Ex Parte Hu et al

Patent Trial and Appeal Board

Jun 18, 2018

12849433 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/849,433 08/03/2010
83719 7590 06/18/2018
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Qingmin J. Hu
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.
2009-1248(40147/16701) 7825
EXAMINER
CATTUNGAL, AJAY P
ART UNIT PAPER NUMBER
2467
MAIL DATE DELIVERY MODE
06/18/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINGMIN J. HU and F AROOQ BARI
Appeal2017-010158
Application 12/849,433
Technology Center 2400
Before DENISE M. POTHIER, JASON J. CHUNG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as AT&T Mobility II, LLC.
App. Br. 2.
Appeal2017-010158
Application 12/849,433
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns "receiving ...
a legacy service request for a terminal disposed in an access area including a
plurality of networks" and "determining ... an optimal delivery network
from the plurality of networks to handle the legacy service request." Spec.
,r 3, Abstract. 2
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method, comprising:
receiving, by a policy manager, a legacy service request
for a terminal disposed in an access area including a plurality of
networks, wherein the legacy service request is a request for a
telecommunication service that is not native to the plurality of
networks due to the legacy service request being outdated;
determining, by the policy manager, an optimal delivery
network from the plurality of networks to handle the legacy
service request; and
transmitting, by the policy manager, the legacy service
request to the optimal delivery network.
App. Br. 14 (Claims App'x).
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed August 3, 2010; "Final Act." for the Final Office Action,
mailed September 30, 2016; "App. Br." for the Appeal Brief, filed
December 30, 2016; "Ans." for the Examiner's Answer, mailed May 24,
2017; and "Reply Br." for the Reply Brief, filed July 24, 2017.
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Application 12/849,433
The Prior Art Supporting the§ 103 (a) Rejections
As evidence ofunpatentability, the Examiner relies on the following
prior art:
Bernath US 2008/0101340 Al May 1, 2008
Hawkins et al. US 2008/0148350 Al June 19, 2008
("Hawkins")
Forte-McRobbie et al. US 2008/0317008 Al Dec. 25, 2008
("Forte-McRobbie")
Ramachandran et al. US 2010/0099412 Al Apr. 22, 2010
(''Ramachandran'')
Sharma et al. US 2011/0202270 Al Aug. 18, 2011
("Sharma") (filed Dec. 28, 2010)
Pawar et al. US 2011/0255516 Al Oct. 20, 2011
("Pa war") (filed Apr. 15, 2010)
The Rejections on Appeal
Claims 1, 10, and 18 stand rejected under 35 U.S.C. § 112 ,r 2 as
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention. 3 Final Act. 2-3.
Claims 1, 2, 4, 7, 10, 14, 16, and 18-20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Ramachandran and Bernath. Final Act. 4--5.
Claims 3 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Ramachandran, Bernath, and Pawar. Final Act. 6.
3 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename§ 112's
subsections. Because Application 12/849,433 was filed before the AIA's
effective date for applications, this decision refers to the pre-AIA version of
§ 112.
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Application 12/849,433
Claims 5, 6, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ramachandran, Bernath, and Forte-McRobbie. Final
Act. 6-7.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ramachandran, Bernath, and Sharma. Final Act. 7-8.
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ramachandran, Bernath, and Hawkins. Final Act. 8-9.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner's conclusions concerning unpatentability under§ 112 ,r 2 and
§ 103(a). We adopt the Examiner's findings and reasoning in the Final
Office Action and Answer. See Final Act. 2-9; Ans. 2--4. We add the
following to address and emphasize specific findings and arguments.
The§ 112 f 2 Rejection of Claims 1, 10, and 18
Section 112's second paragraph requires that the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
35 U.S.C. § 112 i12.
Due to the need for "particular[ity ]" and "distinct[ ness ]," claim
language that "is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention" warrants a
rejection under§ 112 ,r 2. In re Packard, 751 F.3d 1307, 1311, 1313
(Fed. Cir. 2014); see Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re
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Application 12/849,433
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that "[t]he
legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope"); In re Moore, 439 F.2d 1232, 1235 (CCP A
1971) (requiring "a reasonable degree of precision and particularity" in
claims).
Here, independent claims 1, 10, and 18 include the following
limitation: "wherein the legacy service request is a request for a
telecommunication service that is not native to the plurality of networks due
to the legacy service request being outdated." App. Br. 14--16 (Claims
App'x). The Examiner determines that "[i]t's not clear if it is the 'legacy
service' that is outdated or the legacy service 'request' that is outdated."
