Ex Parte Hurtta

Patent Trial and Appeal Board

Apr 29, 2016

12871736 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/871,736 08/30/2010
12358 7590 05/03/2016
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
FIRST NAMED INVENTOR
Tuija Hurtta
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
39700-644D01 US/NC40382US- 2278
EXAMINER
CHANG, RICHARD K
ART UNIT PAPER NUMBER
2464
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TUIJA HURTTA
Appeal2014-007756
Application 12/871,736
Technology Center 2400
Before HUNG H. BUI, DANIEL N. FISHMAN, and ADAM J. PYONIN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 11-16, 19, 20, 22, and 23, which
constitute all the claims pending in this application. Claims 1-10, 1 7, 18,
21, and 24-26 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellant, the real party in interest is Nokia Corporation.
App. Br. 2.
2 Our Decision refers to Appellant's Appeal Brief filed November 26, 2013
("App. Br."); Reply Brief filed July 7, 2014 ("Reply Br."); Examiner's
Answer mailed May 6, 2014 ("Ans."); Final Office Action mailed April 25,
2013 ("Final Act."); and original Specification filed August 30, 2010
("Spec.").
Appeal2014-007756
Application 12/871,736
STATEMENT OF THE CASE
Appellant's invention relates to a method and apparatus for providing
information to an access network element in a 3GPP (Third Generation
Partnership Project) network system that enables the access network element
to perform service based processing on data belonging to an application
session. Spec. i-fi-f l 0-11; Abstract. Claims 11, 19, and 22 are independent.
Claim 11 is illustrative of Appellant's invention and is reproduced below:
11. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one processor, the at least one memory, and the
computer program code configured to cause the apparatus to at
least:
receive, at the apparatus further comprising an access
network element, a decision message from a network control
element, the decision message comprising control information
and information comprising one or more service identifiers
indicating at least one service in question;
detect, from the decision message received by the
apparatus, the control information;
identify the at least one service in question by using the
information including the one or more service identifiers
indicating the at least one service in question; and
process data belonging to an application session in
accordance with the at least one service in question and the
control information.
App. Br. 20 (Claims App'x.) (disputed limitations in italics).
Shaheen
Boman
Evidence Considered
US 2003/0035401 Al
US 2007 /0274522 Al
2
Feb.20,2003
Nov. 29, 2007
Appeal2014-007756
Application 12/871,736
Appellant's Admitted Prior Art ("AAPA") as disclosed in paragraphs
[0003]-[0008] of Appellant's Specification.
Examiner's Rejections
(1) Claims 19-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaheen and AAP A. Final Act. 2--4.
(2) Claims 11-16 and 22-23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shaheen, AAPA, and Boman. Final
Act. 5-11.
Issue on Appeal
Based on Appellant's arguments, the dispositive issue on appeal is
whether Appellant's claimed "decision message" as recited in each of
independent claims 11, 19, and 22 can be broadly interpreted to encompass
an "INVITE message" disclosed by Shaheen. App. Br. 10, 14--18; Reply Br.
10-13.
ANALYSIS
In support of the rejection of independent claim 11 and similarly,
claims 19 and 22, the Examiner finds Shaheen teaches, inter alia, the claim
recitation: "receive ... a decision message from a network control element,
the decision message comprising [1] control information and [2] information
comprising one or more service identifiers indicating at least one service in
question" in the form of an "INVITE" message, which is passed from user
equipment (UE# 1) of a network # 1 to user equipment (UE#2) of network #2
via respective control functions (P-CSCF and S-CSCF) of the respective
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Appeal2014-007756
Application 12/871,736
networks. Final Act. 5 (citing Shaheen if 65; Fig. 8) (emphasis and bracket
added). In particular, the Examiner interprets Appellant's claimed "decision
message" to encompass the "INVITE" message disclosed by Shaheen. Id.
Shaheen' s Figure 8 shows a session establishment procedure between
user equipment (UE# 1) of a network # 1 to user equipment (UE#2) of
network #2 via respective control functions (P-CSCF and S-CSCF), as
reproduced below with additional markings, in red, for illustration.
S.UPPO.~TED CG'DEC.S SASED
ON OPERA. TOR POUCY
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Appeal2014-007756
Application 12/871,736
Appellant does not dispute the Examiner's rationale for making the
combination. Instead, Appellant contends the Examiner's interpretation of
Appellant's claimed term "decision message" is incorrect and is inconsistent
with both the plain meaning and the express language of that term.
According to Appellant:
(1) an invite message [as disclosed by Shaheen], such
as an invitation to attend a dinner party, represents a request to
participate in something, and does not represent a decision
[Appellant's claimed "decision message"];
(2) dependent claim 12 requires the claimed "decision
message" to be a response message that is responsive to a
request message;
(3) Appellant's claimed "response messages" are
fundamentally different than request messages, such as
Shaheen' s INVITE message;
( 4) Shaheen' s INVITE message cannot represent a
decision because no decision had been made prior to the
