Ex Parte Klaghofer et al

Patent Trial and Appeal Board

Oct 3, 2013

10490526 (P.T.A.B. Oct. 3, 2013)

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.
10/490,526 03/22/2004 Karl Klaghofer 2001P17583WOUS 6481
7590 10/04/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
ALI, FARHAD
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
10/04/2013 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 KARL KLAGHOFER, HARALD MULLER,
HERIBERT MULLER, and JURGEN TOTZKE
____________

Appeal 2011-006648
Application 10/490,526
Technology Center 2400
____________

Before ERIC B. CHEN, BRUCE R. WINSOR,
and MIRIAM L. QUINN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 15-17, 19-25, and 31-40, which constitute all the claims pending in
this application. Claims 1-14, 18, and 26-30 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was held September
10, 2013.

1
“The real party in interest is Siemens Enterprise Communications GmbH
and its related United States company Siemens Enterprise Communications
Inc.” App. Br. 1.
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We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to real time connections e.g. for voice,
video, or multimedia communication routed via packet oriented
communication networks such as LANs (Local Area Networks) or WANs
(Wide Area Networks), and more particularly to so-called Internet
telephony, which is also frequently termed VoIP (Voice/Video over Internet
Protocol) telephony. See Spec. 1:6-13. Claim 31, which is illustrative of the
invention, reads as follows:
31. A network gateway device comprising:
a first data interface configured to communicate with a
first communication network, the first communication network
having a first transport protocol and a first connection control
protocol;
a second data interface configured to communicate with a
second communication network, the second communication
network having a second transport protocol and a second
connection control protocol, the second connection control
protocol different than the first connection control protocol;
a signaling gateway connected to the first and second
data interfaces, the signaling gateway comprised of a
conversion device configured to convert data in the first
connection control protocol into data in the second connection
control protocol and also convert data in the second connection
control protocol into data in the first connection control
protocol;
a media gateway logically separated from the signaling
gateway, the media gateway comprised of a media conversion
device for converting between different media encoding
schemes; and
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the signaling gateway configured to communicate with
the media gateway via a media gateway control protocol to
control the media gateway.
Claims 15-17, 21-25, 31-34, and 36-39 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Agrawal (US 7,002,989 B2; issued Feb. 21,
2006; filed Apr. 4, 2001) and Hundscheidt (US 7,203,163 B1; issued Apr.
10, 2007; filed Aug. 18, 2000). Ans. 4-13.
Claims 19, 20, 35, and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Agrawal, Hundscheidt, and Pulkka (US 2003/0169751 Al;
publ. Sept. 11, 2003; filed May 28, 2001). Ans. 13-14.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Sept. 7, 2010; “Reply Br.” filed Jan. 6, 2011) and the Record
(Transcript) of Oral Hearing (“Tr.”) for the positions of Appellants and the
Answer (“Ans.” mailed Nov. 19, 2010) for the positions of the Examiner.
Only those arguments actually made by Appellants have been considered in
this decision. References herein to the Final Rejection are to the Final
Rejection from which Appeal is taken (mailed Mar. 24, 2009). References
herein to the Specification are to the substitute Specification having 12 pages
and 39 numbered paragraphs (“Spec.” filed Mar. 22, 2004), as twice
amended (filed Aug. 17, 2007 and June 17, 2009). Arguments that
Appellants did not make in the Briefs or at the Oral Hearing have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).

ISSUES
Appellants argue the patentability of independent claim 31. See App.
Br. 9-12. Appellants argue the patentability of independent claim 36 relying
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on the arguments made for claim 31. App. Br. 13. Appellants argue the
separate patentability of dependent claim 33. App. Br. 12-13. Appellants
argue the patentability of claim 38 relying on the arguments made for claim
33. App. Br. 13. Appellants do not separately argue the patentability of
claims 15-17, 19-25, and 32, 34, 35, 37, 39 and 40. See App. Br. 9, 13-14.
Therefore, we will discuss the appeal by reference to claims 31 and 33.
The issues raised by Appellants’ contentions are as follows:
Has the Examiner provided some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness?
Does the combination of Agrawal and Hundscheidt teach or suggest
“the signaling gateway configured to communicate with the media gateway
via a media gateway control protocol to control the media gateway,” as
recited in claim 31?
Does the combination of Agrawal and Hundscheidt teach or suggest
“the network gateway device is configured to substantially avoid
communication between a connection control device of the first
communication network and a connection control device of the second
communication network,” as recited in claim 33?

