Bakker, John-Luc et al.Download PDFPatent Trials and Appeals BoardJul 7, 202013529088 - (D) (P.T.A.B. Jul. 7, 2020) Copy Citation 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. 13/529,088 06/21/2012 John-Luc Bakker 32769-US-CNT (4214-03503) 1861 82313 7590 07/07/2020 Conley Rose - BlackBerry Files Attn: J. Robert Brown 5601 Granite Parkway, Suite 500 Plano, TX 75024 EXAMINER SEYEDVOSOGHI, FARID ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 07/07/2020 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): ConleyRoseReporting@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN-LUC BAKKER, ANDREW ALLEN, and ADRIAN BUCKLEY Appeal 2019-003803 Application 13/529,088 Technology Center 2600 Before JEAN R. HOMERE, BETH Z. SHAW, and SHARON FENICK, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–9, 11, 23, and 25–34, which constitute all of the claims pending in this appeal. See Final Act. 1. Claims 2, 10, 12–22, and 24 have been canceled. Appeal Br. 16–20 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as BlackBerry Limited. Appeal Br. 3. Appeal 2019-003803 Application 13/529,088 2 RELATED APPEALS This appeal relates to Appeal 2014-001964 (“Dec.”), previously decided on June 1, 2016, in which we affirmed the Examiner’s rejections of claims 1–34. Appeal Br. 4, Dec. 5. CLAIMED SUBJECT MATTER The claims are directed to a system and method for sharing a Session Initiation Protocol (SIP) communication service identifier. Spec. ¶17. Claim 1, reproduced below, is illustrative of the claimed subject matter, with disputed limitations in italics: 1. A method for indicating that an application server (AS) that is included on a signaling route between a first user agent (UA) and a second UA different than the first UA is capable of providing a particular service, the method comprising: receiving, at the AS via a communication network, a first Session Initiation Protocol (SIP) request from the first UA; generating, at the AS, a second SIP request based on the first SIP request received from the first UA, the second SIP request including a SIP header comprising a token that identifies at least one service supported by the AS that is included in the signaling route and the second SIP request further including a uniform resource identifier (URI) comprising an address of the AS; responsive to generating the second SIP request, transmitting by the AS, the second SIP request via the communication network towards the second UA different than the first UA; and transmitting, by the AS, a SIP response via the communication network to the first UA, the SIP response including the token, wherein the token in the second SIP request or in the SIP response is used by another network node for at least one of: policing purposes or charging purposes. Appeal 2019-003803 Application 13/529,088 3 REFERENCES The Examiner relied upon the following prior art: Name Reference Date Lee Mutikainen Eydelman Astrom Heidermark Astrom US 2002/0172338 A1 US 2005/0058125 A1 US 2006/0031536 A1 US 2008/0189414 A1 US 2009/0067411 A1 US 2008/0189414 A1 Nov. 21, 2002 Mar. 17, 2005 Feb. 9, 2006 Aug. 7, 2008 Mar. 12, 2009 Aug. 7, 2008 3rd Generation Partnership Project (“3GPP”), Technical Specification TS 24.229 V6.15.0 (2007-06) Johnston, Session Initial Protocol Service Examples, IETF Trust (July 16, 2007) REJECTIONS Claims 1, 9, 23, 31, and 34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen and 3GPP. Final Act. 3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen, 3GPP, and Heidermark. Final Act. 11. Claims 8 and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen, 3GPP, and Eydelman. Final Act. 12. Claims 3, 25, 26, and 32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen, 3GPP, and Johnston. Final Act. 13. Claims 5–7 and 27–29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen, 3GPP, and Astrom. Final Act. 16. Claims 11 and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mutikainen, 3GPP, and Lee. Final Act. 18. Appeal 2019-003803 Application 13/529,088 4 OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief. Appellant argues the Examiner erred in rejecting independent claim 1. First, Appellant argues that Mutikainen fails to teach or suggest, “transmitting, by the AS, a SIP response via the communication network to the first UA, the SIP response including the token,” as recited in claim 1. Appeal Br. 9, 10. Mutikainen teaches that a host terminal, MS-A 15, can initiate a new conference call. Mutikainen ¶¶ 111, 113, 117. A new member can be added to a conference by sending a SIP REFER request to the conference server 20. Mutikainen ¶ 119. When a new member is added to the conference, an invite request contains a contact header that may contain an “isfocus parameter” (which the Examiner finds is a token), which indicates that an address is for a conference call. Ans. 3 (citing Mutikainen ¶ 117, 119). When the invited terminal is connected with the other participants in the conference, “the conference server 20 sends a NOTIFY request to the inviting terminal MS-A 15 that tells that the session to the invited terminal MS-B 17 is in confirmed state.” Mutikainen ¶ 124. Appellant argues Mutikainen fails to disclose that the NOTIFY request includes the isfocus parameter. Appeal Br. 10. Mutikainen sends a SIP response including a contact header with an isfocus parameter, which indicates that the address is for a conference call. Mutikainen ¶ 117, 119. Appellant argues that “based on the Examiner’s interpretation of the claimed token, Mutikainen fails to disclose a SIP response including the token.” Id. On this record, we are persuaded by this argument because Mutikainen does not disclose sending the isfocus parameter to the first UA. Ans. 3, 4; Mutikainen ¶ 124. Rather, the isfocus parameter is sent to the mobile Appeal 2019-003803 Application 13/529,088 5 terminal MS-B 17. Mutikainen ¶¶ 117, 119. On this record, the Examiner has not sufficiently explained why the isfocus parameter is included in the NOTIFY request described in paragraph 124 of Mutikainen; nor does the record sufficiently show that “the” token (i.e., according to the Examiner, the isfocus parameter discussed in paragraphs 117 or 119 of Mutikainen) is the same token that is used for policing or charging purposes, as required by claim 1. Because Appellant has shown at least one reversible error in the Examiner’s obviousness rejection, we do not reach Appellant’s remaining arguments. Accordingly, we do not sustain the rejection of independent claim 1. For the same reasons, we do not sustain the rejection of independent claim 23, or the remaining pending dependent claims. CONCLUSION On this record, we reverse the rejections under § 103. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 9, 23, 31, 34 103 Mutikainen, 3GPP 1, 9, 23, 31, 34 4 103 Mutikainen, 3GPP, Heidermark 4 8, 30 103 Mutikainen, 3GPP, Eydelman 8, 30 3, 25, 26, 32 103 Mutikainen, 3GPP, Johnston 3, 25, 26, 32 5–7, 27–29 103 Mutikainen, 3GPP, Astrom 5–7, 27–29 11, 33 103 Mutikainen, 3GPP, Lee 11, 33 Overall Outcome: 1, 3–9, 11, 23, 25–34 Appeal 2019-003803 Application 13/529,088 6 REVERSED Copy with citationCopy as parenthetical citation