Ex Parte Uhler

Patent Trial and Appeal Board

Nov 29, 2016

12042586 (P.T.A.B. Nov. 29, 2016)

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.
12/042,586 03/05/2008 Stephen Alan Uhler SUNM 060349 - US - NP 3642
51344 7590 12/01/2016
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN ALAN UHLER
Appeal 2015-007836
Application 12/042,586
Technology Center 2400
Before JOHN A. EVANS, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1,2, 4—13 and 15—17, which are all
the claims pending in the application. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.2
1 The Appeal Brief identifies Oracle America, Inc., formerly known as Sun
Microsystems, Inc., as the real party in interest. App. Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed January 12, 2015, “App. Br.”), the Reply
Appeal 2015-007836
Application 12/042,586
STATEMENT OF THE CASE
The claims relate to a method for locating an internet phone. See
Abstract.
The Invention
Claims 1 and 12 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 1, which is reproduced
below with some formatting added:
1. A system for determining a physical location associated
with an Internet phone having a network identifier and a phone
identifier, the system comprising:
a first module including a port having a port identifier and
configured to receive the phone identifier and network identifier
via the port;
a second module configured to receive the phone
identifier; and
a third module configured to store a mapping of the phone
identifier with the network identifier, a mapping of the port
identifier with the network identifier, and a mapping of the port
identifier with the physical location associated with the Internet
phone to permit the determination of the physical location
associated with the Internet phone based on the phone identifier,
wherein the first module is further configured to, in response to
receiving via the port the phone identifier and network identifier
without the port identifier, detect the port identifier associated
with the port and communicate the network identifier and port
identifier to the third module to update the mappings.
Brief (filed August 24, 2015, “Reply Br.”), the Examiner’s Answer (mailed
June 23, 2015, “Ans.”), the Final Office Action (mailed August 11, 2014,
“Final Act.”), and the Specification (filed March 5, 2008, “Spec.”) for their
respective details.
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Appeal 2015-007836
Application 12/042,586
References and Rejections
The Examiner relies upon the prior art as follows:
Ghahremani, et al., US 2005/0180429 A1 Aug. 18, 2005
Moon, et al., US 2006/0120517 Al June 8, 2006
Claims 1, 2, 4—13, and 15—17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Moon and Ghahremani. Final Act. 3—10.
ANALYSIS
We have reviewed the rejection of Claims 1,2, 4—13, and 15—17 in
light of Appellant’s arguments that the Examiner erred. We agree with
Appellant’s conclusions. We consider Appellant’s arguments seriatim, as
they are presented in the Appeal Brief, pages 3—5.
Claims 1,2,4—13, and 15-17: Obviousness over Moon and Ghahremani
Receiving via the port the phone identifier and network identifier
without the port identifier.
The Examiner finds Moon substantially teaches each claimed
limitation, including delivering the MAC address and port number
information via an Ethernet switch upon occurrence of an emergency call.
Final Act. 5. However, the Examiner finds Moon fails to teach the Ethernet
switch receives the claimed “phone identifier” via the port, wherein “the first
module is further configured to, in response to receiving via the port the
phone identifier . . . without the port identifier . . . detect the port identifier
associated with the port,” as claimed. Id.
The Examiner finds Ghahremani teaches an incoming call is
processed at a multi-service network switch comprising Ethernet switch
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Appeal 2015-007836
Application 12/042,586
modules with associated Ethernet ports. Id. Ghahremani teaches the
Ethernet switch detects an incoming call at a port and the characteristics of
the call are utilized for selecting a router for call processing. Id. When a
connection is made, the switch creates a port interface (PIF) object,
including information such as a port number. Id. Therefore, the Examiner
finds it would have been obvious to combine the teachings of Moon and
Ghahremani so as to detect the port identifier associated with a port when
receiving a phone number at the given port. Id.
Appellant contends Moon’s Ethernet switch has no need to detect the
port identifier, because the port identifier is already being provided to the
switch by the communications device. App. Br. 4.
The Examiner does not dispute Appellant’s characterization of
Moon’s teachings. Rather, the Examiner finds Ghahremani teaches an
incoming call is processed by a multi-service network switch including
associated Ethernet ports. Ans. 3. The Examiner finds when Ghahremani’s
switch detects an incoming call, the switch creates a port interface object,
which includes a port number.
The Examiner’s combination modifies Moon (wherein an incoming
call provides a port identifier to the switch) with Ghahremani (wherein the
switch creates the port identifier). See Ans. 3—4. However, where the
Examiner’s secondary reference adds features already present in a primary
reference, there is no motivation to combine. See Ex parte Tessier, Appeal
2012-006616 (PTAB October 2, 2014). Without such motivation, we may
not sustain a rejection under 35 U.S.C. §103. Id.
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Appeal 2015-007836
Application 12/042,586
DECISION
The rejections of Claims 1, 2, 4—13 and 15—17 under 35 U.S.C.
§ 103(a) are REVERSED.
REVERSED
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