SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Jan 1, 2021

2019005231 (P.T.A.B. Jan. 1, 2021)

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.
15/655,662 07/20/2017 Ka-Ram KO Q234118 1024
23373 7590 01/01/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
JIA, XIN
ART UNIT PAPER NUMBER
2667
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KA-RAM KO, HEE SEO,
JUNG-HWAN CHOI, and IN-GYU KIM
____________

Appeal 2019-005231
Application 15/655,662
Technology Center 2600
____________

Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s rejection
of claims 1, 2, 8, 9, and 15–28, all of the pending claims. Final Act. 1.2
Claims 3–7 and 10–14 are canceled. Amend. Req. Reconsid. 3 (filed July 2,

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Samsung Electronics Co., Ltd. Appeal
Br. 2.
2 In this Decision, we refer to Appellant’s Response after Final Office
Action (“Resp.,” filed November 7, 2018), Appeal Brief (“Appeal Br.,” filed
February 28, 2019), and Reply Brief (“Reply Br.,” filed June 25, 2019); the
Final Office Action (“Final Act.,” mailed September 14, 2018) and the
Examiner’s Answer (“Ans.,” mailed April 25, 2019); and the Specification
(“Spec.,” filed July 20, 2017). Rather than repeat the Examiner’s findings
and Appellant’s contentions in their entirety, we refer to these documents.
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2018). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s claimed systems and methods
relate[] generally to an apparatus for providing a push
notification service, and more particularly, to a server cluster for
a push notification service, which includes a management server
for managing connection between a push server and a mobile
terminal and the push server for push notification, and a method
for the push notification service.
Spec., 1:17–21. “A push notification server is a gateway between a push
notification providing server for a push notification service and a mobile
terminal, and relays a push notification message sent from the push
notification providing server to its connected mobile terminal.” Id. at 1:24–
27. When a push notification event is generated, a push server delivers
event information corresponding to the push notification event to the mobile
terminal. See id. at 3:7–15, 5:3–14.
As noted above, the Examiner rejects claims 1, 2, 8, 9, and 15–28.
Claims 1, 17, and 23 are independent. Appeal Br. 24 (claim 1), 25–26
(claim 17), 26–27 (claim 23) (Claims App.). Claims 1 and 17 recite “[a]
push notification system for providing a push notification service,” and
claim 23 recites “[a] method of a push notification system providing a push
notification service” performing steps as recited in claim 17. Id. Claims 2,
8, 9, 15, and 16 depend directly or indirectly from claim 1; claims 18–22
depend directly or indirectly from claim 17; and claims 24–28 depend
directly or indirectly from claim 23. Id. at 24–27.
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Claims 1 and 17, reproduced below with disputed limitations
emphasized, are representative.
1. A push notification system for providing a push
notification service, the system comprising:
a push server configured to transmit a push notification to
an electronic device in response to receiving a push notification
event from a push notification providing server; and
a management server configured to register the electronic
device with the push notification system to receive push
notifications from the push notification system, in response to
receiving a request from the electronic device to register the
electronic device with the push notification system to obtain the
push notification service from the push notification system, and
provide, to the electronic device, a response to the request, the
response comprising information for enabling the push
notification providing server to request the push server to
transmit the push notification to the electronic device.
Id. at 24 (emphases added).
17. A push notification system for providing a push
notification service, the system comprising:
a first server configured to receive a push notification
from a push notification providing server; and
a second server configured to deliver the push notification
to an electronic device based on receiving the push notification
from the first server,
wherein, based on a request from the electronic device to
register for the push notification service with the push
notification system using the first server and the second server,
registration information for providing the push notification
service is received by the electronic device and forwarded to the
push notification providing server by the electronic device, and
wherein the registration information comprises
information for enabling the push notification providing server
to transmit the push notification to the electronic device.
Id. at 25–26 (emphases added).
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REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name3 Number Published Filed
Shenfield US 2005/0063335 A1 Mar. 24, 2005 Aug. 9, 2004
Yoshizawa US 2005/0251557 A1 Nov. 10, 2005 July 19, 2004
Marcellino US 2011/0289172 A1 Nov. 24, 2011 Aug. 1, 2011
The Examiner provisionally rejects claims 17 and 23 under 35 U.S.C.
§ 101 as claiming the same invention as claims 6 and 12, respectively, in co-
pending U.S. Patent Application No. 16/025,621.4 Final Act. 2–3. The
Examiner also rejects claims 1, 2, 8, 9, 15, and 16 under 35 U.S.C. § 103(a)
as obvious over the combined teachings of Yoshizawa and Marcellino (id. at
5–9); and claims 17–28 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Yoshizawa and Shenfield (id. at 9–12).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant and the Examiner focus their findings and
contentions on claims 1 and 17; so do we. Appeal Br. 8–22; Ans. 4–11;

