Subrahmanyam S. Musti et al.

Patent Trials and Appeals Board

Sep 26, 2019

12272204 - (D) (P.T.A.B. Sep. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/272,204 11/17/2008 Subrahmanyam S. Musti END920080189US1 5851
46583 7590 09/26/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUBRAHMANYAM S. MUSTI, SRI RAMANATHAN,
MATTHEW A. TERRY and MATTHEW B. TREVATHAN
____________

Appeal 2018-006772
Application 12/272,204
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4, 5, 7–10, 12–17, and 20–28, which constitute
all of the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines. Appeal Br. 2.
Appeal 2018-006772
Application 12/272,204

2
STATEMENT OF THE CASE
Appellant’s invention is directed to “a system, topologies and method
of leveraging session initiation protocol (SIP) to integrate RFID tag
information into presence documents.” Spec. ¶ 1. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method for tracking a location of people or
items having Radio-Frequency Identification (RFID) tags,
implemented in a computing environment, comprising:
receiving RFID signals, including radio-frequency
identification (RFID) information pertaining to the people or
items having the RFID tags, from a RFID gateway coupled to
receive the RFID signals from RFID scanners configured to
scan the RFID tags, wherein the RFID information includes a
tag identification and “to”, “subject”, and “payload”
information that are embedded in the RFID;
looking up profile information associated with the RFID
information, in a storage system, based on the tag identification,
wherein the profile information includes content and/or
information regarding an event pertaining to the people or items
having the RFID tags;
determining, by the processor, how to process the content
and/or the event associated with the RFID information based on
the profile information associated with the RFID information;
converting, by the processor, the RFID information and
the profile information into a Session Initiation Protocol (SIP)
message comprising the RFID information and the profile
information after determining how to process the content and/or
event associated with the RFID information;
publishing the SIP message to a presence server;
receiving one or more subscriber profile updates of one
or more subscribers which are subscribed to receive the SIP
message from the presence server, from the storage system;
obtaining location information pertaining to the people or
items having the RFID tags from a location platform and
Appeal 2018-006772
Application 12/272,204

3
placing the location information into a presence document with
the RFID information to create a rich content presence
document; and
sending the SIP message, with the rich content presence
document, by the presence server to watchers that are
subscribed to receive the SIP message.

REJECTIONS
Claims 1, 4, 5, 7–10, 12–17, and 20–28 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 6.
Claims 1, 15, and 24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written-description requirement.
Final Act. 8.
Claims 1, 4, 7–9, 12, 13, 15, 16, 20, 22–24, and 26–28 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Trossen (US
2003/0048195 A1, published Mar. 13, 2003), Poikselka et al. (US
2005/0065801 A1, published Mar. 24, 2005) (“Poikselka”), and Kim et al.
(US 7,843,857 B2, issued November 30, 2010) (“Kim”). Final Act. 9, 15.2
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trossen, Poikselka, Kim, and Quon et al. (US
2007/0293212 A1, published Dec. 20, 2007) (“Quon”). Final Act. 14.3

2 The Examiner’s statement of rejection includes non-pending claims 6 and
29–31. Final Act. 9. The statement of rejection does not include claim 22,
but the rejection for claim 22 is in the body of the rejection. Final Act. 15.
We treat this as a harmless typographical error.
3 The Examiner’s statement of rejection does not include Kim, but should
because claim 5 depends on claim 1, which is rejected over Trossen,
Poikselka, and Kim. We treat this as a harmless typographical error.
Appeal 2018-006772
Application 12/272,204

4
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trossen, Poikselka, Kim, and Yamamoto (US
2010/0057571 A1, published Mar. 4, 2010). Final Act. 18.4
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trossen, Poikselka, Kim, and Haakana (US 7,822,659 B2,
issued Oct. 26, 2010). Final Act. 19.5
Claims 10, 17, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trossen, Poikselka, Kim, and RFC 3261-SIP, 2002.
Final Act. 19.6

