Bakker, John-Luc et al.

Patent Trials and Appeals Board

Jul 7, 2020

13529088 - (D) (P.T.A.B. Jul. 7, 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.
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
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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
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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
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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
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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
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REVERSED