3 All reference citations are to the first named inventor only.
4 The Examiner provisionally rejected claim 1 on the ground of provisional,
nonstatutory-type double patenting as unpatentable over claim 1 of co-
pending U.S. Patent Application No. 16/025,621 in view of Patent No.
US 9,736,257 B2. Final Act. 4–5. Appellant filed a terminal disclaimer
with respect to U.S. Patent Application No. 16/025,621, which the Examiner
approved. Thus, Appellant has overcome this provisional, nonstatutory-type
double patenting rejection.
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Reply Br. 4–9. We address the rejections below and add any additional
findings of fact for emphasis.
ANALYSIS
1. Provisional, Statutory Double-Patenting Rejection
The Examiner provisionally rejects claims 17 and 23 under 35 U.S.C.
§ 101 as claiming the same invention as claims 6 and 12, respectively, in co-
pending U.S. Patent Application No. 16/025,621.5 Final Act. 2–3.
Applicant requests that we hold its response to this provisional rejection in
abeyance. Appeal Br. 7. Nevertheless, Appellant may not reserve
arguments challenging a rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, we summarily affirm the provisional, statutory double-patenting
rejection of independent claims 17 and 23. See MPEP § 804(I)(B)(2).
2. Non-Obviousness Over Yoshizawa and Marcellino
As noted above, The Examiner rejects claims 1, 2, 8, 9, 15, and 16
under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Yoshizawa and Marcellino. Final Act. 5–9. For the reasons given below,
we disagree.
a. Independent Claim 1
The Examiner finds that Yoshizawa teaches or suggests the majority
of the limitations of claim 1. Final Act. 5–7. Nevertheless, the Examiner

5 Although not identified in the Appeal Brief or the Reply Brief, we note that
U.S. Patent Application No. 16/025,621 is the subject of Appeal No. 2020-
000112. Appealed claims 6 and 12 of co-pending U.S. Patent Application
No. 16/025,621 are identical to pending claims 17 and 23 of the present
application.
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finds, “Yoshizawa does not expressly teach a management server configured
to register the electronic device.” Id. at 7. The Examiner finds Marcellino
teaches or suggests a server application may include “a device management
server,” and that “application server 101 may register a certificate from
notification server 105 to push or send notification messages to mobile
device 109.” Id. (citing Marcellino ¶ 36, Fig. 1). Ultimately, the Examiner
finds that a person of ordinary skill in the relevant art would have had reason
to combine the teachings of Yoshizawa and Marcellino to achieve the
systems, as recited in claim 1. Id.
Appellant’s Figure 1 is reproduced below.

Figure 1 depicts a structural diagram of a push notification system. Spec.,
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4:26–27. In Figure 1, a push notification system includes push notification
server cluster 100, push notification providing server 200, and mobile
terminal 300; and push notification server cluster 100 includes delivery
server cluster 110, management server cluster 120, first push server 130,
second push server 140, and nth push server 150. Id. at 4:29–5:5. Push
notification server cluster 100 manages push server information for at least
one push server and push registration information for connection with
mobile terminal 300, and determines a push server to be connected with
mobile terminal 300. Id. at 5:7–10. Delivery server cluster 110 delivers a
push notification event received from push notification providing server 200
to the push server connected with mobile terminal 300. Id. at 5:12–14.
Yoshizawa’s Figure 3 is reproduced below.

