Unify GmbH & Co. KG

Patent Trials and Appeals Board

Mar 30, 2020

14922379 - (D) (P.T.A.B. Mar. 30, 2020)

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.
14/922,379 10/26/2015 Heinrich Diebel 2005P12769US-932 7254
88087 7590 03/30/2020
Fritzsche Patent
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
PHUNG, LUAT
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINRICH DIEBEL
Appeal 2018-005125
Application 14/922,379
Technology Center 2400
Before BRADLEY W. BAUMEISTER, LINZY T. McCARTNEY, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 15–34. An oral hearing was held on February 12,
2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to applicant as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, “The real party in interest is Unify GmbH
& Co. KG, which is an affiliate of Atos SE.” Appeal Br. 1.
Appeal 2018-005125
Application 14/922,379
2
CLAIMED SUBJECT MATTER
The claims relate to establishing a connection from a circuit-switched
network to a packet-switched network. Spec. ¶ 2. For example, if a caller
dials a number from a pulse-dialing telephone, the invention detects the
dialed digits and compares them to authorized call numbers. Id. ¶ 27. The
comparison can be made on a string of digits that are not yet fully dialed.
Id. ¶ 28. The invention then converts the called number to an IP address.
Id. ¶ 29. According to the Specification, the invention eliminates wait times
for known call numbers when establishing a connection between circuit-
switched and packet-switched networks. Id. ¶ 31.
Claims 15, 23, and 29 are independent. Claim 29 is reproduced below.
29. A method for recognizing selected digits of a call
number comprising:
an exchange device storing a plurality of call numbers,
each of the stored call numbers having a complete number of
digits;
the exchange device receiving a string of digits having a
number of digits that is less than the complete number of digits
of each of the plurality of stored call numbers;
the exchange device continuously comparing the received
string of digits having the number of digits that is less than the
complete number of digits to the plurality of stored call numbers
to identify a desired call number of the plurality of stored call
numbers that corresponds to the received string of digits before
a complete number of digits for the desired call number is
received; and
the exchange device sending an inquiry to a server to learn
what IP address corresponds to the desired call number identified
from the continuously comparing of the received string of digits
as soon as the desired call number is identified from the
continuous comparing of the received string of digits to the
plurality of stored call numbers; and
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the exchange device converting the desired call number
into an IP address based on a response to the inquiry received
from the server.
Appeal Br. 39.
REFERENCES
The Examiner relies on the following references.
Name Reference Date
Theis US 5,917,904 June 29, 1999
Chen US 2002/0186686 A1 Dec. 12, 2002
Awada et al. US 2004/0052355 A1 Mar. 18, 2004
Ambrose US 2006/0002536 A1 Jan. 5, 2006
Sun et al. US 2007/0010264 A1 Jan. 11, 2007
Cisco Systems Inc., Dial Peer Configuration for Cisco Voice Gateway
Routers, i-xii, 1–56, A1–A10, IN-1–IN-2 (2003), http://www.cisco.com/
univercd/cc/td/doc/product/software/ios123/123cgcr/vvfax_c/inct_c/
dpeer_c/dialpeer.pdf (“Cisco”)

REJECTIONS
The Examiner rejects claims 15, 16, 23, 28, 29, and 34 under
35 U.S.C. § 103 as unpatentable over Chen, Awada, and Sun. Final 3–10.
The Examiner rejects claims 17, 22, 24, 27, 32, and 33 under
35 U.S.C. § 103 as unpatentable over Chen, Awada, and Cisco. Final 10–11.
The Examiner rejects claims 18–21, 25, 26, and 30 under 35 U.S.C.
§ 103 as unpatentable over Chen, Awada, Sun, and Theis. Final 11–12.
The Examiner rejects claim 31 under 35 U.S.C. § 103 as unpatentable
over Chen, Awada, Sun, and Ambrose. Final 12–13.

