Ex Parte Forte et alDownload PDFPatent Trial and Appeal BoardDec 20, 201713000328 (P.T.A.B. Dec. 20, 2017) Copy Citation 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. 13/000,328 05/27/2011 Andrea G Forte 0315120.166-US2 2226 70763 7590 Byrne Poh LLP 11 Broadway, Ste 760 New York, NY 10004 EXAMINER ASEFA, DEBEBE A ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 12/22/2017 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): info @ bymepoh .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREA G. FORTE, HENNING SCHULZRINNE, and ARPIT MEHTA Appeal 2017-004048 Application 13/000,328 Technology Center 2400 Before MELISSA A. HAAPALA, NABEEL U. KHAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ Final Rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2017-004048 Application 13/000,328 STATEMENT OF THE CASE Appellants’ invention is directed to systems, methods, and media for implementing call handoff between networks. Spec. 13. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for implementing call handoff between networks, comprising: at least one device that: receives a call from a first endpoint specifying a second endpoint, wherein each of the first endpoint and the second endpoint are remote from the at least one device; creates a conference in response to receiving the call specifying the second endpoint; establishes a connection between the first endpoint and the conference; calls the second endpoint specified by the call from the first endpoint; establishes a connection between the second endpoint and the conference in response to calling the second endpoint; and when one of the first endpoint and the second endpoint is able to be connected to a different network from a current network which the one of the first endpoint and the second endpoint is connected to the conference: establishes a connection between the conference and the one of the first endpoint and the second endpoint via the different network; and removes the connection via the current network between the one of the first endpoint and the second endpoint and the conference. REJECTIONS Claims 1—24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Kezys et al. (US 7,986,665 B2; 2 Appeal 2017-004048 Application 13/000,328 issued July 26, 2011) (“Kezys”) and Chaturvedi (US 8,380,859 B2; issued Feb. 19, 2013) (“Chaturvedi”). ANALYSIS Dispositive Issue: Did the Examiner provide adequate rationale for combining Kezys and Chaturvedi? The Examiner finds: It would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teachings of Chaturvedi within the system of Kezys to obtain the claimed invention because to acquire the knowledge taught by the reference material and to make adjustment accordingly, has been held that the provision of adjustability, where needed, involves only routine skill in the art. This is important for creating communication between devices in different geographical area). It would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teachings of Chaturvedi within the system of Kezys to obtain the claimed invention because to acquire the knowledge taught by the reference material and to make adjustment accordingly, has been held that the provision of adjustability, where needed, involves only routine skill in the art. This is important for establishing a voice connection between two devices through a third device). Final Act. 5. Appellants argue (1) “neither of the Examiner’s rationales for combining Kezys and Chaturvedi provides anything more than ‘mere conclusory statements,’” (2) “the Examiner has not identified by whom this [provision of adjustability is] held nor has the Examiner cited any authority for this proposition,” (3) “the Examiner has provided no explanation of 3 Appeal 2017-004048 Application 13/000,328 what ‘adjustability’ means in the context of the Examiner’s rationale, nor how to determine when such adjustability is ‘needed,’” and (4) “the Examiner has provided no evidentiary support. . . nor has the Examiner identified what ‘this’ is or how these statements support the Examiner’s rationale.” App. Br. 14; see also Reply Br. 9-12. We agree with Appellants that the Examiner has not provided adequate rationale for combining Kezys and Chaturvedi. Although the standard for combining references is “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s Answer, like the Final Office Action, does not substantively address Appellants’ arguments and is devoid of any meaningful findings regarding the reasoning or motivation for combining the references. The Answer merely states, “what the Examiner is trying to convey is the obviousness of the said limitation” and otherwise simply describes the teachings in Chaturvedi. Ans. 5—7. Given the absence of fi ndings in the record, we do not sustain the Examiner’s rejection. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. DECISION We reverse the Examiner’s rejection of claims 1—24. 4 Appeal 2017-004048 Application 13/000,328 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). REVERSED 5 Copy with citationCopy as parenthetical citation