sending of Shaheen's INVITE message; and
(5) claim 11 requires the claimed "decision message"
to comprise control information and one or more service
identifiers, but Shaheen' s INVITE message only includes a
session description protocol (SDP) having bandwidth
requirements/ characteristics of each media and local port
numbers for each possible media flow.
App. Br. 14--18; Reply Br. 10-13 (emphasis added).
We do not find Appellant's arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by a preponderance of evidence. Ans. 4--12. As such, we adopt
the Examiner's findings and explanations provided therein. Id. For
additional emphasis, we note that claim terms are given their broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
5
Appeal2014-007756
Application 12/871,736
of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Contrary to
Appellant's arguments, Appellant's Specification does not provide an
explicit definition of the term "decision message." For example, paragraph
[0026] of Appellant's Specification describes a situation in which a
"decision message" is sent to an access network element 100 without a
request from access network element 100 for the updated decision message.
Similarly, paragraph [0030] of Appellant's Specification describes that "the
PDF and CRF are allowed to send decision messages to the GW without a
request from the GW." (emphasis added). Based on Appellant's own
Specification, the term "decision message," as recited in claim 11, does not
have to be a message that is sent back in response to a request for that
decision message or a request for an invitation, as Appellant argues. Reply
Br. 10. Instead, the "decision message" can be broadly but reasonably
interpreted to encompass Shaheen's "INVITE" message, as long as that
message includes: "[ 1] control information and [2] information comprising
one or more service identifiers indicating at least one service in question."
As correctly recognized by the Examiner, Shaheen's INVITE message
includes both: [ 1] the claimed "control information" in the form of
bandwidth requirements because such bandwidth requirements define
operational bandwidths and indicate a type of control information; and [2]
the claimed "information comprising one or more service identifiers
indicating at least one service in question" in the form of a session
description protocol (SDP) having local port numbers for each possible
media flow because the port numbers indicate media service identifiers.
Ans. 7-9 (citing Shaheen Fig. 8, i-f64).
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Appeal2014-007756
Application 12/871,736
In the absence of an explicit definition from Appellant's Specification,
we agree with the Examiner that the term "decision message" can be broadly
interpreted to encompass an "INVITE" message as disclosed by Shaheen.
Ans. 4--7. "Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO' s definition unreasonable when the
PTO can point to other sources that support its interpretation." In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997). Contrary to Appellant's arguments,
we find the Examiner's interpretation is reasonable and consistent with
Appellant's Specification.
In the Reply, Appellant further argues: (1) the Examiner fails to meet
the burden required of taking official notice to produce any documentary
evidence for the meaning of "decision message" and (2) independent claim
11, when read in view of its dependent claim 12, requires sending a "request
message" and the claimed "decision message" is based on that "request
message sent between two devices. Reply Br. 10-13. However, these
arguments are misplaced. First, the Examiner is not taking official notice
but is rather interpreting a claim term. Second, Appellant's claim 11 merely
requires the claimed apparatus to "receive ... a decision message from a
network control element," while claim 12 merely requires that the claimed
apparatus "send a request message to the network control element to request
the decision message from the network control element." These claims do
not specify that the receipt of the decision message recited in Appellant's
claim 11 is initiated by the sent request of Appellant's claim 12. The request
of Appellant's claim 12 could initiate a different sending and receipt of the
decision message - claim 12 does not require a direct correlation between
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Appeal2014-007756
Application 12/871,736
the recited request and the receipt of the decision message. In addition, the
limitations of dependent claim 12 do not limit the scope of Appellant's
independent claim 11. 3
For the reasons set forth above, Appellant has not persuaded us of
Examiner error. Accordingly, we sustain the Examiner's obviousness
rejection of independent claims 11, 19, and 22, and their respective
dependent claims 12-16, 20, and 23, which Appellant does not argue
separately (App. Br. 18).
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 11-16, 19, 20, 22, and 23 under 35
U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 11-16,
19, 20, 22, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
3 Additionally, we note Appellant does not separately argue claim 12, but
merely refers to the claim in the arguments presented for claim 11. Claim
12, however, is a dependent claim and, therefore, the limitations are
additional to those recited by parent claim 11. See 35 U.S.C. 112
(pre-AIA), fourth paragraph.
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Appeal2014-007756
Application 12/871,736
AFFIRMED
9