Ex Parte Zhu et alDownload PDFPatent Trial and Appeal BoardMay 19, 201411376369 (P.T.A.B. May. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONGMING ZHU and YAJUAN WU ____________ Appeal 2011-006762 Application 11/376,369 Technology Center 2400 ____________ Before ELENI MANTIS MERCADER, JASON V. MORGAN, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of Claims 1-13 and 33-632 as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.3 1 The Real Party in Interest is Hua Wei Technologies Co., Ltd. 2 Final Rej. 2. 3 Our decision refers to Appellants’ Appeal Brief filed July 29, 2010 (“App. Appeal 2011-006762 Application 11/376,369 2 STATEMENT OF THE CASE The claims relate to a method of implementing user equipment (UE) capability exchange and a method of route control for parallel internet protocol (IP) multimedia subsystem (IMS) and circuit switched (CS) services in communication system, so as to distinguish among multiple UEs sharing a same IP multimedia user identity (IMPU) during capability exchange and route control. See Abstract. Claims 1, 33, 39, and 59 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below: 1. A method of using equipment identity (ID) in an IP Multimedia Subsystem (IMS) network, comprising: receiving an equipment ID, service ID and capability information of a first User Equipment (UE), sent from the first UE, by a second UE; and storing, by the second UE, service ID, capability information and equipment ID of the first UE, as well as a correlation among the service ID, the capability information, and the equipment ID of the first UE, wherein the equipment ID uniquely identifies a UE among multiple UEs sharing a same IP multimedia public user identity (IMPU) in the network. Br.”); Reply Brief filed February 10, 2011 (“Reply Br.”); Examiner’s Answer mailed December 10, 2010 (“Ans.”); Final Office Action mailed December 22, 2009 (“Final Rej.”); and the original Specification filed March 15, 2006 (“Spec.”). Appeal 2011-006762 Application 11/376,369 3 References and Rejections The Examiner relies upon the prior art as follows: Kock US 2004/0185885 A1 Sep. 23, 2004 Bajko US 2004/0196796 A1 Oct. 7, 2004 Global System for Mobile Communications, 3rd Generation Partnership Project; Technical Specification Group Services And System Aspects; Report On Alternative Architectures For Combining CS Bearers With IMS; 3GPP TR 23.899 V1.0.0, Release 6 (December 2004)(http://www.3gpp. org) (hereinafter “3GPP”). The claims stand rejected as follows:4 1. Claims 1-4, 6-11, 13, 39-42, 44-49, 51 and 54-58 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kock and Bajko. Ans. 3-11.5 2. Claims 33-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kock and 3GPP. Ans. 12-14. 3. Claims 5, 12, 43, 50, 52, and 53 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kock, Bajko, and 3GPP. Ans. 14-15. 4. Claims 59-63 stand rejected under 35 U.S.C. § 102(a) as anticipated by Kock. Ans. 15-17. 4 Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. § 41.37(c) (1) (vii). 5 The Examiner’s statement of the rejection lists only Claims 1-4, 6-11, and 13. Ans. 3. However, the Examiner’s narrative additionally refers to Claims 39-42, 44-49, 51, and 54-58. Ans. 7-12. Appellants fail to list Claims 48 and 49 under the section marked “Grounds of Rejection to be reviewed on Appeal.” App. Br. 8. We view this as harmless error. We consider Claims 48 and 49 to be grouped together with the claims from which they depend, respectively from Claims 44 and 46. Appeal 2011-006762 Application 11/376,369 4 APPELLANTS’ CONTENTIONS 1. Kock (Claims 1-4, 6-11, and 13) fails to teach or suggest “receiving an equipment ID, service ID, and capability information of a first User Equipment (UE), sent from the first UE, by a second UE” is not cured by Bajko. App. Br. 8. 2. Kock (Claims 39-42, 44-49, 51, and 54-58) fails to teach or suggest “matching, by the second UE, an equipment ID and a service ID contained in a subsequently received service request or response to service request with the locally stored equipment ID and the service ID,” is not cured by Bajko. App. Br. 13. 3. Kock (Claims 39-42, 44-49, 51, and 54-58) fails to teach or suggest “initiating, by the second UE, a capability information exchange with a UE which sends the subsequently received service request or response to service request, if the equipment ID and service ID contained in the subsequently received service request or response to service request does not match the locally stored equipment ID and the service ID,” is not cured by Bajko. App. Br. 13. 4. Kock (Claims 33-38) fails to teach or suggest a first UE sending a service request containing an equipment ID of a second UE, is not cured by 3GPP. App. Br. 13. 5. Kock (Claims 33-38) fails to teach or suggest a “service control function entity in network utilizing the equipment ID of the second UE contained in the service request to look up an established correlation among equipment ID, service ID, and UE address of UEs, Appeal 2011-006762 Application 11/376,369 5 and obtaining the contact address of the second UE,” is not cured by 3GPP. App. Br. 14. ISSUES ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-21) and Reply Brief (Reply Br. 2-4), the issues presented on appeal are: 1) whether the Examiner erred in finding the asserted combinations of references teach or suggest the disputed claim limitations including transmitting an initial message and, in response, listening for any instruction from a reader; and 2) whether the Examiner erred in relying on the asserted combinations of Kock, Bajko, and 3GPP. