Ex Parte Rosenwald et al

Patent Trial and Appeal Board

Feb 25, 2014

11731018 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY A. ROSENWALD and
JOSEPH D. KRALOWETZ
____________________

Appeal 2011-008130
Application 11/731,018
Technology Center 2400
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008130
Application 11/731,018

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to method and apparatus for verifying
signaling and bearer channels in a packet switched network. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of verifying integrity of a logical channel
traversing a Voice over Internet Protocol (VoIP) network, the
method comprising:

transmitting, via a signaling channel, a signal known to
cause a device to respond with bearer information via a bearer
channel over the VoIP network;

generating pulse code modulation (PCM) signals as a
function of the bearer information;

transmitting the PCM signals to a subscriber line
interface circuit (SLIC) via a bus; and

evaluating the bearer information based on the PCM
signals to verify integrity of the bearer channel on the VoIP
network.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Goodman US 7,173,910 B2 Feb. 6, 2007.
Czerwiec et al. US 7,274,669 B2 Sept. 25, 2007.
Harrington et al. US 2007/0177514 A1 Aug. 2, 2007.
Chung et al. US 2008/0285764 A1 Nov. 20, 2008.
Appeal 2011-008130
Application 11/731,018

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REJECTIONS

Appellants seek our review of the following rejections:
Claims 1-5 and 7-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goodman in view of Czerwiec.

Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goodman in view of Czerwiec, as applied to the parent
claim, in view of Chung.

Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goodman in view of Czerwiec and in view of Harrington.

OPINION

ANALYSIS
Claims 1-5 and 7-20
The Examiner states:
• On page 6 of the Appeal Brief, the Appellant contends that
Czerwiec fails to teach transmitting the PCM signals to a
subscriber line interface circuit via a bus.
• The Examiner notes that the Examiner has relied on Goodman
to teach the PCM signals and not Czerwiec. The Examiner has
relied on Czerwiec to teach transmitting signals to a subscriber
line interface circuit (i.e. SLI/LPF Circuit 312) via a bus (col. 6
lines 46-53).

(Ans. 14-15.) From our review of column 6 of the Czerwiec reference, we
find no description of communications signals similar or related to PCM
signals. The Examiner maintains the Czerwiec reference describes
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Application 11/731,018

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transmitting “signals” to a subscriber line interface circuit via a bus. (Ans.
5, 15.) The Examiner does not identify any specific bus in the Czerwiec
reference or the PCM signals. In the rejection, the Examiner identifies
columns 3, 4, and 6 regarding PCM signals. Appellants contend that PCM
signals are disclosed generally, but there is no disclosure of how they are
communicated or used in the Goodman reference. (App. Br. 6.) From our
review of the relied upon portions of the Goodman reference, we agree with
Appellants. We find the Examiner’s piecemeal reconstruction of the
claimed invention to be based upon hindsight reconstruction where the
Goodman reference mentions PCM signals as an option, but no
communication of them and the general communication of the Czerwiec
reference (via a bus) appears to have no relationship to the teachings of the
Goodman reference.
While we understand the Examiner’s rejection and identification of
the parts of the claimed invention from each of the two prior art references,
the Examiner has not set forth a convincing line of reasoning as to how the
PCM signals generally disclosed in the Goodman reference would be
transmitted on the bus of the Czerwiec reference. (See generally App. Br. 7-
8.)
Appellants contend:
[E]ven if Czerwiec were read as providing such a teaching, said
teaching would not be applicable to Goodman. As described
above, Goodman utilizes a test probe, which is in the form of a
network node, to initiate a call and receive a voice file.
Goodman’s test probe is a proprietary, stand-alone device that
is “connected to a gateway,” “uses an [Internet Service Domain
Name] ISDN Primary Rate Interface (PRI) service,” “store[s] a
sample or reference voice file” and “a software algorithm
implementing a perceptual voice call listening quality test
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model,” and sets up a call to “transmit and receive the reference
voice files” (col. 3, lines 12-18, 28-34 and 52-67). This test
probe does not involve a SLIC, nor a bus connected thereto.
For example, Goodman’s test probe uses the received voice file
to determine the “voice quality of a call” by comparing the
received voice file against a reference voice file stored at the
test probe (col. 3, line 62 - col. 4, line 6). Goodman would have
no purpose to incorporate a SLIC in this process, because there
is no benefit in testing a SLIC that would have no other
function and serves no purpose in the test probe. Therefore,
one of ordinary skill in the art would not be motivated to
modify Goodman’s test probe to be configured with Czerwiec
to “transmit[] the PCM signals to a subscriber line interface
circuit (SLIC) via a bus,” as recited in Appellants’ Claim 1.

(App. Br. 6-7.)

We agree with Appellants’ contentions and find the Examiner’s
responsive arguments (Ans. 15) to be a generalized restatement of the
position advanced in the statement of the rejection. We find the Examiner’s
further commentary to be conclusory and not well supported by the express
teachings identified in the statement of the rejection. Thus, we are left to
speculate as to the how the combined teachings would result in the claimed
invention. Therefore, we cannot sustain the rejection of independent claim 1
and its respective dependent claims.
Independent claim 11 contains similar limitations as independent
claim 1. Therefore, we cannot sustain the rejection of independent claim 11
and its respective dependent claims.
Claim 6
Additionally, the Examiner has not identified how the teachings
of the Chung reference remedy the deficiency noted above with
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respect to independent claim 1. Therefore, we cannot sustain the
rejection of dependent claim 6.
Claims 21-23
With respect to independent claim 21, the Examiner additionally relies
upon the Harrington reference in combination with the Goodman and
Czerwiec references. We note that independent claim 21 does not contain
the same limitation noted above with respect to independent claims 1 and 11
regarding the PCM signals. Furthermore, Appellants’ sole argument is a
general argument for patentability and does not specifically address the
merits of independent claim 21. Appellants generally contend that “one of
ordinary skill in the art would find no motivation in Harrington, alone or in
combination with Goodman and Czerwiec, to implement an ATA to initiate
a call and convert a digital representation of a test tone to verify integrity of
a VoIP session as recited in Claim 21.” (App. Br. 10.) The Examiner
provides responsive arguments in the Answer, and Appellants did not file a
Reply Brief to respond thereto. (Ans. 17.) Therefore, Appellants do not
show error in the Examiner’s conclusion of obviousness of representative
independent claim 21 and dependent claims 22 and 23 grouped therewith.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1-20 based upon obviousness.
The Examiner did not err in rejecting claims 21-23 based upon obviousness.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-20 is
reversed, and the Examiner’s rejection of claims 21-23 is affirmed.
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Application 11/731,018

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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)(iv).

AFFIRMED-IN-PART

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