Figure 3 depicts “how presence information and real contents information
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transmitted and received among presentities6 flow on an actual network.”
Yoshizawa ¶ 21. In particular, Yoshizawa explains,
In FIG. 3, thin solid lines indicate the flow of presence
information. On the other hand, thick solid lines indicate the
flow of contents delivery. This is because, in this embodiment,
since the presence server does not store actual contents, actual
contents are delivered by the information delivery server 4, in
accordance with change in the presence information of the user
communication terminals or a contents delivery request from the
user communication terminals.
Id. ¶ 56 (emphasis added). Referring to its Figure 2, Yoshizawa further
describes, “presentities 12-1 to 12-n for the user communication terminals
and presentities 14-1 to 14-m for the information delivery server which are
formed on the presence service 10.” Id. ¶ 51. Further, Yoshizawa explains,
On the presence service 10, information transmission and
reception between the information delivery server 4 and the user
communication terminals 2 or among the user communication
terminals 2-1 to 2-n is all performed through presentities. In
FIG. 2, the arrows connecting between the presentities 12-1 and
14-1 indicate that presence information flows bi-directionally
through the presentity.
Id. ¶ 53 (emphases added).
In the Answer, the Examiner clarifies its mapping of the teachings of
Appellant’s Figure 1 to Yoshizawa’s Figure 3, as follows:

