Ex Parte Witzel et al

Patent Trial and Appeal Board

Oct 27, 2016

12090993 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/090,993 04/21/2008
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
10/31/2016
FIRST NAMED INVENTOR
Andreas Witzel
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.
P21184-US1 8408
EXAMINER
REDDIV ALAM, SRINIV ASAR
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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 ANDREAS WITZEL and RALF KELLER
Appeal2015-004960 1
Application 12/090,993
Technology Center 2400
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1 and 3-17, which constitute all of the
claims pending in this appeal. App. Br. 1. Claim 2 has been canceled.
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as Telefonaktiebolaget LM
Ericsson. App. Br. 1.
Appeal2015-004960
Application 12/090,993
Appellants ; Invention
Appellants' invention is directed to an access gateway node for
providing IP multimedia switched system (IMS) services with session
initialization protocol (SIP) to a user's terminal operating in a circuit
switched controlled (CSC) domain to thereby register the user's terminal in
the IMS. Spec. 4:25-27. In particular, upon detecting that the user has
ended a current subscription in the CSC domain in favor of a subscription
with an IMS, the access gateway node (10) utilizes a circuit switched
function ( 101) to retrieve from a home location register (HLR 121) the
user's IMS parameter indicating that the subscription of the circuit switched
user's terminal has been transferred to the IMS (11). Id. at 15:6-12, Fig. 1.
Subsequently, a user agent (102) in the access gateway node (10) utilizes the
retrieved IMS parameter to register the user's terminal to the IMS (11)
without further signaling the user's terminal. Id. at 15:24--16:26.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. An Access Gateway Node (MAGCF) for providing
access to an IP multimedia system for a circuit-switched
controlled user's terminal located in a circuit-switched
controlled domain, wherein said node comprises:
a circuit-switched function configured to provide
exchange signaling for a circuit-switched controlled user's
terminal, wherein said circuit-switched function is configured
to interact with a home register located in a home circuit-
switched controlled domain to obtain from the home register, a
user's IP multimedia system parameter, the user's IP
multimedia system parameter being an indication that a
subscription of the circuit-switched controlled user's terminal
has been ported to the IP multimedia system;
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Appeal2015-004960
Application 12/090,993
a user agent configured to utilize the user's IP
multimedia system parameter to register the circuit-switched
controlled user's terminal to the IP multimedia system on
behalf of the circuit-switched controlled user's terminal,
wherein the user agent registers the circuit-switched controlled
user's terminal to the IP multimedia system without further
signaling with the circuit-switched controlled user's terminal;
and
an exchange interface configured to exchange signaling
between the user agent and the circuit-switched function.
Rejections on Appeal
Claims 1, 3---6, 8-10, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kauhanen (US
7,330,542 B2, Feb. 12, 2008) and Garcia-Martin (US 7,894,593 B2, Feb. 22,
2011).
Claims 7, 13, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kauhanen, Garcia-Martin, and
Sladek (US 6,622,016 Bl, Sept. 16, 2003).
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kauhanen, Garcia-Martin, and
Valentine (US 6,219,546 Bl, Apr. 17, 2001).
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 6-10, and the Reply Brief, pages 2--4. 2
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 20, 2014), the Reply Brief (filed
March 30, 2015), and the Answer (mailed March 5, 2015) for their
respective details.
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Application 12/090,993
Appellants argue that the combination of Kauhanen and
Garcia-Martin does not teach or suggest obtaining from a home location
register (HLR) an IMS parameter indicating that a subscription of a circuit-
switched controlled user terminal has been ported to the IMS, as recited in
independent claim 1. App. Br. 6; Reply Br. 2. In particular, Appellants
argue Kauhanen's disclosure of obtaining from an HLR a subscriber
multimedia profile is directed to capability information of the subscriber's
device, as opposed to subscriber information in the IMS. App. Br. 7-8
(citing Kauhanen 6: 19-31, 9:20-33). Further, Appellants submit because
the Examiner's interpretation of "ported" to mean "interfaced" is not
consistent with the definition provided in Appellants' Specification, the
Examiner's claim interpretation is in error. App. Br. 6-7; Reply Br. 2-3
(citing Spec. 15:6-12). These arguments are persuasive.
We begin our analysis by first considering the scope and meaning of
the claim limitations "interface" and "located," which must be given the
broadest reasonable interpretation consistent with Appellants' disclosure, as
explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zietz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted
as broadly as their terms reasonably allow"). Our reviewing court further
states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary
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Application 12/090,993
artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en bane).
In particular, Appellants' Specification states the following:
The user is ported to [the] IP multimedia system, if the user has
made an active decision to end a current circuit-switched
contract with the corresponding service and has signed a new
contract for using IP multimedia Services. Another option
might be that the operator decides to port all of the subscribers
to the IP multimedia Services providing still some subset of the
old circuit-switched services.
Spec. 15:6-12.
Consistent with the cited portion of Appellants' Specification, we
broadly but reasonably construe the disputed claim limitations set forth
above as requiring the circuit-switched function to obtain from the HLR an
IMS parameter indicating that the user's terminal has already been
subscribed to the to the IMS. As persuasively argued by Appellants,
Kauhanen's disclosure of a circuit-s\~1itched fi1nction obtaining subscriber
profile information from the HLR is directed to information pertaining to the
capabilities of the user's terminal, as opposed to its subscription to the IMS.
Further, even under the Examiner's own interpretation of Kauhanen's
subscriber multimedia profile as subscriber information, we find no basis
that such retrieved subscriber information pertains to the IMS. Ans. 17. As
correctly argued by Appellants, in Kauhanen, the retrieved subscriber
information is utilized by the message conversion function to convert the
circuit-switched capabilities of the user's terminal to a suitable form for
communication in the IMS domain. App. Br. 8. In contrast, the retrieved
subscription information in the claimed invention pertains to a parameter
indicating that the user's device has already been subscribed in the IMS
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Application 12/090,993
domain such that it can be subsequently registered. App. Br. 8-9. Because
the Examiner's reliance upon Garcia-Martin's disclosure of registration does
not cure the noted deficiencies in Kauhanen, we agree with Appellants that
the proposed combination of references does not teach the disputed
limitations. App. Br. 8.
Because Appellants have shown at least one reversible error in the
Examiner's rejections, we need not reach Appellants' remaining arguments.
Consequently, we reverse the Examiner's rejection of claim 1, as well as
claims 3-17, which recite the disputed limitations discussed above.
DECISION
We reverse the Examiner's obviousness rejections under 35 U.S.C.
§ 103(a) of claims 1 and 3-17 as set forth above.
REVERSED
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