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OPINION
Obviousness Rejection of Claim 29 over Chen, Awada, and Sun
I
Claim 29 recites, in part,
the exchange device receiving a string of digits having a
number of digits that is less than the complete number of digits
of each of the plurality of stored call numbers;
the exchange device continuously comparing the received
string of digits having the number of digits that is less than the
complete number of digits to the plurality of stored call numbers
to identify a desired call number of the plurality of stored call
numbers that corresponds to the received string of digits before
a complete number of digits for the desired call number is
received.
Appeal Br. 39.
The Examiner finds that Chen teaches an exchange device that
compares a detected string of digits with stored authorized-subscriber
numbers. Final 6–9. According to the Examiner, Chen’s device does not
continuously compare strings that are not yet fully dialed subscriber
numbers. Id. at 8–9.
For this limitation, the Examiner cites Awada. Id. In particular, the
Examiner finds that Awada improves telephone-number matching by
comparing incomplete subscriber numbers to stored numbers. Id. The
Examiner proposes improving the matching in Chen’s exchange device by
incorporating Awada’s method. Id.
Appellant argues that Awada discloses a telephone, not an exchange
device, that compares numbers. Appeal Br. 14–15; see also Reply Br. 5–6
(discussing Awada’s telephone).
This argument is unpersuasive because the Examiner does not rely on
Awada to teach the exchange device. Final 4–5. Here, the Examiner
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proposes using Awada’s method to match telephone numbers in Chen’s
exchange device. Id.
Appellant does not argue, for instance, that Chen’s exchange device
would be unable to compare numbers in the same way as Awada’s
telephone. See Appeal Br. 14–15. Rather, Appellant essentially argues that
Awada lacks a feature that Chen teaches. See id. Because the Examiner’s
rejection is based on a combination of Chen and Awada, Appellant’s
argument against Awada alone is unpersuasive. See Appeal Br. 14–15;
Reply Br. 5–6.
Appellant also argues that the rejection lacks a rational underpinning
for modifying Chen with Awada. Appeal. Br. 20–21, 23; see also
Reply Br. 7–8. According to Appellant, Awada does not teach or suggest an
exchange device that routes calls or converts partly entered phone numbers.
Appeal Br. 20. In Appellant’s view, “An exchange device is at a different
level in the organization of a telecommunications network and is not directly
interacted with by a user to make a call.” Id. We find this argument
unpersuasive.
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In particular, Chen teaches the different organizational levels that
Appellant refers to. Id. To illustrate this point, we reproduce Chen’s Figure 1
below.

Figure 1, above, shows a schematic view of voice-packet communication
devices (1, 1), PSTN2 (70), digital network (80), NAT3 (60), and telephones
(41, 42). Id., Fig. 1. Telephone 41 is connected to device 1. Id. ¶ 22. After
the user dials a phone number, telephone 41 sends the dialed number to
device 1. Id. ¶ 29. Devices 1 and 1 are non-server type devices that
communicate the voice packets. Id. ¶ 23. The Examiner finds that devices 1
and 1are exchange devices. Final 3.
Like the claimed exchange device, Chen’s exchange device matches
strings of digits with numbers in a table. Id. at 7–8 (citing Chen Figs. 2–4,
¶¶ 27, 30). To accomplish this, Chen stores IP-address data 903 and

2 PSTN stands for Public Switched Telephone Network. Chen ¶ 22.
3 NAT stands for Network Address Translator. Chen ¶ 13.
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telephone numbers 901 in an IP-address record table 505. Chen ¶ 30. Chen’s
Figure 3, below, shows table 505. Id.

