Ex Parte Ooki

Patent Trial and Appeal Board

Oct 15, 2013

11168479 (P.T.A.B. Oct. 15, 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.
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-
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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.
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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,
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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.

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REVERSED

ke