Ex Parte Haruna et al

Patent Trial and Appeal BoardMar 11, 2015

12418383 (P.T.A.B. Mar. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ADAMU HARUNA, HANS ROHNERT, and IVO SEDLACEK ____________ Appeal 2012-006634 Application 12/418,383 Technology Center 2400 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Adamu Haruna et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1–14. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 According to Appellants, the real party of interest is Nokia Corporation. Br. 4. Appeal 2012-006634 Application 12/418,383 2 INVENTION Claim 1 is representative of the claimed invention and reads as follows: 1. A method, comprising facilitating of and/or processing (1) data and/or (2) information and/or (3) as least one signal, the (1) data and/or (2) information and/or (3) at least one signal based, at least in part, on the following: at least one exchange of at least one of standalone messages and sessions in a conversation between two or more participants via a network apparatus within a converged messaging framework, at least one determination to provide at least one of standalone messages and session invitation messages with at least one of: a conversation identity linking the at least one of standalone messages and session invitation messages to the conversation; a contribution identity to denote a particular standalone message or session invitation message; and a replied contribution identity which equals to a contribution identity of a replied standalone message or session invitation message; wherein the at least one standalone messages or session invitation messages is a reply to one or more preceding standalone messages or session invitation messages within the conversation; and at least one storage of the at least one of standalone messages and sessions belonging to the conversation, based, at least in part, on at least one of the conversation identity, the contribution identities and the replied contribution identities. Appeal Br. 13, Claims App. (emphasis added). THE REJECTIONS Claims 1–14 are rejected under 35 U.S.C. § 103(a) over Levin (US 2007/0033250 A1; pub. Feb. 8, 2007) and OMA (Converged IP Messaging Requirements, Open Mobile Alliance, OMA-RD-CPM-V1_0-20071106-c, Appeal 2012-006634 Application 12/418,383 3 http://member.openmobilealliance.org/ftp/Public_documents/REQ/REQ- CPM/PERMANENTDOCUMENTS,” November 6, 2007, Pages 1–71). 2 ANALYSIS The Examiner finds that Levin teaches the method of claim 1, including “a system which utilizes the existing messaging framework to allow and manag[e] simultaneous real-time communication (full duplex conferencing).” Ans. 6, 12, citing Levin, para. 8. The Examiner acknowledges that “Levin does not explicitly disclose the limitation of at least one exchange of at least one of standalone messages and sessions in a conversation between two or more participants via a network apparatus within a converged messaging framework.” Id. at 6 (emphasis added). However, the Examiner further finds that OMA teaches this limitation “in order to support one-to-one, one-to-many personal communications and also communications with applications.” Id. at 6–7, citing OMA, p. 9, § 3.2. The Examiner reasons that “based on Levin in view of OMA, it would have been obvious to one having ordinary skill in the prior art . . . to utilize the teaching of OMA to [sic] the system of Levin in order to support one-to-one, one-to-many personal communications and also communications with applications.” Id. at 7. The Examiner further explains that “[i]t would be reasonable to improve upon the system of Levin with ‘Converged IP Messaging Requirements’ in order to improve full-duplex communications by adding support for one-to-one, one-to-many personal communications 2 Appellants refer to this reference as Converged IP Messaging Requirements, however, we will refer to this reference herein as OMA. Appeal 2012-006634 Application 12/418,383 4 and also communications with applications.” Id. at 12, citing OMA, p. 12, § 4. Appellants argue that “[t]here is no teaching, or even a suggestion, within either [Levin] or [OMA] that would support the Examiner’s conclusion that it would have been obvious to combine these references to result in the claimed features.” Appeal Br. 8; Reply Br. 2–3. Appellants contend that “[Levin] only discusses managing messages within the framework of SIP, and certainly does not suggest extending beyond the scope of SIP framework.” Appeal Br. 8; Reply Br. 2. Appellants further contend that “the Examiner simply relies on the general teachings of [OMA] as providing sufficient motivation to combine the applied references without considering the explicit limitations of [Levin’s] SIP framework” and that “it would not have been obvious, much less even possible, to configure the limited framework of [Levin’s] SIP network to provide ‘[the claimed exchange] via a network apparatus within a converged messaging framework.’” Appeal Br. 7–8; Reply Br. 3. Appellants submit that “[i]t is unreasonable to assert that [OMA] would have been predictably combinable with [Levin] because doing so would entirely restructure and extend beyond the capabilities of [Levin’s] SIP network by introducing additional features that are not supported in the limited framework of [Levin’s] SIP network.” Reply Br. 5. The Examiner is entitled to rely on the general teachings of OMA. A reference is good for all it teaches to a person of ordinary skill in the art. In re Fitch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). However, the Examiner must articulate a reasonable obviousness rationale. See KSR International Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some Appeal 2012-006634 Application 12/418,383 5 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness[.]” (citation omitted)). The Examiner’s notice requirement “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)). Here, the Examiner finds that “Levin does not explicitly disclose” that the claimed exchange is “via a network apparatus within a converged messaging framework” (Ans. 6) and determines that “it would be reasonable to improve upon the system of Levin with [OMA] . . . by adding support for one-to-one, one-to-many personal communications and also communications with applications” (Ans. 12 (emphasis added)). Presumably, adding the functionality of one-to-one, one-to-many personal communications and also communications with applications, as indicated by the Examiner, transforms Levin’s network apparatus into a network apparatus within a converged messaging framework, because OMA states that “CPM supports one-to-one, one-to-many personal communications, and also communication with Applications.” OMA, p. 12, § 4. On this record, we find that the Examiner’s notice requirement simply is not met. In particular, it is not clear whether the Examiner’s reasoning attempts to improve Levin’s network, which is described as possibly including one or more server computing systems (see Levin, p. 4–5, para. 42), by adding support such that Levin’s network becomes the CPM service provider domain, as apparently interpreted by Appellants, or whether the Examiner’s reasoning is to the effect that Levin’s network may be improved by adding support for a CPM Enabler, for example, whereby Levin’s Appeal 2012-006634 Application 12/418,383 6 network is a Communication Service within OMA’s CPM System. In the absence of such an explanation, the Examiner has also not adequately addressed Appellants’ argument that such improvements would impermissibly restructure or extend beyond Levin’s network as disclosed. Accordingly, we cannot sustain the Examiner’s rejection of claim 1. Independent claims 9 and 11 contain a similar limitation as the limitation discussed above with respect to claim 1, and the Examiner rejects claims 9 and 11 based on the same analysis. Ans. 10, 11. Thus, for the reasons stated above, we also cannot sustain the Examiner’s rejection of independent claims 9 and 11, or dependent claims 2–8, 10, and 12–14. SUMMARY We REVERSE the Examiner’s decision to reject claims 1–14. REVERSED tkl