Figure 3, above, shows IP-address record table 505 with rows of IP-address
data 903 and the corresponding telephone numbers 901. Id. When Chen’s
device 1 receives the user-entered telephone number, it checks IP-address
record table 505. Id. Device 1 compares user-dialed numbers with the
telephone numbers stored in table 505. Id. A voice-transmission channel is
then established to transmit voice packets 904. Id.
In the rejection, the Examiner concludes that combining Chen’s
system with Awada’s techniques would have predictably used prior-art
elements according to their established functions. Final 6–9. We agree. In
this combination, Chen’s devices 1 and 1carry out their established
function of comparing numbers. Id. Likewise, Awada’s method performs the
same function: comparing digits to telephone numbers. See id.
Specifically, Awada teaches a method for comparing manually dialed
phone numbers to pre-stored numbers. See, e.g., Awada ¶¶ 27–32, cited in
Final. 5. Like Chen, Awada stores telephone numbers. Id. ¶ 25. With each
digit entered, Awada’s invention continuously checks the stored list of
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numbers for a match. See id. ¶¶ 23, 27. And the predictable result of
Awada’s method is a matched number. Final 8–9.
The Examiner also concludes that using Awada’s matching in Chen’s
exchange device would save time. See id. We agree. For instance, Awada’s
search produces a result without the need to match all the digits of the called
number. On this record, the Examiner has adequately supported the
obviousness combination with articulated reasoning with rational
underpinning. Thus, we are unpersuaded by Appellant’s argument that the
rejection lacks such reasoning. See Appeal. Br. 20–21, 23; see also
Reply Br. 7–8.
II
Appellant presents several unpersuasive arguments that are based on
substituting Chen’s telephone 41 with Awada’s telephone—a modification
not proposed by the Examiner. See Appeal Br. 15–17, 22–23.
Specifically, Appellant argues that Awada’s telephone does not send
an incomplete phone number to an exchange device, as recited in the claim,
because the telephone uses the full number to initiate a call. Id. at 15; see
also id. at 23. In Appellant’s view, a person of ordinary skill in that art only
would have used Awada’s method to transmit the full number from Chen’s
telephone 41 to Chen’s device 1. Id. at 16–17; see also id. at 22 (citing
Chen ¶¶ 29–31, 38; Awada ¶ 23). Appellant argues that both references
teach a telephone that transmits a full and complete number. Id. at 23.
Also, Appellant argues that Awada does not teach an exchange device
that converts the desired number as soon as it is identified. Id. at 17.
According to Appellant, Awada’s user must press dial button 200 to initiate
a call. Id.; see also id. at 23 (citing Awada ¶ 23, Figs. 4, 6). Appellant argues
that eliminating user involvement indicates non-obviousness. Id. at 19. In
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Appellant’s view, Awada only suggests modifying Chen’s telephone 41,
which would not result in an exchange device that anticipates a user’s
desired call number. Id. at 18.
These arguments are unpersuasive because the Examiner does not
propose substituting one telephone for another. Rather, the Examiner
proposes improving the number comparison in Chen’s exchange device with
Awada’s method of comparing numbers. Final 8–9. That is, under the
Examiner’s rationale, Chen’s device 1 matches numbers. Id. So Appellant’s
arguments about what Awada’s telephone must transmit under Appellant’s
hypothetical combinations do not squarely address the rejection.
III
Appellant argues that Awada teaches a solution to a problem of
identifying a phone number. Appeal Br. 22. According to Appellant, the
Examiner’s rationale for combining Chen and Awada is improper because
Awada’s solution does not require any modification to Chen’s exchange
device. Id. Appellant argues that Awada teaches that the telephone itself
identifies the desired call number from the user’s input and then provides the
full number. Id. at 21 (citing Awada ¶¶ 23–33, Figs. 4–6). In Appellant’s
view, one of ordinary skill in the art would have applied Awada’s auto-
complete feature to Chen’s telephone, not an exchange device, as recited.
Id.; see also Reply Br. 5.
To be sure, in one embodiment, Awada’s telephone can perform the
lookup. See Awada ¶ 27. But Awada’s matching method does not require
special processing that can only be performed on a phone. In fact, Awada
states, “If a user has a telephone that does not incorporate the auto-complete
feature, the user may subscribe to the telephone service that provides the
feature.” Id. ¶ 33, cited in Appeal Br. 21. In that case, Awada’s service
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provider stores previously called numbers. Id. “When the user is entering
digits of a number previously called, the service provider may detect the
digits entered and provide numbers in a numerical order to the user.” Id.
(emphasis added). Thus, the paragraphs of Awada that Appellant cite show
that Awada’s method need not be performed by a telephone. Id. ¶ 33, Fig. 6,
cited in Appeal Br. 21.
IV
According to Appellant, Awada and Chen actually teach away from
an exchange device that converts before the user enters a full number.
Appeal Br. 17–19; see also Appeal Br. 20–21 (citing Awada ¶ 23).
Appellant argues that Awada does not convert as soon as the desired call
number is identified and before a full number is received. Id. at 17.
Appellant argues that the exchange device in these references only acts after
a telephone provides a full phone number, none act on an incomplete
number. Id. at 17–18, id. at 23.
Appellant’s teaching-away argument is also based on substituting
Chen’s telephone 41 with Awada’s telephone. Yet this is not the Examiner’s
proposed combination.
Instead, as discussed above, the Examiner’s combination is based on
Chen’s exchange device acting on an incomplete number. Final 8–9. In
particular, the Examiner proposes using Awada’s matching of an incomplete
number on Chen’s device. Id. So under this rationale, Chen’s exchange
device is separate from—but communicates with—the telephone. See, e.g.,
Chen, Fig. 1. And Awada’s method need not be performed by a telephone.
See Awada ¶ 33, cited in Appeal Br. 21. Rather, Awada teaches that the
method can be performed elsewhere. See id. (discussing a service provider
that performs the matching).
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A reference does not teach away “if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009). Yet “even if a reference is not found to teach away, its statements
regarding preferences are relevant to a finding regarding whether a skilled
artisan would be motivated to combine that reference with another
reference.” Polaris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir.
2018) (citing Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15
(Fed. Cir. 2016) (en banc)). Here, Appellant has not shown that Awada or
Chen criticizes, discredits, or otherwise discourages investigation into the
claimed invention. See Appeal Br. 17–19; see also Appeal Br. 20–21. Thus,
we find Appellant’s teaching-away argument unpersuasive.
V
Appellant argues that the Examiner’s proposed modification would be
contrary to the principle of operation of Awada and Chen. Id. at 19; see also
id. at 20. In Appellant’s view, it would be contrary to Awada’s principle of
operation to require an exchange device not to consult with a user before
(1) identifying a full number and (2) converting the number into an
IP address as soon as the number is identified. Id. at 19.
Appellant’s arguments here are based on substituting Chen’s
telephone 41 with Awada’s telephone, which is not the basis for the
Examiner’s obviousness rationale. And we also note that “the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” In re Keller,
642 F.2d 413, 425 (C.C.P.A. 1981). Because the Examiner does not propose
simply substituting one phone with another, Appellant’s arguments here
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(Appeal Br. 19–20) do not squarely address the Examiner’s obviousness
rationale.
On this record, we are unpersuaded that the Examiner erred in
rejecting claim 29. Thus, we sustain the rejection.

Obviousness Rejection of Claim 34 over Chen, Awada, and Sun
Claim 34 recites,
The method of claim 29, wherein the exchange device sending
the inquiry to the server to learn what IP address corresponds to
the desired call number occurs as soon as the desired call number
is identified and prior to the complete number of digits of the
desired call number being entered.
Appeal Br. 40 (emphasis added).
According to the Examiner, claim 34 would have been obvious over
the Chen-Awada-Sun combination. Final 9–10. The Examiner finds that
Awada teaches the number identification, Sun teaches a server, and Chen
teaches the exchange device. Id. at 9.
Appellant argues that Awada’s auto-complete feature displays a
number or name on LCD 205, and the user only has to “depress dial button
200 to complete dialing the number.” Appeal Br. 24 (quoting Awada ¶ 23).
According to Appellant, Awada’s “telephone provides a full call number for
initiation of a call by use of the auto-complete feature of the telephone.” Id.
In Appellant’s view, “The exchange device is not attempting to anticipate
what a call number may be based on any partial phone number entry.” Id.
Appellant argues that Chen operates in the same way. Id.
Like the arguments about claim 29, these arguments are unpersuasive
because they attack the references individually instead of addressing the
Examiner’s proposed combination. Here, the Examiner proposes improving
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the number comparison in Chen’s exchange device with Awada’s method of
comparing numbers. Final 9–10. So Appellant’s arguments about what
Awada’s telephone must transmit under Appellant’s hypothetical
combinations do not squarely address the rejection.
Appellant further argues that the Examiner has not provided a rational
underpinning for modifying Chen with Awada. Appeal Br. 25. Appellant
argues that the Examiner’s rationale about saving time is conclusory. Id. We
disagree, as discussed above with respect to claim 29, because Awada’s
search for a match may conclude without matching all the digits of the called
number, which would save time.
Also, as discussed above, the Examiner explains that combining
Chen’s system with Awada’s techniques would have predictably used prior-
art elements according to their established functions. Final 6–9. The
Examiner’s rationale demonstrates that, under the proposed combination,
Chen’s devices 1 and 1carry out their established function of comparing
numbers, and Awada’s method, likewise, compares digits to telephone
numbers. See id.
Appellants further argue that “[t]he conclusory rationale provided in
the Final Office Action only suggests a modification of a telephone 41 in
Chen’s system be provided so that a full telephone number can be provided
to Chen’s non-server device by a user via the auto-complete feature
disclosed by Awada.” Appeal Br. 25 (citing Chen ¶¶ 22, 29–31,
Awada ¶¶ 23–33). We disagree.
For example, in the paragraph cited by Appellant, Awada states, “If a
user has a telephone that does not incorporate the auto-complete feature, the
user may subscribe to a telephone service provider that provides the
feature.” Awada ¶ 33, cited in Appeal Br. 25. In that case, Awada’s service
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provider stores previously called numbers. Id. “When the user is entering
digits of a number previously called, the service provider may detect the
digits entered and provide numbers in a numerical order to the user.” Id.
(emphasis added). Thus, this paragraph shows that Awada’s method need
not be performed by a telephone. Id. ¶ 33, Fig. 6, cited in Appeal Br. 25.
Under the Examiner’s proposed combination, the partial string of
digits must be sent from the telephone, where the numbers are dialed, to
another device, where the numbers are compared. Specifically, Chen’s
exchange device 1 is separate from the telephone 41. Chen Fig.1. So the
telephone must send an incomplete string if exchange device 1 is to perform
the comparison. Appellant’s argument (Appeal Br. 25) is unpersuasive
because it fails to account for the combined teachings of Awada and Chen.
On this record, we are unpersuaded that the Examiner erred in
rejecting claim 34. Thus, we sustain the rejection.

