Ex Parte OokiDownload PDFPatent Trial and Appeal BoardOct 15, 201311168479 (P.T.A.B. Oct. 15, 2013) 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. 11/168,479 06/29/2005 Yasuomi Ooki 040447-0265 2120 22428 7590 10/16/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER HUSSAIN, FARRUKH ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 10/16/2013 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 YASUOMI OOKI ____________ Appeal 2011-009654 Application 11/168,4791 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and JUSTIN BUSCH, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The Real Party in Interest is NEC Infrontia Corporation. Appeal 2010-009654 Application 11/168,479 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1-12 and 15-30, which are all the claims remaining in the application. Claims 13 and 14 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on October 8, 2013. We REVERSE. The present invention relates generally to an exchange system which makes it possible to know presence information of a terminal connected to one system, at a terminal connected to the other system. See Spec., 4:2-4. Claim 1 is illustrative: 1. An exchanger connected to external terminals and an external server through a network and connected to exchange-connected terminals, the exchanger comprising: an exchange server portion; pseudo exchange-connected terminal portions; pseudo external terminal portions; a database, and a pseudo external terminal & pseudo exchange- connected terminal portion, wherein the exchange server portion is adopted to connect the exchange-connected terminals to each other; the pseudo exchange-connected terminal portions correspond to respective external terminals and function as exchange-connected terminals with respect to the exchange server portion; the pseudo external terminal portions correspond to respective exchange-connected terminals and function as external terminals with respect to the external server; the database retains corresponding relations between a first user identification used in the exchange- Appeal 2010-009654 Application 11/168,479 3 connected terminals and a second user identification used in the external terminals; the pseudo external terminal & pseudo exchange- connected terminal portion retrieves the second user identification associated with the first user identification from the database, retrieves the first user identification associated with the second user identification from the database, functions as an exchange-connected terminal with respect to the exchange server portion by using the first user identification, and instructs one of the pseudo external terminal portions to function as a corresponding external terminal with respect to the external server based on the second user identification; access from a user to the exchanger is carried out through at least one of the exchange-connected terminals; and the pseudo exchange-connected terminal portions, the pseudo external terminal portions and the pseudo external terminal & pseudo exchange-connected terminal portion are independent with respect to one another. Appellant appeals the following rejection: Claims 1-12 and 15-30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Montville (U.S. 6,356,937 B1, Mar. 12, 2002) and Bennett (U.S. 7,631,343 B1, Dec. 8, 2009). ANALYSIS Our representative claim, claim 1, recites, inter alia, “access from a user to the exchanger is carried out through at least one of the exchange- connected terminals; and the pseudo exchange-connected terminals portions, the pseudo external terminal portions and the pseudo external terminal & pseudo exchange-connected terminal portion are independent with respect to one another.” Independent claims 15, 19, and 21 recite commensurate limitations. Appeal 2010-009654 Application 11/168,479 4 Issue: Did the Examiner err in finding that Bennett teaches and/or suggests access from a user to the exchanger is carried out through at least one of the exchange-connected terminals and the pseudo portions are independent with respect to one another, as set forth in claim 1? Appellant contends that Bennet “does not teach or suggest that the terminal 15 or terminal 16 functions as an exchanger (that is, it does not function as a device for providing access to an external terminal through a network” (App. Br. 18; see also Reply Br. 2). Appellant further contends that “the final Office Action does not indicate which specific portions of Bennett correspond to” the claimed limitations “and as such has failed to make out a prima facie case of obviousness” (id. at 19). The Examiner found that “Bennett does teach or suggest that the terminal 15 or terminal 16 functions as an exchanger . . . the communication link (device) functions as an exchanger by providing a mechanism for local network communication (LAN) to reach off-site client terminals (external terminal)” (Ans. 22). We disagree with the Examiner. While we agree with the Examiner that Bennett’s terminal 15 and/or terminal 16 can reach off-site client terminals (see Bennett, col. 26, ll. 63- 66), we point out that the claimed “exchanger” performs far more functions than just reaching off-site clients (see claim 1). The Examiner has not adequately identified how the claimed limitations (i.e., pseudo portions) of the “exchanger” map to the teachings of Bennett. Nor has the Examiner clearly shown how the claimed pseudo exchange-connected terminal portions and exchange-connected terminals, which have the same functions, Appeal 2010-009654 Application 11/168,479 5 are disposed inside and outside of an exchanger, respectively, in Bennett and/or Montville. It is also unclear to us how the claimed independent pseudo portions read on Bennett’s Fig. 1, as proffered by the Examiner (see Ans. 23-24). The difficulty that we are having with the Examiner’s proffered evidence is that not all of the claimed features are mapped to the cited art, only portions thereof. We are therefore left to speculate as to the Examiner’s position – speculation that raises a number of questions. We cannot say, nor has the Examiner shown, how the specific findings teach all the specifics of the claimed exchanger. Nor will we speculate in that regard here in the first instance on appeal. The one who bears the initial burden of presenting a prima facie case of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if that burden is met, does the burden of coming forward with evidence or argument shift to the Appellant. Since the Examiner has failed to make this showing, there is no prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). We are therefore constrained by the record before us to find that the Examiner erred in rejecting independent claim 1, independent claims 15, 19, and 21 which recite commensurate limitations, and the dependent claims for similar reasons. DECISION We reverse the Examiner’s § 103(a) rejection. Appeal 2010-009654 Application 11/168,479 6 REVERSED ke Copy with citationCopy as parenthetical citation