6 Yoshizawa explains, “the users must have an account on presence service
provided by service providers. Such an account is [referred] to as
presentity.” Yoshizawa ¶ 7. We understand the term “presentity” to be a
known combination of the words “presence” and “entity.”
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Ans. 4. The Examiner did not provide this mapping prior to the Answer.
See Final Act. 5–6 (suggesting that the information delivery server 4 of
Yoshizawa’s Fig. 3 taught the “push server” recited in claim 1).
Referring to Yoshizawa’s Figure, 3, the Examiner explains:
Item 4 is connected to 14-1 included in item 3, as item 200
is connected to item 110 included in item 100; item 14-1 is
connected to 12-1 - 12-n, as item 110 is connected to item 130-
150; 12-n is connected to item 2-n, as item 150 is connected to
item 300; item 2-n is connected to item 4, as item 300 is
connected item 200.
Ans. 4.
Based on this mapping, Appellant understands that the Examiner
finds, “‘push server’ may be mapped as ‘a push server [presentity 12 in
Yoshizawa] configured to transmit a push notification to an electronic
device [mobile terminal 2 in Yoshizawa] in response to receiving a push
notification event from a push notification providing server [information
delivery server 4 in Yoshizawa].’” Reply Br. 4. Appellant disagrees with
the Examiner’s mapping of Yoshizawa’s presentities 12-1 to 12-n to the
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“push servers,” as recited in claim 1. We agree with Appellant.
Specifically, Appellant contends,
Yoshizawa describes that the presentity (12) is for the user
communication terminal (2). See e.g., Yoshizawa at ¶ 51. The
presentity (12) relays information between the presentity (14) of
the presence server (3) and the user communication terminal (2).
See Yoshizawa at ¶ 51: “presentities 14-1 to 14-m for the
information delivery server” and ¶ 53: ‘arrows connecting
between the presentities 12-1 and 14-1 indicate that the presence
information flows bi[-]directionally.” Thus, at most, the
“presence information” flows between presentities (12, 14) of the
information delivery server (4) and the user communication
terminals (2). See Yoshizawa at ¶¶ 53, 55-56. “Presence clients,
including the information delivery server 4, receive notification
of user’s presence information by filing push-type notification of
presence information of a specific user with the presence server
3.” Yoshizawa at ¶ 72.
Reply Br. 4–5. Referring to Yoshizawa’s Figure 3, Appellant contends that
the portions of Yoshizawa, upon which the Examiner relies, merely describe
that presence information flows between user communication terminals 2-1
to 2-n and their respective presentities 12-1 to 12-n and between presentities
14-1 to 14-n and information delivery server 4. See id. at 5 (emphases
added; citing Yoshizawa ¶ 72). Appellant explains, “[t]he information
delivery server (4) in Yoshizawa transmits ‘contents’ (see Yoshizawa at
¶ 80) when a corresponding presence change is detected. There is no ‘push
notification event’ received from the information delivery server in
Yoshizawa.” Reply Br. 5; see id. at 14; see also Yoshizawa ¶ 56 (“On the
other hand, thick solid lines [of Fig. 3] indicate the flow of contents
delivery.”), Fig. 3. We agree with Appellant.
Because we are persuaded the Examiner misapplies Yoshizawa’s
teachings to the disputed limitations of claim 1, we are persuaded that the
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Examiner errs in rejecting claim 1. Consequently, we do not sustain the
obviousness rejection of claim 1. Because the Examiner’s failure to show
that Yoshizawa teaches or suggests the disputed limitations of claim 1 is
dispositive error, we do not reach Appellant’s other contentions allegedly
distinguishing claim 1 over the combined teachings of Yoshizawa and
Marcellino.
b. The Remaining Claims
As noted above, Appellant challenges the rejection of dependent
claims 2, 8, 9, 15, and 16 for the same reasons as claim 1. Appeal Br. 10–
11; Reply Br. 6. Our reversal of the Examiner’s rejection of independent
claim 1 is dispositive with respect to the dependent claims. Because we are
persuaded the Examiner errs with respect to the obviousness rejection of
claim 1, we also are persuaded the Examiner errs with respect to the
obviousness rejections of claims 2, 8, 9, 15, and 16. For this reason, we do
not sustain the rejection of the dependent claims.
3. Non-Obviousness Over Yoshizawa and Shenfield
As noted above, The Examiner rejects claims 17–28 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Yoshizawa and
Shenfield. Final Act. 9–12. For the reasons given below, we disagree.
a. Independent Claim 17 and 23
Because claim 23 recites disputed limitations corresponding to those
of claim 17, we focus our analysis on claim 17. The Examiner finds that
Yoshizawa teaches or suggests the majority of the limitations of claim 17.
Final Act. 9–11. Nevertheless, the Examiner finds, “the combination [of
Yoshizawa and Shenfield] teaches registration information forwarded to the
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push notification providing server by the electronic device.” Id. at 10. In
particular, the Examiner finds Yoshizawa teaches or suggests that its system
“includes: a contents database 458 that stores contents delivered to users; a
contents transmission control part 434 that judges transmission of contents,
based on users’ presence information; and a contents registration part 435
that registers contents in the contents database 458” (id. (citing Yoshizawa
¶ 57, Fig. 4)) and Shenfield teaches or suggests,
[its] registration message will also specify the URI or the
endpoint that will receive these notifications (endpoints such as
but not limited to the Notification Service 108). It is further
recognized that external entities can also send the registration
message to the service 102 on behalf of the device 100, as well
as the registration message could be part of the initial message
112
(id. at 10–11 (citing Shenfield ¶ 35, Fig. 1)). Ultimately, the Examiner finds
that a person of ordinary skill in the relevant art would have had reason to
combine the teachings of Yoshizawa and Shenfield to achieve the systems,
