Ex Parte GIBSON et al

Patent Trial and Appeal Board

May 17, 2017

13795905 (P.T.A.B. May. 17, 2017)

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.
13/795,905 03/12/2013 Richard GIBSON 5524-144 2458
96355 7590 05/19/2017
NIXON & VANDERHYE, P.C. / Vonage
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SOLINSKY, PETER G
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD GIBSON
and MABROUK ABOUGHANAIMA
Appeal 2016-007704
Application 13/795,9051
Technology Center 2400
Before MICHAEL J. STRAUSS, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—9, 11—19, 22, and 25—27, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “an interface device ... to couple the
traditional analog telephone to the data network.” Spec. 13. Claim 1 is
illustrative and reproduced below with the recitations at issue emphasized:
1 According to Appellants, the real party in interest is Vonage Network,
LLC. App. Br. 3.
Appeal 2016-007704
Application 13/795,905
1. A method of configuring a telephony adapter for connecting a
telephony device and an IP telephony system wirelessly over a
local network, comprising:
causing the telephony device, that is operatively coupled
to the telephony adapter, to play or display a prompt or query
requesting information for connecting to a wireless interface
device;
receiving input from the telephony device, the input being
provided to the telephony adapter via the telephony device and
providing information for connecting the telephony adapter to
the wireless interface device; and
using the received input to access the wireless interface
device which provides access to the local network.
Rejections
Claims 1, 6—9, 11, 12, 17—19, 22, and 27 stand rejected under
35 U.S.C. § 102(b) as anticipated by Brother Industries, Ltd., Quick Setup
Guide for MFC-490CW (“Brother”). Final Act. 2.
Claims 2, 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Brother and Sekiguchi (US 2002/0063882
Al; May 30, 2002). Final Act. 8.
Claims 4, 5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Brother and Skinner (US 2011/0188644
Al; Aug. 4, 2011). Final Act. 9.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Brother and LaBauve et al. (US 2007/0015536 Al;
Jan. 18,2007). Final Act. 11.
ISSUES
1. Did the Examiner err in finding Brother discloses “receiving
input from the telephony device, the input being provided to the telephony
2
Appeal 2016-007704
Application 13/795,905
adapter via the telephony device and providing information for connecting
the telephony adapter to the wireless interface device,” as recited in claim 1?
2. Did the Examiner err in finding Brother discloses “the received
input corresponds to the selected wireless interface device in which the
telephony adapter connects,” as recited in claim 27?
3. Did the Examiner err in finding Brother discloses “obtaining
information from the server” and “configuring the telephony adapter based
on the obtained information,” as recited in claim 6?
4. Did the Examiner err in finding Brother discloses “utilizing the
received input to determine how to contact the server,” as recited in claim 7?
ANALYSIS
Anticipation
A) Claims 1, 9, 11, 12, and 22
Claim 1 recites “receiving input from the telephony device, the input
being provided to the telephony adapter via the telephony device and
providing information for connecting the telephony adapter to the wireless
interface device.” Independent claims 11, 12, and 22 recite commensurate
limitations. App. Br. 11.
The Examiner relies on Brother for this limitation. “Brother teaches a
multipurpose printer/fax machine which connects between a circuit switched
analog phone system and networked computers.” Ans. 3 (citing Brother 29).
Appellants argue “[t]he Examiner asserts that the LINE [i.e., the
phone jack] . . . corresponds to the ‘telephony adapter’” and that Brother’s
LINE does not receive “information for connecting the ‘adapter’ (i.e., LINE)
to a wireless interface device.” App. Br. 13. “Nor does Brother’s LINE
receive input from the telephony device.” Id.
3
Appeal 2016-007704
Application 13/795,905
However, we are not persuaded the “telephony adapter” in Brother is
limited to just Brother’s phone jack labeled LINE. To the contrary, the
Examiner explains, “[a] telephony adapter is being broadly interpreted as
any coupling which can connect a device to a circuit switched telephone
network.” Ans. 2. The Specification also broadly discloses “an interface
device is used to couple the traditional analog telephone to the data network.
The interface device is commonly called a ‘terminal adapter.’” Spec. 13.
“The customer connects a traditional analog telephone to the terminal
adapter, and couples the terminal adapter to a data network, such as the
Internet.” Spec. 14. Here, Appellants have not persuasively rebutted the
Examiner’s findings that “Brother teaches a multipurpose printer/fax
machine which connects between a circuit switched analog phone system
and networked computers” (Ans. 3) and the “facsimile is connected to the
wireless access point.” Final Act. 3 (emphasis omitted); see also Reply Br.
4 (“the multi-function printer has one piece of hardware for connecting the
printer to a PSTN to send/receive faxes, and another piece of hardware to
connect the printer to a wireless access point” and “they may be ‘coupled’
by some internal circuitry”). The Specification describes that the adapter
can include multiple components, including separate interfaces for both the
telephony network and the data network. Spec. Figs. 2—3 (depicting an
adapter with multiple components, including a “processor 150” and
“provisions 158/160 for connecting the processor 150 to customer
