Ex Parte Lindgren et al

Patent Trial and Appeal BoardMay 27, 2016

13147230 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/147,230 08/01/2011 27045 7590 ERICSSON INC 6300 LEGACY DRIVE MIS EVR 1-C-11 PLANO, TX 75024 06/01/2016 FIRST NAMED INVENTOR Anders Lindgren 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. P27466-US1 1390 EXAMINER KHAN, AFTAB N ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): kara.coffman@ericsson.com kathryn.lopez@ericsson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS LINDGREN, CHRISTER BOBERG, MIKAEL KLEIN, and SOFIE LASSBORN 1 Appeal2014-006312 Application 13/147,230 Technology Center 2400 Before ST. JOHN COURTENAY, III, TERRENCE W. McMILLIN, and MONICA S. ULLAGADDI, Administrative Patent Judges. McMILLIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision2 on appeal under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1-25. Final Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is Telefonaktiebolaget LM Ericsson. App. Br. 1. 2 Our decision refers to the Final Office Action mailed August 6, 2013 ("Final Act."); Appellant's Appeal Brief filed January 6, 2014 ("App. Br."); the Examiner's Answer mailed March 4, 2014 ("Ans."); Appellant's Reply Brief filed May 2, 2014 ("Reply Br."); and the Specification filed August 1, 2011 ("Spec."). Appeal2014-006312 Application 13/147,230 THE CLAHvIED TI'-JVENTION According to Appellants' Specification, "[t]he present invention relates to a method that enables a Watcher to access presence information form a Presence Server via an XDM client." Spec. 1. Claims 1 and 2 are directed to methods; claim 13 is directed to a presence server; and claim 23 is directed to an arrangement. App. Br. 11, 13-15. Claim 1 recites: A method in a Watcher Client of obtaining presence information from a Presence Server said method comprising the steps of: generating a request for presence information, said request comprising an XCAP user identity, transmitting said request to the presence server via an XDM Client of the Watcher Client, and receiving in response to said request a document in the form of a defined XCAP application usage from the presence server. App. Br. 11. REJECTIONS ON APPEAL Claims 13-25 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. Final Act. 4. Claim 1 stands rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Tian et al. (US 2008/0010301 Al, published Jan. 10, 2008) and Oh et al. (US 2010/0095199 Al, published Apr. 15, 2010 ("Oh"). Final Act. 5. Claims 2-12 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Oh and Oh et al. (US 2008/0281931 Al, published Nov. 13, 2008 ("Ohl"). Final Act. 6. 2 Appeal2014-006312 Application 13/147,230 Claims 13-18 and 22 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Tian and Ohl. Final Act. 9. Claims 23-25 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Oh and Ohl. Final Act. 12. Claim 8 stands rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Oh, Ohl, and Bao et al. (US 2008/0147751 Al, published June 19, 2008 ("Bao"). Final Act. 13. Claim 19 stands rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Tian, Ohl and Bao. Final Act. 15. Claims 20 and 21 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Tian, Oh and Oh 1. Final Act. 16. ISSUES Under the heading "Grounds of Rejection to be Reviewed on Appeal," Appellants present the following issues: Issue 1 The first issue presented for this appeal is whether the rejection of claim 1 under 35 U.S.C. Â§ 103 as being unpatentable over Tian et al. (US 2008/001301) in view of Oh et al. (US 2010/0095199) is proper. Issue 2 The second issue presented for this appeal is whether the rejection of claims 2, 13, and 23 under 35 U.S.C. Â§ 103 as being unpatentable over Ohl et al. (US 2008/0281931) in view of Oh (claims 2 and 23) or over Tian in view of Ohl (claim 13) is proper. App. Br. 6. 3 Appeal2014-006312 Application 13/147,230 Indefiniteness Rejection ANALYSIS Claims 13-25 are rejected under 35 U.S.C. Â§ 112, second paragraph. Final Act. 4. Appellants fail to argue this rejection in the Appeal Brief. App. Br. 6-9. Appellants address this rejection in the Reply Brief. Reply Br. 2. This argument is untimely. 37 C.F.R. Â§ 41.41(b)(2)("Any argument raised in the reply brief which was not raised in the appeal brief ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown.") Appellants fail to show (or even argue) good cause exists for not raising this argument in the Appeal Brief. Accordingly, we do not consider this argument. In addition, even in the Reply Brief, Appellants do not address the merit of this rejection. Reply Br. 2. Instead, Appellants argue the Examiner made a procedural error by failing to enter amendments after the Final Office Action. Id. The refusal of an Examiner to enter an amendment is reviewable by petition under 37 C.F.R. Â§ 1.181 and not by appeal to the Board. In re Mindick, 371F.2d892, 894 (CCPA 1967). Therefore, we affirm the rejection of claims 13-25 under 35 U.S.C. Â§ 112, second paragraph. Obviousness Rejections Claim 1 Appellants argue the cited combination of references (Tian