as recited in claim 17. Id. at 11.
Referring to Appellant’s Figure 1, Yoshizawa’s Figure 3, and the
Examiner’s mapping of Appellant’s Figure 1 to Yoshizawa’s Figure 3,
reproduced above (see supra Section 2.a.), the Examiner clarifies that the
recited “first server” of claim 17 is taught or suggested by Yoshizawa’s
presentities 14-1 to 14-n (Ans. 7–8). Further, the Examiner finds the recited
“second server” of claim 17 is taught or suggested by Yoshizawa’s
presentities 12-1 to 12-n. Id. at 8–9. We disagree.
Claim 17 recites, “a first server configured to receive a push
notification from a push notification providing server.” Appeal Br. 25
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(Claims App.) (emphasis added). Referring to Yoshizawa’s Figure 3,
Appellant contends that
at most, presence information flows between a user
communication terminal (2-1), [its] corresponding presentity
(12-1), the presentity (12-n) of the subscribing user, and the
subscribing user communication terminal (2-n). There is no flow
of push notifications using the presentity 14 (for the presence
server 3) and the information providing server (4). Instead,
“information delivery server 4 manages plural channels, which
are virtual entities for distributing contents.” Yoshizawa at ¶ 52.
Reply Br. 7 (citing Appeal Br. 16–17); see also Yoshizawa ¶ 56 (“On the
other hand, thick solid lines [of Fig. 3] indicate the flow of contents
delivery.”), Fig. 3. Appellant concludes:
The presence server (3) [of Yoshizawa’s Figure 3] does not
receive “push notifications” from any “push notification
providing server.” Instead, presence information is at most
received from the user terminal (2), and the presence server (3)
acts to notify the information delivery server (4) of that status
corresponding to the presence information. See e.g., Yoshizawa
at ¶¶ 73-77.
Appeal Br. 17. We agree with Appellant.
Similarly, claim 17 recites, “a second server configured to deliver the
push notification to an electronic device based on receiving the push
notification from the first server.” Appeal Br. 25 (Claims App.) (emphasis
added). As Yoshizawa makes clear, however, information delivery server 4
delivers content, e.g., push notifications, directly to user communication
terminals 2-1 to 2-n. Yoshizawa ¶ 56, Fig. 3; see id. ¶ 55 (“In the presence
server 3, the presentities 12 (12-1 to 12-n) for the plural user communication
terminals are formed to transmit and receive presence information between
the user communication terminal 2 and the presence server. Similarly, the
presentities 14 (14-1 to 14-m) for the plural information delivery servers are
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also formed.”). In particular, Yoshizawa explains, “[t]he reference
numeral 3 designates a presence server which manages attribute information
of the user communication terminals 2-1 to 2-n. The reference numeral 4
designates an information delivery server for delivering information
(contents) requested by the user communication terminals 2-1 to 2-n.”
Yoshizawa ¶ 47 (emphasis added). Thus, Appellant concludes Yoshizawa
does not teach or suggest that presentities 12-1 to 12-n of presence server 3
“deliver the push notification to an electronic device[, i.e., a user
communication terminal,] based on receiving the push notification from the
first server[, i.e., presentities 14-1 to 14-n].” See Appeal Br. 17–18
(emphases added); Resp. 11; see also Yoshizawa ¶ 72 (“If presence
information of a user communication terminal changes, the presence
information is transmitted from the user communication terminal to the
presence server 3 (S1001). Presence clients, including the information
delivery server 4, receive notification of user’s presence information by
filing push-type notification of presence information of a specific user with
the presence server 3, or periodically requesting presence information from
the presence server.”). We agree with Appellant.
Because we are persuaded the Examiner misapplies Yoshizawa’s
teachings to the disputed limitations of claim 17, we are persuaded that the
Examiner errs in rejecting claim 17, as well as claim 23. Consequently, we
do not sustain the obviousness rejection of claims 17 and 23. Because the
Examiner’s failure to show that Yoshizawa teaches or suggests the disputed
limitations of claims 17 and 23 is dispositive error, we do not reach
Appellant’s other contentions allegedly distinguishing claims 17 and 23 over
the combined teachings of Yoshizawa and Shenfield.
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b. The Remaining Claims
As noted above, Appellant challenges the rejection of dependent
claims 18–22 and 24–28 for the same reasons as claims 17 and 23. Appeal
Br. 12; Reply Br. 8–9. Our reversal of the Examiner’s rejection of
independent claims 17 and 23 is dispositive with respect to the dependent
claims. Because we are persuaded the Examiner errs with respect to the
obviousness rejection of claims 17 and 23, we also are persuaded the
Examiner errs with respect to the obviousness rejections of claims 18–22
and 24–28. For this reason, we do not sustain the rejection of the dependent
claims.
DECISION
1. The Examiner does not err in rejecting claims 17 and 23 under 35
U.S.C. § 101 as claiming the same invention as claims 6 and 12,
respectively, in co-pending U.S. Patent Application No. 16/025,621.
2. The Examiner errs in rejecting claims 1, 2, 8, 9, and 15–28 under 35
U.S.C. § 103(a) as obvious over the combined teachings of
Yoshizawa and Marcellino or Shenfield.
3. Thus, on this record, claims 17 and 23 are unpatentable, but claims 1,
2, 8, 9, 15, 16, 18–22, and 24–28 are not unpatentable.
CONCLUSION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 17 and 23, but reverse the Examiner decision rejecting claims 1, 2, 8,
9, 15, 16, 18–22, and 24–28.

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In summary:
Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
17, 23 101 Statutory
Double-
Patenting
17, 23
1, 2, 8, 9, 15,
16
103(a) Yoshizawa,
Marcellino

1, 2, 8, 9, 15,
16
17–28 103(a) Yoshizawa,
Shenfield
17–28
Overall
Outcome
17, 23 1, 2, 8, 9, 15,
16, 18–22,
24–28
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART