Ex Parte Ezell et al

Patent Trial and Appeal Board

Oct 26, 2018

14806927 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/806,927 07/23/2015
48500 7590 10/30/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Joel M. Ezell
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.
4366-750 2209
EXAMINER
NOWLIN, ERIC
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL M. EZELL, MANISH CHATTERJEE,
ANANDA HP, and SUMIT BIJWE
Appeal2018-004125
Application 14/806,927
Technology Center 2400
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
SCOTT E. BAIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Avaya, Inc. App. Br.
2.
Appeal2018-004125
Application 14/806,927
STATEMENT OF THE CASE
Appellants' disclosure is directed to call recording in a Session
Initiation Protocol (SIP) environment and limiting the sending of unrecorded
media streams. See Spec. ,r,r 1-3. Claims 1 and 15, which are illustrative of
the invention, read as follows:
1. A method comprising:
receiving, by a processor, a first SIP INVITE message to
establish a communication sess10n between a first
communication device and a second communication device;
in response to receiving the first SIP INVITE message,
sending, by the processor, a second SIP INVITE message to a
media recorder, wherein the second SIP INVITE message is
without a media line or has a media attribute set to inactive;
receiving, by the processor, one of a SIP PUBLISH
message or a SIP NOTIFY message that indicates to start
recording the communication session; and
sending, by the processor, a media stream of the
communication session to the media recorder based on the SIP
PUBLISH message or the SIP NOTIFY message indicating to
start recording the communication session.
15. A call recording server comprising:
a media recording application that sends a SIP
SUBSCRIBE message to be notified of an event associated with
a User Agent (UA), and receives a SIP NOTIFY message that
indicates the event associated with the UA; and
a media recorder that receives a media stream for a
communication session that includes the U A and records the
media stream for the communication session.
Claims 1, 6-4, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Davis (US 2009/0213839 Al; published Aug. 27, 2009)
and Lau (US 2011/0093542 Al; published Apr. 21, 2011). See Final Act.
12-18.
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Appeal2018-004125
Application 14/806,927
Claims 2--4 and 9--11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davis, Lau, and Hutton et al. (An Architecture for Media
Recording Using the Session Initiation Protocol, May 2014, Internet
Engineering Task Force (IETF)) (hereinafter "RFC7245"). See Final Act.
18-25.
Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Davis and RFC7245. See Final Act. 25-29.
ANALYSIS
Claim 1
In rejecting claim 1, the Examiner finds Davis discloses all the recited
elements of the claim except for "wherein the second SIP INVITE message
is without a media line or has a media attribute set to inactive," for which the
Examiner relies on Figure 3 and Paragraph 32 of Lau. See Final Act. 12-14.
The Examiner explains that
Lau teaches wherein the second SIP INVITE message is
without a media line or has a media attribute set to inactive (,32,
Lau teaches a SIP OK, or acknowledgment message,
comprising an inactive media attribute. Here, a SIP OK
message is in response to a previously transmitted message).
It would have been obvious to one having ordinary skill in
the art at the time the invention was filed to modify Davis by
requiring that the second SIP INVITE message is without a
media line or has a media attribute set to inactive as taught by
Lau because it allows the call to be maintained while preventing
the caller user equipment from entering a dormant state (Lau,
Abstract).
Final Act. 14.
Appellants contend the Examiner's rejection is in error because the
cited portion of Lau does not disclose "wherein the second SIP INVITE
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Application 14/806,927
message is without a media line or has a media attribute set to inactive," and
the combination of Davis and Lau does not provide "any motivation or
suggestion to set an inactive media attribute for a second SIP INVITE
message." App. Br. 8. Appellants specifically argue:
What Lau actually discloses is a SIP 200 OK message with an
inactive media attribute being sent by the S-CSCF server in
response to a SIP re-invite message that is sent from the UE
110-B. The S-CSCF server is the element that monitors whether
the status of the VoIP call 310 changes ( whether the VoIP call
310 is being changed from hold to active or from active to hold).
This is why the S-CSCF server responds to the SIP re-invite
message and sets the "inactive" media attribute in the SIP 200
OK message. The UE 110-B (the sender of the SIP re-invite
message) of Lau has no need to set the media attribute to
"inactive" in the SIP re-invite message because the UE-110-B
does not have the necessary status information ( whether the VoIP
call is being changed from hold to active or from active to hold).
This is because the system of Lau works differently from the
claimed invention.
App. Br. 9. Referring to the recitation of SIP INVITE and SIP 200 OK
messages in Davis, Appellants assert those messages are different and SIP
200 OK cannot be characterized as a second SIP INVITE message. Reply
Br. 6.
In response, the Examiner determines that based on the broadest
reasonable interpretation of the disputed claim limitation, the SIP 200 OK
message of Lau is in response to any type of successfully received SIP
message and is similar to the SIP INVITE message of Davis. Ans. 6-7. The
Examiner explains that Lau is relied on for disclosing a SIP message that
contains an inactive media attribute, which in combination with the second
SIP INVITE message of Davis, provides the recited SIP message that is
"without a media line or has a media attribute set to inactive." Ans. 8-9.
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Application 14/806,927
Based on a review of Lau, we are persuaded by Appellants'
contention that the Examiner has not explained how the SIP 200 OK
message of Lau meets the recited second SIP INVITE message. As further
pointed out by Appellants (see App. Br. 11 ), the Specification also provides
description of these messages that distinguishes between the SIP 200 OK
and a SIP INVITE or SIP SUBSCRIBE/PUBLISH messages. See Spec.
,r,r 27-38. Yet the Examiner has not explained how Lau's teaching of
including a SIP 200 OK message in the active call message (see Lau ,r 32)
relates to a "second SIP INVITE message [that] is without a media line or
has a media attribute set to inactive," as recited in claim 1.
Therefore, Appellants' arguments have persuaded us of error in the
Examiner's position with respect to the rejection of independent claim 1 and
independent claim 8, which recites similar limitations. We, therefore, do not
sustain the 35 U.S.C. § 103(a) rejection of claims 1 and 8, as well as claims
2-7 and 9-14 dependent therefrom.
Claim 15
The Examiner finds Davis discloses all the limitations of claim 15
except for "a media recording application that sends a SIP SUBSCRIBE
message to be notified of an event associated with a User Agent (UA)" and
finds RFC7245 discloses the recited media recording application. See Final
Act. 25-26. Appellants contend the Examiner erred because the SIP
INVITE message of Davis cannot be characterized as a SIP NOTIFY
message. App. Br. 17. The Examiner responds that "the RFCs provided by
the Appellant do not show that a SIP INVITE message is different than a
SIP NOTIFY message." Ans. 19.
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Application 14/806,927
We are persuaded by Appellants' arguments that the SIP NOTIFY and
SIP PUBLISH messages are not the same and cannot substitute a SIP
INVITE message. In fact the Examiner has not shown that the cited prior art
provides the recited elements without subscribing to speculation. In order
for us to sustain the Examiner's rejection under 35 U.S.C. § 103, we would
need to resort to speculation or unfounded assumptions to supply
deficiencies in the factual basis of the rejection. In re Warner, 379 F.2d
1011, 1017 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh'g denied,
390 U.S. 1000 (1968).
Therefore, Appellants' arguments have persuaded us of error in the
Examiner's position with respect to the rejection of independent claim 15.
We, therefore, cannot sustain the 35 U.S.C. § 103(a) rejection of claim 15, as
well as claims 16-20 dependent therefrom.
DECISION
We reverse the Examiner's decision to reject claims 1-20.
REVERSED
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