ANALYSIS
35 U.S.C. § 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract

4 The Examiner’s statement of rejection does not include Kim, but should
because claim 14 depends on claim 1, which is rejected over Trossen,
Poikselka, and Kim. We treat this as a harmless typographical error.
5 The Examiner’s statement of rejection does not include Kim, but should
because claim 21 depends on claim 15, which is rejected over Trossen,
Poikselka, and Kim. We treat this as a harmless typographical error.
6 The Examiner’s statement of rejection does not include Kim, but should
because claims 10, 17, and 25 depend on claims 1, 15, and 24, respectively,
which are rejected over Trossen, Poikselka, and Kim. We treat this as a
harmless typographical error.
Appeal 2018-006772
Application 12/272,204

5
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
Appeal 2018-006772
Application 12/272,204

6
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and

(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. rev.
08.2017 Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52–57.
Applying the guidance set forth in the Memorandum, we determine
the Examiner erred in concluding that the claims do not recite patent-eligible
subject matter. Even assuming the claims recite a judicial exception under
Step 2A, Prong 1 of the Memorandum, we conclude the claims recite
Appeal 2018-006772
Application 12/272,204

7
additional elements that integrate the judicial exception into a practical
application under Step 2A, Prong 2 of the Memorandum.
In determining whether the claims are “directed to” the identified
abstract idea—here, the claims recite looking up profile information that is
associated with RFID information and determining how to process content
or event data based on the looked up profile information (comparing
collected information against stored information, and using rules to identify
options), and receiving subscriber profile updates and obtaining location
information (collecting information), which are mental process steps that can
be practically performed by a human, either mentally or with the aid of
paper and pencil—we consider whether the claims recite additional elements
that integrate the judicial exception into a practical application.7 See
Memorandum, 84 Fed. Reg. at 54–55.
Appellant argues that the claimed invention “improves the technical
field of tracking the location of people or items by improving the ease and
accuracy of tracking the location of people or items.” Appeal Br. 12; see
Appeal Br. 9; Reply Br. 6–7. Appellant further argues that the claims are
“based in computer and radio frequency technology.” Appeal Br. 9–10.
Specifically, Appellant argues that the claimed conversion of the RFID
information and the profile information into a Session Initiation Protocol

7 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 nn.25 & 27–32.

Appeal 2018-006772
Application 12/272,204

8
(SIP) message “requires computer technology, and could not be performed
‘by hand’ or mentally.” Appeal Br. 9.
We are persuaded by Appellant’s arguments. The claims address the
problem of integrating “existing systems . . . in order to fully capitalize on
existing technologies,” such as “wireless technologies includ[ing] cellular
telephones, the Internet, wireless Internet access (WiFi), [and] GPS and
RFID technologies.” Spec. ¶¶ 2, 3. The claimed invention endeavors to
“increase the ability and efficiency to transfer content, track inventories,
provide content to user, etc.” Spec. ¶ 6. Independent claims 1, 15, and 24
recite a particular solution to this problem in a specific way to achieve the
desired outcome (e.g., using RFID tags to identify RFID information for
people and items, converting RFID information and profile information into
a SIP message after determining how to process content and/or an event
associated with the RFID information, publishing the SIP message to a
presence server, building a rich content presence document with location
information and RFID information to send with the SIP message), rather
than merely claiming the result (e.g., sending an SIP message with a rich
content presence document to subscribed watchers).
In our view, the combination of limitations in the claims, when
viewed as a whole, integrates the abstract idea into a practical application
under the guidelines in the Memorandum, specifically in that it reflects a
technology improvement to integrate existing technologies in order to
increase the synergistic effects of different technologies. See claim 1;
Memorandum, 84 Fed. Reg. at 55; see also Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (“the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
Appeal 2018-006772
Application 12/272,204