and Oh) fails to teach or suggest, "transmitting said request to the presence server via an XDM Client of the Watcher Client," as recited in claim 1. App. Br. 7-8; Reply Br. 2-3. Specifically, Appellants argue, "modification of Tian's 4 Appeal2014-006312 Application 13/147,230 XivIL document management system to include an XDivI client would not read on the claimed invention in which a Watcher Client includes an XDM client." App. Br. 7. In response, the Examiner states: Tian teaches a system for notifying presence information (see Fig. 1, where presentity client (user A) is connected to watcher client (user B that is watching or receiving the information on user A-presentity) via two servers. First the server is Presence XDMS server (i.e. XML Document Management Server) and second is Presence Server that applies rules to received requests and content associated with both the client and the watcher. Therefore, the servers function as intermediate between the two entities and work in conjunction with each other and serving either documents (content or presence information) for these entities. It is also helpful to consider that both of these entities could also alternatively be application servers running various applications that are executing on the same device either presentity or watcher clients. Thus, one can modify the watcher client which is also an XDM client because it is capable of receiving documents sent from the document management server (Presence XDMS) to a single device that is also functioning as application server that nms XDM client application. At least for these reasons Tian teaches the limitation and the claim is unpatentable. Moreover, the examiner specifically relies on the secondary relevant art Oh (US "5199"). Oh specifically teaches XDM client server item 110 shown in Fig 1 that supports this broadly stated limitation and can be easily imported in the Tian reference. In this interpretation, Tian defines a watcher as any uniquely identifiable entity that requests presence information about presentity from the presence service offered by a server (Tian: [003]). Therefore, Tian alone teaches the presence server receives the request from client/watcher application server. This only missing element is that the communication is not from the XDM client, so examiner relies on the secondary reference Oh that clearly teaches XDM client in figures (1-3) that can be imported in order to arrive at present invention. The XDM client of Oh reference can be included in the system as 5 Appeal2014-006312 Application 13/147,230 wno1e to aaa another client to me system. By doing so, the combination would function to meet the limitation in question. Ans. 20-21. In reply, Appellants fail to contest these findings and do not present any argument that the cited combination of references fails to teach or suggest any limitation of claim 1 including the limitation disputed in the Appeal Brief. Reply Br. 2. The cited references support the findings of the Examiner and we agree with the Examiner that the prior art teaches or suggests all the limitations of claim 1. In the Reply Brief, Appellants attack the Examiner's reason for combining the cited teachings of the references and the conclusion that the claimed invention would have been obvious. Reply Br. 2-3. The Examiner states it would have been obvious "to modify Tian's XML document management system to include a client that is running an XMD client application to improve the user experience by enabling customers to reuse information such as group lists, profiles and preferences across application[ s ]." Ans. 21-22. In accordance with KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), we find the Examiner has provided an "articulated reasoning with rational underpinning to support the legal conclusion of obviousness." We are not persuaded of error and sustain the rejection of claim 1. Claims 2, 13, and 23 Appellants argue the cited art fails to teach or suggest, "receiving a request for presence information from an XDM client of the Watcher Client," as recited in claim 2. App. Br. 8-9; Reply Br. 4. Claims 13 and 23 contain similar limitations. App. Br. 13-15. In the Final Office Action, the 6 Appeal2014-006312 Application 13/147,230 Examiner cites Figure 2 of Ohl. Final Act. 6. Figure 2 of Ohl clearly depicts IMPS [Instant Message Presence Service] Server receiving a request from an XDM client 10 and supports the Examiner's finding. In contrast, Appellants' argument in support of claims 2, 13, and 23 consists of conclusory statements and is not persuasive of Examiner error. We sustain the obviousness rejections of independent claims 2, 13, and 23. Claims 3-12, 14-22, 24, and 25 Appellants do not present any separate arguments for patentability of any of the dependent claims. Therefore, we sustain the rejections of the dependent claims 3-12, 14--22, 24, and 25 for the reasons stated above with regard to the independent claim from which these claims depend. DECISION The rejections of claims 1-25 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7