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusions. INDEPENDENT CLAIMS 1, 33, 39, AND 59 Equipment ID Appellants contend that the cited art fails to teach or suggest an equipment ID “wherein the equipment ID uniquely identifies a UE among multiple UEs sharing a same IP multimedia public user identity (IMPU) in the network,” as recited in independent Claim 1. Independent Claims 33, 39, and 59 also recite an “equipment ID.” App. Br. 9, 11, 13, 15, and 16; Reply Br. 3-5. Appeal 2011-006762 Application 11/376,369 6 The Examiner finds that Kock discloses sending information which includes equipment ID, service ID, and capability information of a first device to a second device. The Examiner finds that the “equipment ID of a user is a telephone number that is associated with the particular device.” Ans. 18 (citing Kock, ¶ 0025). The Examiner finds that Kock fails to teach “wherein the equipment ID uniquely identifies a UE among multiple UEs sharing a same IP multimedia public user identity (IMPU) in the network.” However, the Examiner finds that Bajko supplies this missing teaching. Ans. 3-4. Appellants contend that Kock discloses that the stored descriptions of capabilities are linked to a list of user identifications (IDs), e.g. telephone numbers, but that these identifiers are not linked to specific user equipment devices, as claimed. App. Br. 8. Appellants contend that Bajko fails to cure Kock’s deficiency. Appellants argue that Bajko’s home subscriber server (HSS) is able to recognize that different private identities (IMPI) having common public identities (IMPU) may belong to a single subscriber. Thus, a subscription may have more than one user and Bajko merely discloses that multiple private identities (IMPI) may share a single public identity (IMPU). Bajko discloses a private identity (IMPI) may be seen as logically equaling an identity entity such as SIM card. App. Br. 10. Appellants contend their Specification differentiates prior art IMPI and IMPU from the claimed equipment identity which is disclosed as an identity that can effectively identify a particular UE and thus is distinct from public user identities (IMPU) or private user identities (IMPI). App. Br. 11. Examiner “interprets an equipment ID to be a telephone number. A telephone number is a unique identification for a user which is only assigned Appeal 2011-006762 Application 11/376,369 7 to one SIM card.” Ans. 19. Appellants disclose that “the equipment ID uniquely identifies a [user equipment] UE in the network and can be used to distinguish multiple UEs sharing a same IP multimedia public user identity (IMPU).” Spec. ¶ 15. Moreover, Appellants define the equipment ID such that it: may be International Mobile Equipment Identity (IMEI), Media Access Control (MAC) address, or Mobile Equipment Identity(MEID); or the equipment ID corresponds to the combination of IMEI, MAC or MEID and their corresponding network type; or the equipment ID corresponds to combination of service ID and corresponding serial number or feature tag of UE; wherein, said serial number or feature tag can effectively distinguish multiple UEs sharing a same IMPU. Spec. ¶ 25. The Examiner finds that Kock and Bajko disclose a telephone number as an equipment ID. We agree with Appellants that a telephone number is not an equipment ID as defined in the Specification. Therefore, we decline to sustain the rejection of independent Claims 1, 33, 39, and 59. With respect to the dependent claims, Appellants re-allege their contention that the combination of Kock and Bajko fails to disclose the claimed equipment ID. App. Br. 11, 13, 15, and 16. Because, as discussed above, we agree with these arguments, which are dispositive of the rejection, we do not reach Appellants’ further contentions. DECISION The rejections of Claims 1-13 and 33-63 under 35 U.S.C. §§ 102 and 103 are REVERSED. Appeal 2011-006762 Application 11/376,369 8 REVERSED DISSENTING MANTIS MERCADER Administrative Patent Judge I respectfully dissent the reversal of claims 1-4, 6-11, and 13 under 35 U.S.C. § 103 on the grounds identified by the Majority. The Majority relies on Appellants’ Specification for defining the equipment ID such that it may be an International Mobile Equipment Identity (IMEI) (Spec. ¶ 25). The Examiner interpreted the equipment ID to be a telephone number constituting a unique identification assigned to a respective Subscriber Identity Module (SIM) card which in turn identifies the phone (UE) using the SIM card (Ans. 19). A SIM card is defined in pertinent part as containing “a unique subscriber ID (see IMSI)” and wherein IMSI is defined as an “International Mobile Subscriber Identity” (Your Dictionary on line, http://www.yourdictionary.com/imsi#computer (last visited May 18, 2014)). Thus, consistent to Appellants’ Specification describing the equipment ID as an International Mobile Equipment Identity, a SIM card within a UE inherently identifies its respective UE by its International Mobile Subscriber Identity. Furthermore, Bajko teaches that two different SIM subscribers can form a relationship on one common multimedia public user identity (IMPU) (¶¶ [0039], [0041]), thereby meeting the limitation of “wherein the equipment ID uniquely identifies a UE among multiple UEs sharing a same IP multimedia public user identity (IMPU) in the network” as recited in claim 1. Appeal 2011-006762 Application 11/376,369 9 Accordingly, I would have at least affirmed the Examiner’s rejection of claim 1 and for the same reasons the rejections of claims 2-4, 6-11, and 13. tj Copy with citationCopy as parenthetical citation