Ex Parte Shin

Patent Trial and Appeal Board

Mar 24, 2016

11496485 (P.T.A.B. Mar. 24, 2016)

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.
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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.
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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
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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'
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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
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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
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