ANALYSIS
Articulated Reasoning
Appellants contend that the Examiner has not supported the rejections
under 35 U.S.C. § 103(a) with “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). App. Br. 8; Reply Br. 1.
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The Examiner finds that it would have been obvious to combine
Agrawal and Hundscheidt because “there is some teaching, suggestion, or
motivation in the prior art that would have led one of ordinary skill to
modify the prior art reference or to combine prior art reference teachings to
arrive at the claimed invention. . . .” Ans. 18. In particular, the Examiner
finds as follows:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to create the invention of
Agrawal to include a media gateway logically separated from
the signaling gateway as taught by Hundscheidt in order that
“The media gateway control protocol allows to signal the
corresponding control information to the signalling gateway
where the signalling conversion takes place” ([Hundscheidt]
Columns 16-17, lines 65-5).
Ans. 9 (second brackets in original).
Furthermore, the examiner provides additional
motivation and reasoning from the Hundscheidt reference in
Column 5 lines 56-60 which teaches “In other words, the
present invention allows for each logical or physical partition of
the storage node, interworking node, and parameter support
node which ever is the appropriate way to achieve the service
parameter exchange and payload data forwarding between the
different networks.”
Ans. 18.
The Examiner has articulated a reasoning with underpinnings drawn
from the Hundscheidt reference (Ans. 9, 18 (citing Hundscheidt col. 5, ll.
56-60; col. 16, l. 65—col. 17, l. 5)). Appellants’ contentions address the
Examiner’s findings regarding the underpinnings drawn from Hundscheidt
at column 5. See Reply Br. 1. However, Appellants’ contentions do not
specifically address the sufficiency of the Examiner’s findings regarding the
underpinnings drawn from Hundscheidt at columns 16 and 17. See App Br.
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8; Reply Br. 1. Accordingly, Appellants have failed to persuade us that the
Examiner did not provide “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” KSR, 550 U.S.
at 418.
Appellants’ contentions that the art of record teaches away from the
claimed invention are discussed below with regard to the specific claims.
Claim 31
Appellants contend that “[t]here is no signaling gateway that controls
a media gateway taught by Hundscheidt et al. The media gateway and
signaling gateway are responsible for different functions and controlled by a
media gateway controller, as explicitly taught at Column 15, lines 60-67 and
Column 16, lines 1-2).” App. Br. 10; see also Reply Br. 2-4; Hundscheidt
Fig. 7. The Examiner explains as follows:
Hundscheidt teaches in Columns 16-17 lines 57-3, “Here,
the media gateway control protocol allows to request the
allocation of corresponding media conversion devices in a
media gateway. The corresponding messages of the service
differentiation information is included. The media gateway
may, e.g., use the priority information to allocate devices for
other subscribers. Furthermore, the media gateway may contain
the service differentiation mapping table. Further, the mapping
table may also be stored in a signaling gateway. In that
case, the signaling gateway would need a mechanism to
indicate the corresponding service differentiation
information to the media gateway. The media gateway
control protocol allows to signal the corresponding control
information to the signaling gateway where the signaling
conversion takes place.” The examiner asserts that the
signaling gateways mechanism to indicate the corresponding
service differentiation information to the media gateway, as
taught by Hundscheidt above, constitutes a communication with
the media gateway via a media gateway control protocol to
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control the media gateway which is analogous to the appellant's
argued limitation.
[T]he examiner asserts that any communication with the
media gateway via a media gateway control protocol that can
control the media gateway reads upon the appellant's claim
limitations regardless of whether the signaling gateway has sole
control over the media gateway.
Ans. 19-20.
Appellants contend that “[t]he plain meaning of the term ‘control’ is
‘To exercise authoritative or dominating influence over; direct.’” Reply Br.
4 (citing THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE, (4
th
ed. 2000) (updated 2009), available at
http://www.thefreedictionary.com/control (January 6, 2011)). Appellants
assert the following:
The signaling gateway taught by Hundscheidt et al., only
functions per control signaling it receives from the media
gateway controller 18. The signaling gateway never exerts any
dominating influence or authoritative influence over the media
gateway 20 or media gateway controller 18.
There is no broad interpretation of the term "control" that
can ignore this fact or otherwise suggest that the signaling
gateway taught by Hundscheidt et al. controls the media
gateway.
Reply Br. 5. However, the term “control” in claim 1 must be given its
broadest reasonable interpretation in light of the Specification, see In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations
from the Specification into the claims, SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
A pertinent definition is “control . . . vt . . . 2 a: to exercise
restraining or directing influence over: REGULATE . . . .” MERRIAM-
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WEBSTER’S COLLEGIATE DICTIONARY 252 (10th ed. 1999); compare THE
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed.
2000) (“control . . . tr.v. . . . 2. To adjust to a requirement; regulate.”);
available at http://www.thefreedictionary.com/control (retrieved September
5, 2013). Appellants have not pointed us to any part of the Specification that
would require a narrower interpretation. We construe “control” as used in
claim 31 to encompass “exercis[ing]. . . directing influence over.” We
further find that this broad, but reasonable, meaning of the term “control”
encompasses the function of the mapping table in Hundscheidt’s signalling
gateway 20 relied on by the Examiner. Therefore, we find, as did the
Examiner, that Hundscheidt teaches a signalling gateway controlling a
media gateway.
Appellants contend that Miller (US 7,139,263 B2; Nov. 21 2006)
2
,
Pulkka, and Hundscheidt each teach away from a signalling gateway that is
logically separate from a media gateway. Appellants clarified at the Oral
Hearing that Appellants’ contentions regarding the logically separate media
and signalling gateways were directed to the control of the media gateway
by the logically separate signalling gateway. Tr. 7:1-7. We are unpersuaded
that Hundscheidt teaches away from the signalling gateway controlling a
logically separate media gateway because, as discussed supra, Hundscheidt
teaches a signalling gateway controlling a media gateway. As to the
teachings of Miller and Pulkka, even accepting Appellants’ contentions that
they each teach a configuration of the signalling gateway, media gateway,
and media gateway controller different from the configuration recited in the