9
whether ‘their character as a whole is directed to excluded subject matter.’”);
Spec. Title (“System and Method of Leveraging SIP to Integrate RFID Tag
Information into Presence Documents”), ¶ 6 (“there is a need to increase the
synergistic effects of different technologies” in order “to increase the ability
and efficiency to transfer content, track inventories, provide content to user,
etc.”), ¶ 2 (“much integration with existing systems still is needed in order to
fully capitalize on existing technologies”), ¶ 18 (“RFID originated events
(e.g., RFID tag information) are converted into SIP messages for
incorporation into an IP Multimedia Subsystem infrastructure,” which
“allows third parties, e.g., ‘watchers,’ to track the location of items, people,
events, etc. using the existing presence infrastructure of the
telecommunications ‘network’ in order to receive richer presence
information”); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) (holding the claims satisfy Alice step two
because “the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks”).
We, therefore, agree the Examiner erred. Accordingly, we do not
sustain the Examiner’s § 101 rejection of independent claims 1, 15, and 24,
and for the same reasons, dependent claims 4, 5, 7–10, 12–14, 16, 17, 20–23,
and 25–28.

35 U.S.C. § 112, First Paragraph, Rejection
The Examiner finds that the claim language “determining . . . how to
process the content and/or the event associated with the RFID information
based on the profile information associated with the RFID information” and
Appeal 2018-006772
Application 12/272,204

10
“obtaining location information pertaining to the people or items having the
RFID tags from a location platform and placing the location information into
a presence document with the RFID information to create a rich content
presence document” fails to comply with the written-description
requirement. See Final Act. 8; Ans. 9. Specifically, the Examiner finds that
“[n]either the specification nor the drawings disclose in detail the specific
steps or algorithm needed to perform” the claimed steps. Id.
Appellant argues that the Specification supports “people or items with
RFID tags” and “determining how to process the content and/or the event
associated with the RFID information based on the profile information.”
Appeal Br. 31 (citing Spec. ¶¶ 18, 20, 55, 58, Fig. 5); see Appeal Br. 32
(citing Spec. ¶ 58, Fig. 5). Appellant also argues that the Specification
supports presence information to provide richer presence information to a
watcher, and SIP notifications including rich presence documents. Reply Br.
14 (citing Spec. ¶¶ 36, 47).
We are persuaded by Appellant’s arguments. To satisfy the written-
description requirement, a patent specification must describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention. See,
e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306, 1319 (Fed. Cir.
2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
“[T]he test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art,”
where “the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Appeal 2018-006772
Application 12/272,204

11
Cir. 2010) (en banc). The exact level of detail required depends upon “the
nature and scope of the claims and on the complexity and predictability of
the relevant technology.” Id. Factors for “evaluating the adequacy of the
disclosure” may include “‘the existing knowledge in the particular field, the
extent and content of the prior art, the maturity of the science or technology,
[and] the predictability of the aspect at issue.’” Id. (quoting Capon v.
Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)).
In describing Figure 5, the Specification states “the RFID SIP
gateway receives the RFID information and . . . checks a profile in the HSS
[Home Subscriber Server],” and the “profile lookup may be used to
determine how to process the event.” Spec. ¶ 58. The Specification also
explains the “presence server . . . can obtain information from a common
user profile 80 such as an HSS” that “contains subscription-related
information (user profiles), performs authentication and authorization of the
user, and can provide information about the user’s physical location” and
“can also obtain location based information of the user from a location
platform (LBS).” Spec. ¶ 47. Once all of the pertinent information is
received, a SIP notification can be provided, which “can include rich
presence documents, which may include the RFID information in addition to
location information of the event or item associated with the RFID.” Spec.
¶ 47.
We find the Specification’s description of checking a profile “to
determine how to process the event,” and “obtaining location information”
and “placing the location information into a presence document” sufficiently
shows Appellant had possession of the disputed limitations.
Appeal 2018-006772
Application 12/272,204