equipment and to service provider agent equipment”), H 30-32, H 10—11,
1136—38. Brother discloses such a coupling, in line with the Specification.
Appellants also argue “Brother does not indicate that the multi­
function printer connects to anJPtelephony_system.” App. Br. 13. We note
4
Appeal 2016-007704
Application 13/795,905
“an IP telephony system” is recited in the preamble of the independent
claims, and Appellants have not explained why it would be limiting. See
Summit 6, LLCv. SamsungElecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015)
(“Generally, a preamble is not limiting.”). But even if we were to conclude
the preamble is limiting, the Specification explains telephony
communications “are also intended to encompass data communications that
are conveyed through a PSTN or VOIP telephony system, such as facsimile
transmissions .... In other words, these terms are intended to encompass
any communications whatsoever, in any format, which traverse all or a
portion of a communications network or telephony network.” Spec. 122
(emphasis added). Thus, an IP telephony system as recited in the preamble
includes the Examiner’s specific example of a fax sent from a computer over
a standard IP network.
Accordingly, we sustain the Examiner’s rejection of claims 1, 11, 12,
and 22, and dependent claim 9, which Appellants do not argue separately.
B) Claim 27
Claim 27 depends from claim 1 and further recites “the received input
corresponds to the selected wireless interface device in which the telephony
adapter connects.” Appellants argue “the LINE (i.e., the allegedly
corresponding ‘telephony adapter,’ as noted above) does not connect to any
access points.” App. Br. 14. However, as discussed above, we are not
persuaded the “telephony adapter” in Brother is limited to Brother’s LINE.
Here, Brother discloses input to choose the wireless network. Brother 31.
Accordingly, we sustain the Examiner’s rejection of claim 27.
5
Appeal 2016-007704
Application 13/795,905
C) Claims 6, 8, 17, and 19
Claim 6 depends from claim 1 and further recites “obtaining
information from the server” and “configuring the telephony adapter based
on the obtained information.” Claim 17 recites a commensurate limitation.
Appellants argue the configuring step must be “to connect the
telephony adapter to the wireless interface device” (Reply Br. 7), but such a
limitation is not present in the claims as presently written. Because claim
6’s “information” contains no reference to the “information” recited in claim
1 by, for example by use of the definite article “said” or “the,” claim 6’s
“information” is not necessarily the same as claim l’s “information.”
Accordingly, Appellants’ argument is not commensurate in scope with
claim 6, and Appellants have not otherwise persuasively rebutted the
Examiner’s finding that “[w]hen any of the computer devices utilize the
Brother device to send a fax, they must send information that tells the device
where to transmit the fax, i.e. a phone number.” Ans. 7. Thus, Brother’s
telephony adapter is “configured” based on an obtained fax number.
Accordingly, we sustain the Examiner’s rejection of claims 6 and 17,
and dependent claims 8 and 19, which Appellants do not argue separately.
D) Claims 7 and 18
Claim 7 depends from claim 6 and further recites “utilizing the
received input to determine how to contact the server.” Claim 18 recites a
commensurate limitation. The antecedent basis for “the received input”
comes from claim 1, which recites “receiving input from the telephony
device, the input. . . providing information for connecting the telephony
adapter to the wireless interface device.”
6
Appeal 2016-007704
Application 13/795,905
Appellants argue “Brother’s multi-function printer connects to the
access point so that other devices (e.g., desktop, laptop, tablet) can use the
printer’s services,” but “those devices are configured so that they ‘contact’
the printer, and not vice versa.” App. Br. 17. However, Appellants have not
sufficiently addressed the Examiner’s finding that the printer “can contact
the server either through the wireless network or direct connection, either
option includes signalling well known in the art to initialize and maintain the
connection.” Final Act. 4 (emphasis omitted). For example, the Examiner
finds such network communications “use well defined standards such as the
IEEE 802.3 Ethernet standard or the IEEE 802.11 Wireless standard” which
“utilize different types of handshaking . . . such as ACK/NACK signaling”
and therefore “communications occur[] in both directions.” Ans. 8.
Appellants even concede “the Brother printer may have some type of
bidirectional communication.” Reply Br. 8.
As the Examiner found for claim 1, “entering set-up mode for WLAN
causes the [printer] to prompt for information to connect to the network via
the wireless interface.” Final Act. 3 (citing Brother 31, emphasis omitted).
Given the bidirectional communication, Appellants have not persuaded us
that the same information (e.g., SSID of the wireless network) would not be
utilized to determine how to contact a computer via the wireless network.
Accordingly, we sustain the Examiner’s rejection of claims 7 and 18.
Obviousness
Because we are not persuaded of error in the Examiner’s conclusions
for the independent claims and Appellants do not make any separate
arguments for claims 2—5, 13—16, 25, and 26, we affirm the Examiner’s
rejection of dependent claims 2—5, 13—16, 25, and 26.
7
Appeal 2016-007704
Application 13/795,905
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—7, 11—19, 22, and 25—27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
8