
subscription requests as long as membership in the first PTT
communication group is maintained
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as recited in independent claim 18 and similarly recited in independent
claim 29. Final Act. 7–8, 11–12, 17–18 (citing Cox ¶¶ 9, 19, 35–36, 38).
Specifically, the Examiner cites Cox’s disclosure of a presence system in
which groups of specified users have access to a particular collection of
presence information. Cox ¶¶ 35–36; see Final Act. 7–8; Ans. 22.
Appellant argues that
Cox . . . fails to describe any creation of implicit presence
subscriptions to presentities/collections based on group
membership, or the transmission of changed presence/collection
information to groups of watchers that haven’t explicitly
subscribed to the presence information, or the continued
transmission of changed presence/collection information to
groups of watchers as long as membership in a communication
group is maintained.
Appeal Br. 10–11 (emphases omitted). According to Appellant, the portions
of Cox cited by the Examiner are “directed to access control, not any
subscription action” and “while groups of watchers in Cox may be granted
access to subscribe to (e.g., can explicitly subscribe to in the future) a
presentity without first requesting access . . . an actual and explicit
subscription to a particular presentity/collection in Cox must still then be
explicitly transmitted . . . to create a subscription that leads to transmission
of presence updates to that user.” Id. at 10 (citing Cox ¶¶ 25–26, 35–37, 48,
Figs. 4–5) (emphases omitted); see also Reply Br. 6–7.
We are not persuaded by Appellant’s argument. The “distributing”
limitation recites that the change in presence information is distributed to
each of the identified current first PTT communication group members
“without the presence server module explicitly receiving, from any of the
identified current first PTT communication group members, a request to
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receive the presence information.” We interpret “the presence information”
in the claim term “without the presence server module explicitly receiving,
from any of the identified current first PTT communication group members,
a request to receive the presence information” to refer to the changed
presence information that is distributed to each of the identified current first
PTT communication group members. In other words, we find that the
“distributing” limitation requires distributing the changed presence
information to each identified current first PTT communication group
member without any of these members explicitly requesting (and thus
“without the presence server module explicitly receiving . . . a request” for),
the changed presence information. Cox teaches or suggests that group
members continue to receive presence updates without individually
requesting each presence update, so long as they remain members of the
group. See, e.g., Cox ¶¶ 3 (“Whenever the presence information of a user
changes, the presence service is notified of the change by that user’s
computer system and in turn notifies the subscribing users of the change.”),
35–36, 48 (“The subscription request will cause the subscribing user to
receive notifications for each of the specified categories for each of the
specified users. . . . [T]he request may also contain a list of categories and
users to unsubscribe from . . . .”). Thus, even if Cox requires members of
groups to initially explicitly subscribe to presence information, as Appellant
argues (see Appeal Br. 10), we agree with the Examiner that Cox teaches or
suggests the “distributing” limitation.
Addressing the Examiner’s rejection of independent claims 18 and 29
as obvious over Wu, Cox, and Niekerk (Final Act. 5–12), Appellant argues
that “[n]either Wu nor Cox disclose[s] anything regarding PTT
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communications groups or PTT communications group members,” and that
“[n]othing in [Niekerk] discloses anything regarding integration or
applications to presence systems.” Appeal Br. 12; see also id. at 8. In the
same vein, Appellant argues that there is “no cited reference and no reason
in the evidence of record that one o[f] ordinary skill has or would link or
integrate” presence systems and PTT communication systems, and that the
combination of references is based on improper hindsight reasoning. Id.
at 12. Appellant further argues that there is “no support for making the
further necessary architectural and method changes to integrate the two
systems to read on each element of the pending claims in the manner set
forth in the pending claims.” Reply Br. 7–8 (emphasis omitted).
We find these arguments unpersuasive because Appellant attacks the
references individually. One cannot show nonobviousness by attacking
references individually where the rejection is based upon a combination of
references – in this case a combination of Wu, Cox, and Niekerk. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). We agree with the Examiner that it would have been obvious
to one of ordinary skill in the art to modify Wu and Cox to include PTT
communication groups, as taught by Niekerk, in order to “allow[] for
immediate communication with users” in the presence system of Wu and
Cox. Final Act. 8 (citing Niekerk ¶ 5 (disclosing that “Push-to-Talk is a
mobile communication service . . . allowing a user to engage in immediate
communication with one or more other users without the formalities of
conventional calls”)); see Ans. 20, 23. Thus, we find that the Examiner
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provides sufficient “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007). Appellant does not present persuasive argument
or evidence that the Examiner’s rejection is based on knowledge gleaned
only from Appellant’s disclosure, or based on knowledge beyond the level
of ordinary skill in the art at the time of the invention. As such, we are not
persuaded by Appellant that the combination of Wu, Cox, and Niekerk is
based on impermissible hindsight. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971).
Finally, Appellant argues that the Examiner fails to “set forth a
reasonable and logical reason for why a person of ordinary skill would make
each one of the modifications within the context of each of the . . . portions
of the claims” reciting “PTT.” Appeal Br. 8 (emphasis omitted); see also
Reply Br. 5–6. We are not persuaded that multiple recitations of the term
“PTT” in the claims requires the Examiner to provide a separate explanation
for the combination of references per instance, so long as it is reasonably
clear that the Examiner’s provided rationale for combining Wu and Cox’s
presence system with Niekerk’s PTT communication accounts for each
instance. We find that that is the case here.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claims 18 and 29, as well as the Examiner’s rejections of
dependent claims 19–24 and 27 not separately argued, under 35 U.S.C.
§ 103.
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CONCLUSION
The Examiner’s rejection of claims 18–24, 27, and 29 under 35 U.S.C.
§ 112 is reversed.
The Examiner’s rejections of claims 18–24, 27, and 29 under
35 U.S.C. § 103 are affirmed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s rejection of claims 18–24, 27, and 29
is affirmed. See 37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
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
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
18–24, 27,
29
112 Written
Description
18–24, 27,
29
18, 21, 29 103 Wu, Cox,
Niekerk
18, 21, 29
19, 20, 22,
24, 27
103 Wu, Cox,
Niekerk, Zhang
19, 20, 22,
24, 27

23 103 Wu, Cox,
Niekerk, Ben
Ezra
23
Overall
Outcome
18–24, 27,
29