2
Miller does not appear to have been relied on by the Examiner or otherwise
to have been of record in the appeal.
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claim, we are not persuaded that either reference teaches away from the
claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(If a prior art reference discloses a different solution to a similar problem, it
does not teach away from the claimed subject matter unless the prior art
reference also criticizes, discredits or otherwise discourages the solution
claimed). Appellants do not persuasively direct us to any passage of
Hundscheidt, Miller, or Pulkka, that criticizes, discredits, or otherwise
discourages a configuration in which a signalling gateway exercises control
over a media gateway.
Appellants have failed to persuade us of error in the rejection of
claim 31. Accordingly, we sustain the rejection under 35 U.S.C. § 103(a)
over Agrawal and Hundscheidt of (1) claim 31; (2) independent claim 36,
which was argued relying on the arguments made for claim 31 (App. Br.
13); (3) claims 15-17, 21-25, 32, and 34, which depend from claim 31 and
were not separately argued with particularity (App. Br. 9); and (4) claims 37
and 39, which depend, directly or indirectly, from claim 36 and were not
separately argued with particularity (App. Br. 13). We also sustain the
rejection under 35 U.S.C. § 103(a) over Agrawal, Hundscheidt, and Pulkka
of (5) claims 19, 20, and 35, which depend from claim 1 and were not
separately argued with particularity (App. Br. 13); and (6) claim 40, which
depends indirectly from claim 36 and was not separately argued with
particularity (App. Br. 14).
Claim 33
Appellants contend that the combination of Agrawal and Hundscheidt
does not teach or suggest that “the network gateway device is configured to
substantially avoid communication between a connection control device of
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the first communication network and a connection control device of the
second communication network.” See App. Br. 12-13; Reply Br. 7. More
specifically Appellants argue as follows:
Agrawal et al. expressly require network control devices
to be involved in RTP data processing, such as media data or
other realtime transport protocol data. (Agrawal et al., Col. 5,
lines 20-34). Further, Hundscheidt et al. teach that routers R
must further process any packets sent via media gateway
controller 18 and the media and signaling gateways 20 and 22.
(Hundscheidt et al. at Figure 7, Col. 16, lines 3-6).
However, Appellants’ Specification describes the connection control devices
as a gatekeeper GK. See Spec. ¶ [0028]; see also Tr. 8:22-9:11. In other
words, the connection control devices are devices to establish and control
connections. See id. Appellants do not explain why Agrawal’s teaching that
“the IWF 100 shall not process RTP data going in and out from media
switching fabric 110, but rather shall leave any RTP data processing to
respective networks 160 and 170” (Agrawal, col. 8, ll. 44-49 (emphasis
added)) requires substantial communication between the connection control
devices of the respective networks.
Appellants have failed to persuade us of error in the rejection of
claim 33. Accordingly, we sustain the rejection under 35 U.S.C. § 103(a)
over Agrawal and Hundscheidt of (7) claim 33; (8) claim 38, which was
argued relying on the arguments made for claim 33 (App. Br. 13).

ORDER
The decision of the Examiner to reject claims 15-17, 19-25, and 31-40
is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

kis