Ex Parte Witzel et alDownload PDFPatent Trial and Appeal BoardOct 27, 201612090993 (P.T.A.B. Oct. 27, 2016) Copy Citation 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; 2 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. 3 Appeal2015-004960 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 4 Appeal2015-004960 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 5 Appeal2015-004960 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 6 Copy with citationCopy as parenthetical citation