Ex Parte ShinDownload PDFPatent Trial and Appeal BoardMar 24, 201611496485 (P.T.A.B. Mar. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111496,485 08/01/2006 58027 7590 03/28/2016 H.C. PARK & ASSOCIATES, PLC 1894 PRESTON WHITE DRIVE RESTON, VA 20191 FIRST NAMED INVENTOR Myung-Joon Shin 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. P3349USOO 6252 EXAMINER KASSIM, KHALED M ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 03/28/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PATENT@PARK-LAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MYUNG-JOON SHIN Appeal2014-006085 Application 11/496,485 Technology Center 2400 Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellant identifies SAMSUNG ELECTRONICS CO., LTD. as the real party in interest. App. Br. 3. Appeal2014-006085 Application 11/496,485 fNVENTION Appellant's invention relates to voice over internet protocol (VoIP) terminals and information management methods thereof. Abstract. Claim 1 is illustrative and reads as follows: 1. A Voice-over Internet Protocol (VoIP) terminal, comprising: a controller to transmit a first request message via a multicast packet for receiving terminal information to a network router associated with a multicast group having at least one terminal in response to receiving a request for the receiving terminal information, to transmit, to a server, a second request message via a unicast packet to receive the receiving terminal information in response to determining that a response to the first request message transmitted via the multicast packet has not been received, and to communicate with a receiving terminal m response to receiving the receiving terminal information. REJECTIONS Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tazaki (US Pub. No. 2006/0072469 Al; published Apr. 6, 2006) and Hori et al. (US 2004/0252691 Al; published Dec. 14, 2004). Claims 6-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tazaki, Hori, and Ono et al. (US 2004/0190542 Al; published Sept. 30, 2004). ANALYSIS We have considered Appellant's arguments, but do not find them persuasive of reversible error. 2 Appeal2014-006085 Application 11/496,485 Claims 1-6 Appellant contends that none of the cited portions of Tazaki teach or suggest a controller "to transmit a first request message via a multicast packet for receiving terminal information to a network router associated with a multicast group having at least one terminal in response to receiving a request for the receiving terminal information," as recited in claim 1. App. Br. 10. The Examiner found Tazaki's disclosure that user terminal Al sends a broadcast request message to at least terminals A2 and A3, requesting terminal information for terminal B3, meets the disputed limitation. Final Act. 2-3 (citing Tazaki i-fi-f 16, 22, 79, 87; Figs 8-10); Ans. 3 (citing Tazaki i-fi-f 16, 22, 25, 72, 87, Fig. 2). Appellant argues that the call request sent by user terminal A 1 to SIP server 4 is not "for receiving terminal information," as claim 1 requires, because a telephone number of terminal B3 is already known, the request sent to SIP server 4 is to connect terminal A 1 and terminal B3, and SIP server 4 does not send terminal information for B3 back to Al. App. Br. 11. Appellant further argues that Tazaki does not teach that the request transmitted by terminal Al is "in response to receiving a request for the receiving terminal information," as claim 1 requires. Id. at 12. Appellant also raises a new argument in the Reply Brief that Tazaki' s destination retrieval request does not correspond to the recited "first request message" because the destination retrieval request is sent to other user terminals, which do not meet the recited "network router" limitation of claim 1. Reply Br. 6. 3 Appeal2014-006085 Application 11/496,485 We are not persuaded of error. We agree with the Examiner that Tazaki discloses "a retrieval request sending unit" that sends a destination retrieval request for obtaining "destination information of the called terminal," and sends the request to at least one or more communication terminals belonging to a predetermined area. Final Act. 2 (citing Tazaki i-f 16, 11. 8-18, i-f 22). We also agree that Tazaki further discloses that terminal Al sends a multicast retrieval request to user terminals A2 and A3 asking for the IP address of the user terminal B3. Id. (citing Tazaki i-f 87, Fig. 8). Moreover, we agree with the Examiner that the recited limitation "in response to receiving a request for the receiving terminal information," is very broad (Ans. 3--4) and that, in order for the responsible portion of user terminal Al to send the destination retrieval request in Tazaki, it must have received a message or request instructing it to do so (Ans. 4). With regard to Appellant's argument that the user terminals to which the destination retrieval message is sent do not meet the recited "network router" limitation of claim 1, it is inappropriate for Appellant's to raise for the first