Final Act. 3; see Ans. 2-3.
Appellants argue that "the claim language and Specification make it
abundantly clear to one skilled in the art that there is not an outdated
'request' (such as a request made too long ago)" and "the request is
associated with an outdated service." App. Br. 4. More particularly,
Appellants contend the Specification makes clear that: (1) "the limitation
'legacy service' means a circuit switched, non-Internet Protocol (IP), service
that may be carried out over a 2G/3G network"; and (2) "an Internet
Protocol (IP) packet switched service may be carried out over a L TE
network and is distinct from a legacy service." Reply Br. 4. Further,
Appellants assert that the Specification "clearly defines the scope of the
'legacy service' limitation by clearly outlining what is meant by the term
'legacy service' (e.g. circuit switched, non-IP) and what is not meant by the
term 'legacy service' (e.g. IP packet switched)." Id.
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Application 12/849,433
The Examiner identifies two plausible constructions for the "wherein"
limitation, i.e., as relating to an "outdated" service or an "outdated" request.
Final Act. 3; see Spec. ,r,r 1-2, 15-16, 19, 31-35, 44--46, 56, Title, Figs.
1 a-1 d, 3--4. If a claim limitation is "amenable to two or more plausible
claim constructions, the US PTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable ... as indefinite." Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). Consequently, we
sustain the § 112 ,r 2 rejection of claims 1, 10, and 18. 4
The§ 103(a) Rejection of Claims 1, 2, 4, 7, 10, 14, 16, and 18-20
INDEPENDENT CLAIMS 1, 10, AND 18
Appellants argue that the Examiner erred in rejecting claims 1, 10,
and 18 because Bernath fails to disclose or suggest the "wherein" limitation.
App. Br. 5-7; see Reply Br. 6-7. More specifically, Appellants assert that
Bernath "use[s] legacy, or outdated networks to work with new services,"
while the claimed invention "use[ s] a plurality of networks to handle legacy,
4 We note that the Specification does not include the word "outdated." Thus,
in the event of continued prosecution, the Examiner should consider whether
the Specification provides written-description support for the "wherein"
limitation, i.e., the phrase "legacy service request being outdated," and the
applicability of a rejection under 35 U.S.C. § 112 ,r 1. Moreover, according
to Appellants, "legacy service request being outdated" ( emphasis added) is
purportedly supported by paragraphs 2, 29, 31, and 44 of the Specification.
App. Br. 2 (citing Spec. ,r,r 2, 29, 31, 44). Although other portions of the
Specification may support this limitation, we note the cited paragraphs do
not support this limitation. See Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane) (explaining that a
description that merely renders the invention obvious does not satisfy the
written-description requirement).
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Application 12/849,433
or outdated service requests." App. Br. 6. In addition, Appellants contend
that Bernath discloses "allowing the new service request of the new [push-
to-talk] PTT devices to access services or functions that are part of an
outdated, legacy network system" and "fails to disclose a situation where the
network is attempting to handle an outdated or legacy service request." Id.
at 6-7 (citing Bernath ,r,r 9, 49).
Appellants' arguments do not persuade us of Examiner error because
the Examiner finds that Bernath discloses push-to-talk (PTT) devices that
"access[] outdated legacy services and functions." Ans. 3 (citing Bernath
,r,r 9, 49); see Final Act. 4--5 (citing Bernath ,r,r 9, 49). Bernath describes
PTT devices as "packet switched end-user devices" with IP addresses.
Bernath ,r,r 1, 39. Bernath distinguishes PTT services from "circuit-switched
cellular services." Id. ,r 4. Bernath discloses an embodiment where an
enhanced proxy provides PTT devices with services "from legacy
telecommunications networks," for example, a public switched telephone
network (PSTN) with operator and voicemail services. Id. ,r,r 6-9, 32,
48--49, Figs. 1, 2A-2B.
Consequently, Bernath teaches or suggests the "wherein" limitation in
claims 1, 10, and 18. Hence, we sustain the§ 103(a) rejection of the
independent claims.
In the Reply Brief-and for the first time on appeal-Appellants
attempt to distinguish the claims from Bernath by arguing that the claims
require handling a request for a legacy service "among a plurality of
networks when the corresponding legacy network is not included in the
plurality of networks." Reply Br. 6-7. This new argument is not responsive
to an argument in the Answer, and Appellants have not shown good cause
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Application 12/849,433
for us to consider it. See Reply Br. 6-7. Thus, we decline to consider the
argument. See 37 C.F.R. § 41.4I(b )(2); see also Ex parte Borden,
93 USPQ2d 1473, 1475 (BPAI 2010) (informative) (discussing procedural
difficulties with belated arguments). We note, however, that Appellants'
belated claim interpretation excludes the preferred embodiments. See Spec.
,r,r 15-56, Figs. la-Id, 3-6. "Such an interpretation is rarely, if ever,
correct." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996).
DEPENDENT CLAIMS 2, 4, 7, 14, 16, 19, AND 20
Claims 2, 4, and 7 depend directly from claim 1; claims 14 and 16
depend directly from claim 1 O; and claims 19 and 20 depend directly or
indirectly from claim 18. Appellants do not argue patentability separately
for these dependent claims. App. Br. 4--7; Reply Br. 6-7. Because
Appellants do not argue the claims separately, we sustain the§ I03(a)
rejection of these dependent claims for the same reasons as the independent
claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103(a) Rejection of Claim 5
Claim 5 depends indirectly from claim 1 and reads as follows (with
formatting added for clarity):
5. The method of claim 4,
wherein when the service data is incompatible with the
optimal delivery network, the method further comprises:
redirecting the service data to a network component to
configure the service data into a compatible format.
App. Br. 14 (Claims App'x).
Appellants argue that the Examiner erred in rejecting claim 5 because
Forte-McRobbie "fails to show any determination regarding whether any
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Application 12/849,433
service data is 'incompatible"' and "fails to show any 'redirection' of service
data." App. Br. 10. In particular, Appellants contend that Forte-McRobbie
discloses "converting data between different IP and non-IP formats" and "is
merely concerned with data format conversion." Reply Br. 8-9 ( citing
Forte-McRobbie ,r,r 74--81, Fig. 2). Further, Appellants assert that the
Examiner "improperly interpret[ s] F orte-McRobbie to teach limitations it
does not describe." Id. at 9.
Appellants' arguments do not persuade us of Examiner error because
the Examiner finds that Forte-McRobbie discloses that: (1) "IP voice traffic
can be converted to a current circuit switched format via [a] VoIP
channelized router"; and (2) "voice traffic in a circuit switched format can
be converted to an IP format by [the] VoIP channelized router." Ans. 3
(quoting Forte-McRobbie ,r 64); see Final Act. 7 (citing Forte-McRobbie
,r 64). The Examiner explains that "the determination is being made that the
circuit switched format is incompatible with the IP format and as a result of
the determination[,] the circuit switched format is being converted to IP
format and vice versa." Ans. 3--4.
An obviousness analysis "can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). A person of ordinary
skill "must be presumed to know something" about the art "apart from what
the references disclose." In re Jacoby, 309 F.2d 513,516 (CCPA 1962).
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int 'l, 550 U.S. at 421. Accordingly, a person of ordinary
skill would appreciate that Forte-McRobbie's conversions occur due to
incompatibilities between IP traffic and non-IP traffic.
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Further, Forte-McRobbie discloses that the VoIP channelized router
communicatively couples (1) IP network telephones to one another in a local
IP network and (2) IP network telephones to non-IP network telephones in a
remote non-IP network, e.g., a circuit-switched network. Forte-McRobbie
,r,r 64, 66, Fig. 1. The VoIP channelized router includes various
components, and when the router forwards IP traffic to a non-IP network,
the data are directed to the components in the router that accomplish
conversion instead of the components that do not. Id. ,r,r 67----69.
Consequently, F orte-McRobbie teaches or suggests claim 5 's "redirecting"
limitation. See Final Act. 7; Ans. 3--4; see also Spec. ,r,r 32, 37, 45.
Because Appellants' arguments do not persuade us of Examiner error,
we sustain the§ 103(a) rejection of claim 5.
The§ 103(a) Rejections of Claims 3, 6, 8, 9, 11-13, 15, and 17
Claims 3, 6, 8, and 9 depend directly or indirectly from claim 1; and
claims 11-13, 15, and 17 depend directly or indirectly from claim 10. For
these dependent claims, Appellants assert that the additionally cited
secondary references do not "cure the deficiencies of Ramachandran and
Bernath discussed above" for the independent claims. App. Br. 8-9, 11-12.
Appellants' assertions do not amount to a separate patentability arguments.
The rules "require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art." In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (citing 37 C.F.R. § 4I.37(c)(l)).
Because Appellants do not argue the claims separately, we sustain the
§ 103(a) rejections of these dependent claims for the same reasons as the
independent claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
We affirm the rejection of claims 1, 10, and 18 under 35 U.S.C.
§ 112 if 2.
We affirm the rejections of claims 1-20 under 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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