Ex Parte 7889722 et al

Patent Trial and Appeal Board

Dec 29, 2015

95002190 (P.T.A.B. Dec. 29, 2015)

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.
95/002,190 09/12/2012 7889722 BCT-P001USC3-R3 4394
7590 12/29/2015
Joseph B. Thompson
25910 Canal Road
Box 0-136
Orange Beach, AL 36561
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.
Requester and Respondent

v.

BEAR CREEK TECHNOLOGIES, INC.
Patent Owner and Appellant
____________

Appeal 2015-006387
Reexamination Control 95/002,190
Patent 7,889,722 B2
Technology Center 3900
____________

Before MARC S. HOFF, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Bear Creek Technologies, Inc. appeals under 35 U.S.C.
§ 134(b) and 35 U.S.C. § 315(a) (pre-AIA) the Examiner’s final decision to
reject claims 1–22.
An oral hearing was held on November 10, 2015, with both parties in
attendance. The record includes a written transcript of the oral hearing.
Third-Party Requester Cisco Systems, Inc. urges that the Examiner’s
decision be affirmed.
We affirm.

STATEMENT OF THE CASE
U.S. Patent No. 7,889,722 B2 (“’722 patent”), entitled “System for
Interconnecting Standard Telephony Communications Equipment to Internet
Protocol Networks,” issued February 15, 2011 to Joseph B. Thompson,
based on Application No. 11/253,129, filed October 18, 2005, which is said
to be a continuation of Application No. 10/770,808, filed February 3, 2004,
now U.S. Patent No. 6,985,494 B2, issued January 10, 2006, which is said to
be a continuation of Application No. 10/279,645, filed October 24, 2002,
now abandoned, which is said to be a continuation of Application No.
08/812,745, filed March 6, 1997, now abandoned.
The ’722 patent is also said to claim priority to provisional
Application No. 60/012,896, filed on March 6, 1996 and provisional
Application No. 60/013,240, filed on March 11, 1996.
The ’722 patent is assigned to Bear Creek Technologies, Inc., the real
party in interest.

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Related Litigation
The ’722 patent is or has been involved in numerous litigations, as
summarized in Patent Owner’s Appeal Brief. (PO App. Br. 1–2.)

The Claims
Independent claim 1 is exemplary, with disputed limitations in italics:
1. Apparatus comprising:
an Internet phone server capable of being in communication
with an originating phone device, the originating phone device being
capable of both dialing a given destination number of a given
destination device and thereby initiating a given call between the
originating phone device and the given destination device, an auditory
dial tone being caused at the originating phone device when the
originating phone device is in an off-hook state and operatively
connected to the Internet phone server, the given call including
transmission of transmitted media between the originating phone
device and the given destination device;
a first media converter configured to convert the transmitted
media for the given call received from the originating phone device, to
transmitted IP addressed media;
a destination number determination mechanism configured to
determine a given destination number of the given call placed by the
originating phone device;
an IP versus another phone network discriminator configured
to determine, after the transmitted media is converted by the first
media converter to the transmitted IP addressed media, whether a
given destination phone device addressed by the given destination
number resides on an IP addressed network, for which the transmitted
IP addressed media is converted by the first media converter, or
resides on another phone network;
a second media converter configured to convert the transmitted
IP addressed media of the given call to another network signal
suitable for another phone network when the discriminator determines
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that the given destination number resides on the other phone network;
and
a communication mechanism configured to connect the given
call over an Internet connection without converting the transmitted IP
addressed media of the given call to the other network signal, when
the discriminator determines that the given destination device
addressed by the given destination number resides on the IP addressed
network.

The Rejections
Patent Owner appeals the Examiner’s decision to reject all the
pending claims, as follows:
1. Claims 1–8 and 10–22 stand rejected under 35 U.S.C. § 103(a)
as obvious over Baratz (US 5,742,596; Apr. 21, 1998) and Turock (US
6,243,373 B1; June 5, 2001).
2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious
over Baratz and Turock, as evidenced by White (US 6,711,241 B1; Mar. 23,
2004).
3. Claims 1–12 and 14–22 stand rejected under 35 U.S.C. § 103(a)
as obvious over Iwami (US 5,604,737; Feb. 18, 1997) and Baratz.
4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious
over Iwami and Baratz, as evidenced by Lindgren (B. LINDGREN & LEIF
JONSSON, ILLUSTRATED ISDN 1-6 to -9 (1991)).
5. Claims 1–3, 5, 6, 8–14, and 16–22 stand rejected under 35
U.S.C. § 103(a) as obvious over Jonas (US 2001/0040885 A1; Nov. 15,
2001) and Kubler (US 5,726,984; Mar. 10, 1998).
6. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jonas, Kubler, and Pepe (US 5,742,905; Apr. 21, 1998).
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7. Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious
over Jonas, Kubler, and Iwami.
8. Claims 1–3, 5–14, and 16–22 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Schindler (US 6,954,453 B1; Oct. 11, 2005),
Merritt (Ian H. Merritt, Providing Telephone Line Access to a Packet Voice
Network, Report No. ISI/RR-83-107, Information Sciences Institute,
University of Southern California (1983)), and Kubler.
9. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Schindler, Merritt, Kubler, and Pepe.

§ 103 Rejection—Iwami and Baratz
Claims 1–3, 5–10, 12, 14–17, and 19–22
The Examiner found that the communication server of Iwami, which
determines whether the address input by a user is directed towards a
communication terminal address or a telephone number, corresponds to the
limitation “an IP versus another phone network discriminator.” (RAN 47–
48, 102–103.) Requester agrees and argues that “Iwami discloses generally
that a communication server 20 acts as a discriminator” and “determines
whether an address of a called party is a communication terminal 10 on a
LAN 1 or a telephone 2 on a public network 3.” (Requester Resp. Br. 11.)
We agree with the Examiner’s determination.
Iwami relates to a voice communication system, in particular,
“communication terminals connected through a communication network.”
(Col. 1, ll. 6–8.) Figure 1 of Iwami illustrates a voice communication
system, including communication terminals 10-1, 10-2 connected to Local
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Area Network (LAN) 1 and telephone 2 connected to public network 3, such
that LAN 1 and public network 3 are connected simultaneously to
communication server 20. (Col. 7, ll. 1–8.) Iwami explains that “[t]he
communication server [20] determines whether an address of the other party
inputted by a user is a communication terminal address or a telephone
number.” (Abstract.) Figure 5 of Iwami illustrates voice communication
control processing performed by voice communication program 31 (col. 9,
ll. 12–14) including “Step 124” in which “program 31 determines . . .
whether or not the address of the other party with whom the user desires to
speak is a telephone number consisting only of a sequence of numeric
characters” (col. 9, ll. 29–33) such that “the user has requested a voice
communication with a telephone 2 connected to the external public
network 3” (col. 9, ll. 36–38). Otherwise, Iwami explains that “if the
address of the other party inputted by the user is not a telephone number . . .
the address of the other party can be regarded as the address of a
communication terminal on the LAN 1.” (Col. 9, ll. 45–49.) Because
communication server 20 of Iwami determines if the address of the other
party is connected either through LAN 1 or public network 3, Iwami teaches
the limitation “an IP versus another phone network discriminator.”
Patent Owner argues that “Iwami does not describe at least an IP
versus another phone network discriminator.” (PO App. Br. 18.) In
particular, Patent Owner argues that
Iwami describes how, at step 124, if the address of the other
party (i.e., the receiving party) is a telephone number consisting
only of a sequence of numeric characters, this means that that
the user (i.e., the calling party) has requested a voice
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communication with a telephone 2 connected to the external
public network 3 through [the] communication server 20.
(Id.; see also PO Reb. Br. 4.) Accordingly, Patent Owner argues, “[t]he
user’s input of the numeric characters provides the information utilized by
the communication server 20.” (Id. (emphasis omitted).) However, the
claim language “an IP versus another phone network discriminator” is broad
enough to encompass communication server 20 of Iwami, having
program 31 which discriminates between a telephone number and an address
for a terminal.
Patent Owner also argues “Iwami describes a system that . . . requires
the user to discriminate between telephone or Internet lines” and
accordingly, “Iwami teaches away from claims 1–12 and 14–22.” (PO App.
Br. 18.) However other than providing a conclusory statement that Iwami
teaches away from the claimed invention, Patent Owner does not provide
any persuasive arguments as to how Iwami criticizes, discredits, or
otherwise discourages the claimed “IP versus another phone network
discriminator.” See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Accordingly, we sustain the rejection of claims 1–3, 5–10, 12, 14–17,
and 19–22 under 35 U.S.C. § 103(a).

Claim 4
The Examiner found that the fax component of Baratz corresponds to
the limitation “wherein the originating phone device includes standard fax
equipment,” as recited in dependent claim 4. (RAN 52 (citing RAN 22).)
Requester agrees and argues that “Baratz discloses that the components
shown coupled to system 10 may be implemented on the same host
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computers or may be distributed throughout the network, indicating that the
fax component 24 may be implemented within system 10 as an embodiment
of Baratz.” (Requester Resp. Br. 14.) We agree with the Examiner’s
determination.
Baratz “relates to a network based distributed Private Branch
Exchange (PBX) system.” (Col. 1, ll. 5–6.) Figure 1 illustrates system 10,
including telephony servers 44 for managing all system control processes
(col. 4, ll. 8–10) and regular telephone sets 42 (col. 5, ll. 18–19). Figure 2 of
Baratz illustrates system 10 coupled with automatic message distribution
system 30 that delivers fax transmissions through fax component 24.
(Col. 8, ll. 6–9.) Baratz explains the following:
The components/functions shown coupled to system 10 may be
implemented on the same or different host computers. They do
not necessarily have to be integral with the telephony server
module but may be distributed throughout the network.
(Col. 7, ll. 6–10.) Because Baratz explains that fax component 24 can be
distributed throughout the network, which includes coupling with regular
telephone sets 42, Baratz teaches the limitation “wherein the originating
phone device includes standard fax equipment.”
Patent Owner argues that “fax 24 and the automatic message
distribution 30 are not a part of the system 10 or the network 37 within the
system 10.” (PO App. Br. 19.) However, as discussed previously, Baratz
explains that fax component 24 can be distributed throughout the network.
(See col. 7, ll. 6–10.) Furthermore, Patent Owner’s arguments are not
commensurate in scope with claim 11, because the claim does not expressly
recite a location for the standard fax equipment.
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Accordingly, we sustain the rejection of claim 4 under 35 U.S.C.
§ 103(a).

Claim 11
The Examiner found that the telephony server of Baratz, which is
connected to Internet services, corresponds to the limitation “wherein the
Internet phone server includes the destination number determination
mechanism.” (RAN 55 (citing RAN 25).) Requester agrees and argues
“Baratz says that a database in telephony server 44 is used ‘to support
internal and external call capability’ . . . and that ‘network addresses (i.e.
physical extensions) for both parties are retrieved from telephony server 44’
for both internal and external calls.” (Requester Reb. Br. 14.) We agree
with the Examiner’s determination.
As discussed previously, Figure 1 of Baratz illustrates system 10,
including telephony servers 44 for managing all system control processes.
(Col. 4, ll. 8–10.) Baratz explains that “[t]o support internal and external
call capability, telephony server 44 maintains a database of user records,” for
example, an extension number. (Col. 6, ll. 16–19.) Because telephony
server 44 includes a database of user records for making calls, Baratz
teaches the limitation “wherein the Internet phone server includes the
destination number determination mechanism.”
Patent Owner argues that “the Examiner incorrectly equated the
database used to locate the computers 40 and the telephone sets 42 on the
network 37 with the destination number determining mechanism that
operates.” (PO App. Br. 19.) However, Patent Owner’s arguments are not
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commensurate in scope with claim 11, because the claim does not exclude
the claimed destination number determination mechanism from being stored
on a network.
Accordingly, we sustain the rejection of claim 11 under 35 U.S.C.
§ 103(a).

Claim 18
The Examiner found that the voice communication server program on
the communication server of Iwami corresponds to the limitation “wherein
the Internet phone server comprises both a call receipt portion and a call
delivery portion, and wherein the call delivery portion includes the
discriminator.” (RAN 56–57.) Requester agrees and argues “[t]he
communication server program clearly performs the functions of call receipt,
for example accepting call requests from both telephones and
communications terminals, and call delivery, for example transmitting voice
packets to communication terminals and transmitting voice information to
telephones.” (Requester Reb. Br. 14–15.) We agree with the Examiner’s
determination.
Iwami explains that communication server 20 stores a voice
communication server program 22 for voice communication control
processing. (Col. 10, l. 66 to col. 11, l. 1.) Iwami further explains that:
The voice communication server program 22 is a
program for accepting a call setting request from a telephone
received from the public network communication controller 21
or a voice communication request from a communication
terminal through the LAN communication controller 14
connected to the internal bus 19, editing voice packets
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transmitted from the telephone into voice packets, transmitting
the voice packets to the communication terminal, converting
voice packets received from the communication terminal to
voice information, and transmitting the voice information to the
telephone, thus providing voice communication functions
between the communication terminal connected to the LAN 1
and the telephone connected to the public network 3, similar to
the conventional functions between telephones.
(Col. 11, ll. 4–17.) Because voice communication server program 22 of
Iwami is stored on communication server 20 and provides voice
communication functions between telephone 2 (connected to public
network 3) and communication terminals 10-1, 10-2 (connected to LAN 1),
Iwami teaches the limitation “wherein the Internet phone server comprises
both a call receipt portion and a call delivery portion, and wherein the call
delivery portion includes the discriminator.”
Patent Owner argues that “Iwami does not provide any discussion of
the elements recited by claim 18.” (PO App. Br. 20.) However, other than
making a conclusory statement, Patent Owner has not provided a sufficient
explanation as to why dependent claim 18 is patentable over the combination
of Iwami and Baratz.
Accordingly, we sustain the rejection of claim 18 under 35 U.S.C.
§ 103(a).

§ 103 Rejection— Iwami, Baratz, and Lindgren
Although Patent Owner nominally argues the rejection of dependent
claim 13 separately (PO App. Br. 20), the arguments presented do not point
out with particularity or explain why the limitations of this dependent claim
is separately patentable. Instead, Patent Owner summarily alleges that
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“there is nothing in Lindgren that may be said to describe or suggest, among
other things, an apparatus including an apparatus including IP versus another
phone network discriminator” and “[g]iven that Lindgren does not cure the
deficiencies noted with respect to Iwami and Baratz, the combination of
Lindgren with Iwami and Baratz cannot be said to render obvious claim 13.”
(Id.) We are not persuaded by these arguments for the reasons discussed
with respect to claim 1, from which claim 13 depends. Accordingly, we
sustain this rejection.

Other § 103 Rejections
We do not reach the additional cumulative rejections of claims 1–22
under 35 U.S.C. § 103(a) as obvious over various combinations of Baratz,
Turock, White, Jonas, Kubler, Pepe, Iwami, Schindler, and Merritt.
Affirmance of the obviousness based rejections discussed previously renders
it unnecessary to reach the remaining obviousness rejections, as all of
pending claims have been addressed and found unpatentable.

DECISION
The Examiner’s decision to reject claims 1–22 under U.S.C. § 103(a)
is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

mls
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PATENT OWNER:

JOSEPH B. THOMPSON
25910 Canal Road
Box 0-136
Orange Beach, AL 36561

THIRD PARTY REQUESTER:

HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue, Suite 700
Dallas, TX 75219