time in the Reply Brief matters that could have been raised in the Appeal Brief. Appellant raised the argument earlier during prosecution (See Final Act. 12) and thus could have raised it in the Appeal Brief. Accordingly, we find that this belated new argument is technically waived. Exparte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."); 37 CPR 41.41 (b )(2). Nevertheless, we note that Appellant has not persuaded us that communication from one terminal to other terminals on a network would not involve sending the 4 Appeal2014-006085 Application 11/496,485 destination retrieval message to a network router for routing to the intended recipients. See Reply Br. 6. For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Tazaki and Hori teaches or suggests the disputed limitations related to the recited "first request message." Appellant next contends that the cited portions of Tazaki do not disclose "to transmit, to a server, a second request message via a unicast packet," as recited in claim 1, because Tazaki teaches that user terminal Al sends a call request message to SIP server 4 after a destination retrieval message is not received. Reply Br. 6-7. In Appellant's view, because Tazaki teaches that such request is sent when SIP server 4 has a fault or when a link between SIP server 4 and the user terminal Al has a fault, the sending of the call request message from Al to SIP server 4 is "non- implementable." Id. We are unpersuaded of error. The Examiner found Tazaki discloses that, when no destination retrieval response message containing the destination information is received from any user terminal, the user terminal sends a call request message to the SIP server 4. Ans. 5 (citing Tazaki i-f 107). We agree with the Examiner that the cited second request message would be performed via unicast because there is no need for broadcast communication (Ans. 5-6), and Appellant acknowledges that Tazaki makes that disclosure (Reply Br. 7 (citing Tazaki i-f 107)). Appellant's argument that sending the second request message is "non-implementable" because it "is contradictory to other portions of Tazaki" (Reply Br. 7 (citing Tazaki i-fi-185-87)) is not persuasive. Paragraph 107 of Tazaki discloses that the second message is sent "when no 'destination retrieval response message' 5 Appeal2014-006085 Application 11/496,485 containing the destination information is received from any user terminal," (Tazaki i-f 107) and is not limited to specific fault conditions disclosed elsewhere in Taziki. For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Tazaki and Hori discloses the disputed limitations related to the recited "second request message." Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 1, as well as the 35 U.S.C. § 103(a) rejections of claims 2---6, which depend from claim 1 and for which Appellant makes no arguments other than those made for claim 1. App. Br. 14. Claims 7-20 Appellant contends that the cited portions of Ono fail to disclose a VoIP terminal comprising an information requesting portion "to join a multicast group identified by a location registration complete message received from the server," as recited in claim 7. App. Br. 15. Appellant argues that Ono teaches that the mobile node MN identifies a multicast group to join and then sends the join instruction to the packet relay device to join the multicast group. Id. Appellant's arguments do not persuade us of error. Appellant attacks Ono individually, even though the Examiner relied on the combination of Tazaki, Hori, and Ono in rejecting claim 7. Moreover, the Examiner explained in the Answer that Ono discloses a relationship between the identified location and joining the multicast group. Ans. 7 (citing Ono i-fi-155, 98). The Examiner concluded, and we agree, that it would have been obvious to one of ordinary skill in the art to modify the invention of Tazaki and Hori to enable the VoIP terminal to "send a location registration 6 Appeal2014-006085 Application 11/496,485 message and join a multicast group for the purpose of informing the network of the location of the terminal and enable the desired application to service many users without overloading a network and resources in a server." Ans. 7-8. For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Tazaki, Hori, and Ono discloses the disputed limitation. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 7, as well as claims 8-12, which depend from claim 7 and for which Appellant makes no arguments other than those made for claim 7. See App. Br. 16. We also sustain the 35 U.S.C. § 103(a) rejection of independent claims 13, 14, and 19, for which Appellant refers to and relies on the arguments made for claims 1 and 7. Id. at 17. We also sustain the 35 U.S.C. § 103(a) rejection of claims 15-18 and 20, for which Appellants make no arguments other than those presented for their base claims. Id. DECISION The Examiner's decision to reject claims 1-20 is affirmed. 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation