Ex Parte Cai et al

Patent Trial and Appeal BoardMar 27, 2014

11563470 (P.T.A.B. Mar. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/563,470 11/27/2006 Yigang Cai CAI 67-9-3-5-11 1017 50525 7590 03/28/2014 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 EXAMINER PATEL, HITESHKUMAR R ART UNIT PAPER NUMBER 2441 MAIL DATE DELIVERY MODE 03/28/2014 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 YIGANG CAI, XIANGYANG LI, KE PEI, JIE SU, and JAY Z. ZHAO ____________ Appeal 2011-005807 Application 11/563,470 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, JOHN A. EVANS, and ROBERT J. WEINSCHENK, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005807 Application 11/563,470 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellants’ invention relates to a system and method for providing notifications, such as online charging notifications, to subscribers using an IP Multimedia Subsystem (IMS) network (see Spec. 4:13-16). Claim 1, which is illustrative of the claimed system, reads as follows: 1. An IMS gateway system, comprising: a session interface coupled to a serving-call session control function (S-CSCF); a charging interface coupled to an online charging system (OCS); a notification database adapted to store a plurality of notification definitions that define notifications to be provided in an IMS network; and a session manager device coupled between the session interface and the charging interface, the session manager device adapted to identify a triggering event for a session of an IMS subscriber, identify at least one notification definition for the triggering event from the notification database, and provide notification to the IMS subscriber based on the at least one notification definition identified for the triggering event. Rejections on Appeal Claims 1, 2 and 7-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1 (US 2005/0177469 A1) and Koskinen (US 2005/0271193 A1) (see Ans. 5-8). Appeal 2011-005807 Application 11/563,470 3 Claims 10, 11 and 16-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1, Koskinen, and 3GPP TS 32.296 V2.0.0, “3rd Generation Partnership Project; Technical Specification Group Service and System Aspects; Telecommunication management; Charging management; Online Charging System (OCS); Application and interfaces,” Technical Specification, Release 6 (2004) (3GPP TS 32.296) (see Ans. 8- 14). Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1, Koskinen, and Vallinen-2 (US 2006/0003734 A1) (see Ans. 14-16). Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1, Koskinen, and Gourraud (US 2004/0037407 A1) (see Ans. 16-17). Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1 and 3GPP TS 32.296 (see Ans. 17-18). Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vallinen-1, 3GPP TS 32.296, and Gourraud (see Ans. 19- 20). Appellants’ Contentions 1. With respect to independent claim 1, Appellants contend that: a. Vallinen-1 does not teach an IMS gateway system (App. Br. 8; Reply Br. 2-3). According to Appellants, an IMS gateway system must be connected between a serving-call session control function (S-CSCF) and an online charging system (OCS) (App. Br. 8; Reply Br. 2-3). The Examiner identifies the application server (or game server) in Vallinen-1 as the IMS gateway system (Ans. 21). Appeal 2011-005807 Application 11/563,470 4 Appellants argue that the application or game server in Vallinen-1 is not an IMS gateway system because it is not connected between an S- CSCF and an OCS (App. Br. 8; Reply Br. 2-3). b. Vallinen-1 does not teach a notification database adapted to store a plurality of notification definitions that define notifications to be provided in an IMS network (App. Br. 8; Reply Br. 3). Appellants contend that the database described in Vallinen-1 only stores payment information and that payment information is not a notification definition (App. Br. 8; Reply Br. 3). c. Vallinen-1 does not teach an IMS gateway system comprising a session manager device adapted to provide notification to the IMS subscriber (App. Br. 9-10). Appellants contend that Vallinen-1 teaches that the OCS, and not the IMS gateway, provides notifications to subscribers (App. Br. 9). Appellants further argue that one skilled in the art would not be motivated to provide notifications to subscribers using an IMS gateway (App. Br. 10). 2. With respect to the remaining claims, Appellants present no separate arguments and contend their patentability based on the same reasons stated for independent claim 1 (App. Br. 10-11). Issue on Appeal Has the Examiner erred in rejecting the claims as being obvious over the asserted combinations of references because those combinations do not teach or suggest the disputed features recited in Appellants’ claims? Appeal 2011-005807 Application 11/563,470 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. With respect to Appellants’ contention 1a above, we agree with the Examiner that Koskinen and 3GPP TS 32.296 each teach an IMS gateway system coupled between an S-CSCF and an OCS (Ans. 6, 9-10). Appellants admit this in the Appeal Brief (App. Br. 7). Further, Appellants do not dispute the Examiner’s conclusion that it would have been obvious to combine the above-referenced disclosure of Koskinen and/or 3GPP TS 32.396 with that of Vallinen-1 (Ans. 6, 9-10). Instead, Appellants argue that Vallinen-1 individually does not teach an IMS gateway because the application or game server in Vallinen-1 is not coupled between an S-CSCF and an OCS (App. Br. 8; Reply Br. 2-3). However, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, Appellants’ argument is not persuasive. Regarding Appellants’ contention 1b above, we agree with the Examiner that Vallinen-1 teaches a notification database adapted to store a plurality of notification definitions that define notifications to be provided in an IMS network (Ans. 5). As explained by the Examiner (Ans. 5, 24-26), Vallinen-1 teaches a database storing payment information (Vallinen-1 ¶ [0055]). Appellants contend that this payment information is not a notification definition because it is not an announcement used to convey information to subscribers (App. Br. 8; Reply Br. 3). To the contrary, and as Appeal 2011-005807 Application 11/563,470 6 explained by the Examiner (Ans. 24-26), Vallinen-1 teaches that the payment information may include a proposed payment principle that can be conveyed to a user in a message (e.g., “Challenge: Loser pays”) (Vallinen-1 ¶ [0056], [0061]). The Examiner’s characterization of the prior art payment information as the claimed notification definition is also consistent with Appellants’ Specification, which states that a “notification definition” comprises any information or data that define how to handle notifications to be provided in an IMS network (Spec. 7:10-12) and even gives examples of notification definitions that relate to payments (see Spec. 4:15-5:2). Thus, Appellants’ argument is not persuasive. With respect to Appellants’ contention 1c above, we agree with the Examiner that Vallinen-1 teaches a session manager device adapted to provide notification to the IMS subscriber (Ans. 27-28). As explained by the Examiner (Ans. 27-28), Vallinen-1 teaches that a proposed payment principle may be inserted into a message (e.g., “Challenge: Loser pays”) by the application or game server and sent from that server to an S-CSCF serving one of the users (Vallinen-1 ¶ [0061]). As also explained by the Examiner (Ans. 32), the claim language does not require that the session manager device provide notification directly to the IMS subscriber. In fact, Appellants’ Specification states that the session manager may provide notification to the IMS subscriber through an S-CSCF (Spec. 8:25-29), just as is taught by Vallinen-1. Further, Appellants do not dispute that paragraph [0061] of Vallinen-1 teaches an application or game server providing notification to an IMS subscriber. Instead, Appellants focus on other portions of Vallinen-1 that discuss certain messages that may be sent by an OCS (App. Br. 9-10). We agree with the Examiner (Ans. 30) that the ability Appeal 2011-005807 Application 11/563,470 7 of the OCS to send a notification does not change the fact that the application or game server in Vallinen-1 can also provide notification. Thus, Appellants’ argument is not persuasive. Appellants also contend that one skilled in the art would not be motivated to provide notification through an IMS gateway because one skilled in the art would use a Media Resource Function Controller (MRFC) instead (App. Br. 10). As discussed above, we agree with the Examiner that the combination of Vallinen-1 and Koskinen teaches all the elements of claim 1, including an IMS gateway system comprising a session manager device adapted to provide notification to the IMS subscriber. Therefore, as explained by the Examiner (Ans. 31-32), Appellants’ suggestion that another way of providing notifications to IMS subscribers may exist is not persuasive of the Examiner’s error. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). CONCLUSION On the record before us, we conclude that, because the references teach or suggest all the disputed claim limitations, the Examiner has not erred in rejecting the claims under 35 U.S.C. § 103(a). DECISION The decision of the Examiner rejecting claims 1-20 is affirmed. 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 Appeal 2011-005807 Application 11/563,470 8 tj