12
Accordingly, we reverse the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 1, 15, and 24.

35 U.S.C. § 103(a) Rejections
Dispositive Issue: Did the Examiner err in finding that the
combination of Trossen, Poikselka, and Kim teaches or suggests “looking up
profile information associated with the RFID information, in a storage
system, based on the tag identification, wherein the profile information
includes content and/or information regarding an event pertaining to the
people or items having the RFID tags,” “receiving one or more subscriber
profile updates of one or more subscribers which are subscribed to receive
the SIP message from the presence server, from the storage system,” and
“sending the SIP message, with the rich content presence document, by the
presence server to watchers that are subscribed to receive the SIP message,”
as recited in independent claim 1, and commensurately recited in
independent claims 15 and 24?
The Examiner relies on Trossen to teach or suggest “looking up
profile information associated with the RFID information, in a storage
system, based on the tag identification, wherein the profile information
includes content and/or information regarding an event pertaining to the
people or items having the RFID tags.” Final Act. 9. The Examiner finds
Trossen’s passing status information of a user entering a region to a notify
message teaches looking up profile information associated with the RFID
information, that includes content and/or information regarding an event
Appeal 2018-006772
Application 12/272,204

13
pertaining to the people or items having the RFID tags. Final Act. 9–10
(citing Trossen ¶¶ 26, 31, 32); see Ans. 10 (citing Trossen ¶ 45).
The Examiner relies on Poikselka to teach or suggest “receiving one
or more subscriber profile updates of one or more subscribers which are
subscribed to receive the SIP message from the presence server, from the
storage system” and “sending the SIP message by the presence server to
watchers that are subscribed to receive the SIP message.” Final Act. 10.
The Examiner finds Poikselka’s updating of subscriber profile information
teaches receiving profile updates for users subscribed to receive the SIP
message from the presence server and sending the SIP message by the
presence server to the subscribed watchers. Final Act. 10–11 (citing
Poikselka ¶¶ 20–21, 26, 36, 43–47, Abstr.); see Ans. 11.
The Examiner relies on Kim to teach or suggest the “rich content
presence document.” Final Act. 11. The Examiner finds Kim’s SIP server
performing SIP registration and obtaining context information and notifying
a user of the context information through the SIP NOTIFY message teaches
the claimed creating a rich content presence document. Final Act. 11 (citing
Kim col. 6, ll. 60–67, col. 7, ll. 1–2); see Ans. 11.
The Examiner finds it would have been obvious to modify Trossen to
include Poikselka’s ability to update subscriber profile information, and
obvious to modify Trossen and Poikselka to include Kim’s ability to create a
rich content presence document, because the claimed invention is a
combination of old elements and one of ordinary skill in the art would have
recognized that the results of the combination were predictable. Final Act.
10–11.
Appeal 2018-006772
Application 12/272,204

14
Appellant argues the “combination of Trossen, Poikselka, and Kim
does not teach or suggest” the disputed claim limitations. Appeal Br. 34; see
Reply Br. 16. According to Appellant, the claim “recites a first feature of
looking up the first type of profile information associated with the RFID
information before converting the RFID information and the profile
information into an SIP message” and “a second feature of receiving
subscriber profile updates with regard to subscribers which are subscribed to
receive the SIP message from the presence server, prior to sending the SIP
message to watchers that are subscribed to receive the SIP message.”
Appeal Br. 35; see Appeal Br. 34–35 (citing Spec. ¶¶ 39, 55). Appellant
argues the two features require two separate types of profile information.
Appeal Br. 35–36. Appellant argues Trossen does not teach or suggest the
use of either type of profile information, and further argues the cited portions
of Poikselka do not teach receiving profile updates of subscribers subscribed
to receive the SIP message or determining how to process an event
associated with RFID information based on received profile updates prior to
converting the RFID information and profile information. Appeal Br. 36
(citing Poikselka ¶¶ 20–21, 26, 43–47); see Reply Br. 15.
We are persuaded by Appellant’s arguments. Claim 1 requires (1)
looking up profile information that is associated with RFID information and
that includes content and/or information regarding an event pertaining to the
people or items having the RFID tags, (2) receiving subscriber profile
updates for subscribers to receive SIP messages from the presence server,
and (3) sending the SIP message, from converting the RFID information and
profile information, with a rich content presence document, to subscribed
watchers for the SIP message.
Appeal 2018-006772
Application 12/272,204

