Ex Parte Johansson et al

Patent Trial and Appeal BoardMar 8, 2017

13213531 (P.T.A.B. Mar. 8, 2017)

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. 13/213,531 08/19/2011 Jonas Johansson P34467 US2 8446 27902 7590 ERICSSON CANADA INC. PATENT DEPARTMENT 8275 Route Transcanadienne Saint-Laurent, QC H4S 0B6 CANADA EXAMINER WU, TSUNG YIN ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 03/10/2017 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): patent, unit. Canada @ erics son. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONAS JOHANSSON and ZHONGWEN ZHU Appeal 2016-004848 Application 13/213,531 Technology Center 2400 Before JOHN A. JEFFERY, LARRY J. HUME, and MELISSA A. HAAPALA, Administrative Patent Judges. HAAPALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—3, and 5—20, which are all of the claims currently pending in the application.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Claim 4 has been canceled. Br. 20; see also Ans. 15 (noting claim 4 is canceled). Appeal 2016-004848 Application 13/213,531 INVENTION Appellants’ disclosed invention is directed to providing passive presence and conversation services between users on a communication network. Spec. 12. Claim 1 is exemplary of the subject matter on appeal: 1. A method for initializing a conversation service between users in a communication network, for execution by a conversation service node, comprising: receiving, at the conversation service node, from a first user device, a request to initiate a conversation with a second user device; identifying a conversation object uniquely associated with the first user and the second user; sending an invitation, including an identifier associated with the conversation object, to the second user device; sending the identifier associated with the conversation object to the first user device without waiting for a reply from the second user; and receiving, at the conversation service node, a listen request for notification of updates to the conversation object from the first user device. REJECTIONS ON APPEAL Claims 1—3, 5—8, 12, and 14—20 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Stonefield (US 2009/0054092 Al; Feb. 26, 2009) and Katis (US 2011/0019662 Al; Jan. 27, 2011). Claims 9-11 and 13 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Stonefield, Katis, and Bennett (US 2006/0155814 Al; July 13, 2006). 2 Appeal 2016-004848 Application 13/213,531 ANALYSIS We have reviewed Appellants’ contentions in the Brief, the Examiner’s rejection, the Examiner’s response to Appellants’ contentions, and the evidence of record. We agree with Appellants’ contention that the Examiner errs in finding the combination of Stonefield and Katis teaches or suggests receiving, at the conversation service node, a listen request for notification of updates to the conversation object from the first user device, (“receive listen request” limitation), as recited in independent claim l.2 See Br. 8-10. The Examiner relies on Stonefield to teach the “receive listen request” limitation. Final Act. 3 (citing Stonefield 193); Ans. 16 (citing Stonefield 89-93). In particular, the Examiner maps Stonefield’s teaching of a Transfer Media Request command to the recited “conversation object.” Final Act. 3 (citing Stonefield 178). The Examiner finds Stonefield teaches the recited “listen request” by its description that “[t]he application when installed, but not initialized, will be configured to listen for ‘Transfer Media Request’ commands.” Ans. 16 (quoting Stonefield 193). Appellants argue that absent from paragraph 93 of Stonefield is any mention of updating, and that Stonefield’s application that listens for a media-based call alert communication does not teach receiving a listen request message for notification of updates to the conversation object. Br. 10. We agree. Claim 1 requires the listen request be for notification of updates to the conversation object, which is recited earlier in the claim to be 2 We do not reach the additional contentions presented by Appellants because the identified issue is dispositive of the appeal. 3 Appeal 2016-004848 Application 13/213,531 uniquely associated with the first and second user and is mapped to a specific Transfer Media Request command associated with specific called/calling devices. See Final Act. 3; see also Stonefield 1 78 (describing processing a specific Transfer Media Request command to identify if the called device can receive the media file from the calling device). Paragraph 93 of Stonefield describes the installed, but not initialized, application listens for “Transfer Media Request” commands, but does not describe a listen request for notification of updates to a specific Transfer Media Request command (the conversation object). For the foregoing reasons, Appellants persuade us the Examiner has not established the combination of Stonefield and Katis teaches or suggests the “receive listen request” limitation recited in independent claim 1. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of: (i) independent claim 1; (ii) independent claim 15, which recites a limitation commensurate in scope to the “listen request” limitation, and is rejected on the same basis; and (iii) their respective dependent claims 2, 3, 5—8, 12, 14, and 16—20. The Examiner does not show the additional reference of record (Bennett) overcomes the deficiency of Stonefield and Katis. Accordingly, we also do not sustain the 35 U.S.C. § 103(a) rejection of claims 9-11 and 13, which depend from claim 1. DECISION We reverse the Examiner’s decision to reject claims 1—3 and 5—20. REVERSED 4