Ex Parte Zhu et al

Patent Trial and Appeal Board

May 19, 2014

11376369 (P.T.A.B. May. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONGMING ZHU and YAJUAN WU

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Appeal 2011-006762
Application 11/376,369
Technology Center 2400
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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.
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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.”).
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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.

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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,
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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.
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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
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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.

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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.
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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.

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