Ex Parte FisherDownload PDFPatent Trials and Appeals BoardMar 29, 201914098365 - (D) (P.T.A.B. Mar. 29, 2019) Copy Citation 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. 3 Appeal2018-005769 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 4 Appeal2018-005769 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 5 Appeal2018-005769 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. 6 Appeal2018-005769 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. 7 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 8 Copy with citationCopy as parenthetical citation