Ex Parte Fisher

Patent Trials and Appeals Board

Mar 29, 2019

14098365 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/098,365 12/05/2013
105956 7590 04/02/2019
Fogarty, L.L.C
P.O. Box 703695
Dallas, TX 75370-3695
FIRST NAMED INVENTOR
Donald L. Fisher JR.
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.
GEN-2013.12 5301
EXAMINER
LIN,KENNYS
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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@fogartyip.com
pair@fogartyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD L. FISHER, JR.
Appeal2018-005769
Application 14/098,3 65 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1-5 and 8-22. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is "GENBAND US
LLC." Appeal Br. 3.
2 As discussed infra, however, Appellant only appeals rejections of
claims 9, 12-14, and 16-19.
Appeal2018-005769
Application 14/098,365
According to Appellant, the invention relates "to systems and methods
for a debug line tracer for telecommunication networks." Spec. ,r 1.
Claims 1, 9, and 16 are the independent claims on appeal. Below, we
reproduce claim 9 as illustrative of the appealed claims.
9. A call trace system comprising a processor and a
memory coupled to the processor, the memory configured to
store program instructions executable by the processor to cause
the computer system to:
receive via a user interface a request from a user to initiate
a call trace operation on a phone number corresponding to a call
failure;
set up the call trace operation in response to the request,
wherein the call trace operation is set up to capture call trace
information describing the route traversed by a call attempt to the
phone number;
provide an indication to the user that the call trace
operation is set up;
receive a command provided via the user interface,
wherein the command triggers the call trace operation; and
perform the triggered call trace operation, wherein the call
trace operation captures call trace information while the user
concurrently attempts to establish the call attempt to the phone
number.
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:
I. Claims 1-5, 8, and 16-22 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement;
3 We reorder certain rejections relative to the order in the Final Office
Action. Final Action 5-17.
2
Appeal2018-005769
Application 14/098,365
II. Claims 5 and 9-15 under 35 U.S.C. § 103 as unpatentable over
Fellner et al. (US 7,796,746 B2, iss. Sept. 14, 2010) (hereinafter
"Fellner") and Egan et al. (US 6,937,572 Bl, iss. Aug. 30,
2005) (hereinafter "Egan"); and
III. Claims 1--4, 8, and 16-22 under 35 U.S.C. § 103 as
unpatentable over Fellner.
ANALYSIS
Reiection I
Appellant does not argue that the Examiner errs in rejecting claims 1-
5, 8, and 16-22 as failing to comply with the written-description
requirement. Thus, we summarily affirm the Examiner's § 112 rejection.
Rei ection II
Claims 5, 10, 11, and 15
Appellant does not argue against the Examiner's obviousness
rejection of claims 5, 10, 11, and 15. See, e.g., Appeal Br. 6 ("GROUNDS
OF REJECTION TO BE REVIEWED ON APPEAL"). Thus, we summarily
affirm the Examiner's rejection of these claims.
Claim 9
In support of independent claim 9 's rejection, the Examiner finds that
Fellner discloses all of the claim's recitations, except for "information
describing the route traversed by a call attempt to the phone number," as
claimed. Final Action 7-8. The Examiner relies on Egan to disclose the
claimed information. Id. at 8.
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Application 14/098,365
Appellant argues that the Examiner errs, because Fellner modified by
Egan fails to disclose "a call trace that operates while the individual
requesting the call trace operation is also required to attempt to establish a
call to the number that is being traced." Appeal Br. 8; see also Reply Br. 2.
Appellants do not persuade us of error, however.
Initially, we note that the claim recitation under discussion states that
"the call trace operation captures call trace information while the user
concurrently attempts to establish the call attempt to the phone number."
Appeal Br., Claims App. (claim 9). According to the Examiner "Fellner
disclosed specifically to perform call tracing and captures ALL calls that
were placed after the call trace process is initiated . . . . This essentially
includes any calls that are placed by anyone, including the requestor,
immediately after the call trace initiation process to be captured." Answer 4
(citation omitted). Fellner adequately supports the Examiner's finding, as
Fellner discloses that"[ w ]ith the trace now in place, the central offices
monitor for incoming calls made to the number placed on trace."
Fellner 5:32-33. In support of the Examiner's finding, Fellner does not
disclose the system fails to trace the requestor' s call to the traced phone
number.
Next, Appellant argues that
[ n Jot only does the combination of Fellner and Egan fail to teach
or suggest the recited trace operation that is initiated by a user
that also participates in the trace operation by attempting to
reproduce the failed call to the phone number being traced,
modifying the Fellner system to operate in this manner would
render it unsuitable for its intended use as a law enforcement tool.
The call trace system of Fellner is intended for use in a law
enforcement context, for instance to track incoming calls
directed to an individual that is the target of an investigation. See
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Application 14/098,365
e.g., Fellner, 1:41-54. In order to be used in such criminal
investigative settings, the system of Fellner is presumably
utilized without the consent or knowledge of the individual that
is the target of the investigation. It is evident that such an
investigation would be compromised if the targeted individual
becomes aware of a phone trace operation.
Appeal Br. 1 O; see also Reply Br. 5---6. Appellant does not persuade us of
error, however. For the reasons set forth above, Fellner itself discloses that
"the call trace operation captures call trace information while the user
concurrently attempts to establish the call attempt to the phone number," as
claimed. Thus, Fellner operates consistent with (albeit as an improvement
over) other "known call tracing methods and systems" described in its
Background section, in which the person receiving the incoming calls knows
that the calls are being traced. See Fellner col. 1, 1. 41---col. 2, 1. 12.
Finally, Appellant argues that "Fellner teaches away from the recited
call trace operation that is initiated by an individual that also participates in
the initiated call trace operation." Appeal Br. 11; see also Reply Br. 7.
Appellant does not persuade us of error, because Fellner itself discloses "the
call trace operation captures call trace information while the user
concurrently attempts to establish the call attempt to the phone number," as
claimed.
Thus, based on the foregoing, we sustain the Examiner's obviousness
rejection of claim 9.
Claims 12-14
Claim 12 depends from claim 9, and further recites "wherein to
receive the request, the program instructions are further executable by the
processor to cause the call trace system to: receive the phone number
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Application 14/098,365
corresponding to the call failure; and receive the call trace request
corresponding to the phone number."
Appellant argues that because "the system of Fellner is used to trace
all calls made to a target phone number, entering a malfunctioning phone
number into the interface of Fellner would be expected to result in a failed
call trace since the malfunctioning phone number is not currently reachable."
Appeal Br. 13. Appellant does not persuade us of error, however. First,
Appellant's argument exceeds the scope of the claim, as claim 12 recites
neither "a malfunctioning phone number" nor a "number [that] is not
currently reachable." Further, Appellant does not provide a sufficient
explanation or evidentiary basis supporting how Fellner's system "would be
expected to" operate. Thus, we sustain the Examiner's obviousness
rejection of claim 12.
Although Appellant separately argues against the Examiner's
obviousness rejection of claims 13 and 14 that depend from claim 9, these
arguments do not differ in substance from the arguments set forth above for
claims 9 and 12. Thus, we sustain the rejection of claims 13 and 14.
Rei ection III
Claims 1--4, 8, and 20-22
Appellant does not argue against the Examiner's obviousness
rejection of claims 1--4, 8, and 20-22. See, e.g., Appeal Br. 6 ("GROUNDS
OF REJECTION TO BE REVIEWED ON APPEAL"). Thus, we summarily
affirm the Examiner's rejection of these claims.
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Application 14/098,365
Claim 16-19
Appellant first argues that the Examiner's obviousness rejection of
independent claim 16 suffers from the same deficiencies that independent
claim 9's rejection suffers. Inasmuch as we sustain claim 9's rejection, this
argument does not persuade us of error.
Next, Appellant argues that"[ w ]ithout the debugging tool disclosed in
Egan, this rejection of [ c ]laim 16 based solely on Fellner includes no
teaching or suggestion of any debugging of a failed call attempt." Appeal
Br. 15. Appellant's argument does not persuade us that the Examiner errs.
Claim 16 does not recite "debugging," and, therefore, the argument exceeds
the claim's recitations. Thus, based on the foregoing, we sustain the
Examiner's obviousness rejection of claim 16.
Appellant does not argue dependent claims 1 7-19 under a separate
heading. See 37 C.F.R. § 41.37 (c)(l)(iv). Thus, these claims fall with
claim 16. Id. Nonetheless, Appellant's arguments for these claims are the
same in substance as those set forth for claims 12-14 and 16. Therefore, we
are unpersuaded of Examiner error for substantially the same reasons as set
forth above.
DECISION
We summarily AFFIRM the Examiner's written-description rejection
of claims 1-5, 8, and 16-22.
We summarily AFFIRM the Examiner's obviousness rejections of
claims 1-5, 8, 10, 11, 15, and 20-22.
We AFFIRM the Examiner's obviousness rejections of claims 9, 12-
14, and 16-19.
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Appeal2018-005769
Application 14/098,365
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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