15
The cited sections of Trossen teach “tagging sensors that report to a
central presence server, which may be a Session Initiation Protocol (SIP)
Presence Server (SPS),” as well as a subscribe message, which is sent from a
requesting entity who wants to establish a subscription with the presence
server. Trossen ¶¶ 26, 28, 31, 45. The SPS may then send information
about the status of a tag to the requesting entity. Trossen ¶ 32. The status
information may indicate a willingness and ability of a user to communicate
with others, a present state of the user, or a transition. Trossen ¶ 32. In
other words, Trossen teaches reporting tag sensor information to a presence
server and that an entity may subscribe to the presence server to receive
status information about the tag. However, we do not see, and the Examiner
has not sufficiently explained, how Trossen teaches or suggests “looking up
profile information associated with the RFID information in a storage
system, based on the tag identification, wherein the profile information
includes content and/or information regarding an event pertaining to the
people or items having the RFID tags,” as claimed.
Poikselka is generally directed to changing the subscription
information of a subscriber in a data network. Poikselka Abstr. The cited
sections of Poikselka teach detecting an update to a subscriber profile in a
subscriber database (e.g. a HSS), checking whether the capability is still
supported, and initiating a registration procedure. Poikselka ¶¶ 20, 36, 43,
Abstr. Although Poikselka teaches subscriber profile updates, we do not
see, and the Examiner has not sufficiently explained, how Poikselka teaches
or suggests “receiving one or more subscriber profile updates of one or more
subscribers which are subscribed to receive the SIP message from the
presence server, from the storage system” and “sending the SIP message, . . .
Appeal 2018-006772
Application 12/272,204

16
by the presence server to watchers that are subscribed to receive the SIP
message,” as claimed.
Kim is generally directed to a “context-aware service providing
system.” Kim Abstr. The cited section of Kim teaches “SIP server 300
performs the SIP registration, and obtains the context information from the
SIP registration message . . . and notifies the context information of the user
BOB to the first context-aware service provider 200a through the
notification message SIP NOTIFY in step S470.” Kim col. 6, l. 60–col. 7, l.
2. Although Kim teaches sending an SIP NOTIFY message to the context-
aware service provider of the user’s context information, we do not see, and
the Examiner has not sufficiently explained, how Kim teaches creating a
“rich content presence document,” as claimed.
Nor has the Examiner sufficiently explained how the combination of
Trossen, Poikselka, and Kim teach or suggest the foregoing limitations. See
Final Act. 9–11; Ans. 9–11.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we do not sustain the Examiner’s § 103(a) rejection of
independent claims 1, 15, and 24, and dependent claims 4, 7–9, 12, 13, 16,
20, 22, 23, and 26–28.
Moreover, because the Examiner has not shown that the additional
references cure the foregoing deficiency regarding the rejection of the
independent claim, we do not sustain the obviousness rejection of
dependent claims 5, 10, 14, 17, 21, and 25.

Appeal 2018-006772
Application 12/272,204

17
DECISION
We reverse the Examiner’s rejection of claims 1, 4, 5, 7–10, 12–17,
and 20–28 under 35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1, 15, and 24 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s rejections of claims 1, 4, 5, 7–10, 12–17,
and 20–28 under 35 U.S.C. § 103.
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 4, 5, 7–10, 12–17,
20–28
§ 101 1, 4, 5, 7–10, 12–17,
20–28
1, 15, 24 § 112, first
paragraph
1, 15, 24
1, 4, 7–9, 12, 13, 15,
16, 20, 22–24, 26–28
§ 103 Trossen,
Poikselka, Kim
1, 4, 7–9, 12, 13, 15,
16, 20, 22–24, 26–28
5 § 103 Trossen,
Poikselka, Kim,
Quon
5
14 § 103 Trossen,
Poikselka, Kim,
Yamamoto
14
21 § 103 Trossen,
Poikselka, Kim,
Haakana
21
10, 17, 25 § 103 Trossen,
Poikselka, Kim,
RFC 3261-SIP
10, 17, 25
Overall Outcome 1, 4, 5, 7–10, 12–17,
20–28

REVERSED