Obviousness Rejection of Claim 15 over Chen, Awada, and Sun.
Claim 15 is an independent claim. It recites similar limitations to
those in independent claim 34.
Appellant’s arguments about claim 15 are similar to the arguments for
claim 34. See Appeal Br. 26–27. For instance, Appellant argues that
“Awada’s telephone does not suggest any type of modification of Chen” to
arrive at the recited matching and converting steps. Id. at 26. According to
Appellant, “Awada only teaches a modification to Chen’s telephone 41.”
Id. at 27. And Appellant argues that “no time saving or efficiency occurs at
an exchange device” in Awada. Id.
So, for the same reasons discussed for claim 34, we find Appellant’s
arguments here (id. at 26–27) unpersuasive. As discussed above, Appellant’s
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arguments are based on substituting Chen’s telephone 41 with Awada’s
telephone, which is not the Examiner’s proposed modification. Also, as
discussed above, Awada’s method does not require a telephone to match
numbers. See, e.g., Awada ¶ 33, Fig. 6, cited in Appeal Br. 25.
Thus, we sustain the rejection of claim 15.

Obviousness Rejection of Claim 16 over Chen, Awada, and Sun.
The Examiner rejects claim 16 as obvious over Chen, Awada, and
Sun. Final 5–6, 9–10.
Appellant’s arguments about claim 16 are similar to the arguments
about claim 34. See Appeal Br. 27–30. For instance, Appellant argues that
Awada is directed to entering a full telephone number. Id. at 28. Appellant
argues that “no time saving or efficiency occurs at an exchange device” in
Awada. Id.
But we disagree with these arguments because Awada’s method may
conclude without matching all the digits of the called number, which would
save time.
Appellant also argues that there is no rational underpinning for the
rejection. Id. at 29–30. In Appellant’s view, Awada’s principle of operation
would be impermissibly changed by requiring the exchange device to
provide the service and function of Awada’s telephone. Id. at 29. But this
argument is unpersuasive because Awada’s method does not require a
telephone to match numbers. See, e.g., Awada ¶ 33, Fig. 6, cited in Appeal
Br. 25.
Appellant also argues that both Awada and Chen are directed to
sending a full number with a telephone. Appeal Br. 30. As discussed above,
we disagree. Under the Examiner’s proposed combination, the partial string
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of digits must be sent from the telephone, where the numbers are dialed, to
another device, where the numbers are compared. This is similar to Awada’s
service that provides the matching feature. Awada ¶ 33, cited in
Appeal Br. 30.
Thus, we sustain the rejection of claim 16.

Obviousness Rejection of Claim 23 over Chen, Awada, and Sun.
Claim 23 is an independent claim. It recites similar limitations to
those in independent claim 29. Appellant’s arguments about claim 23 raise
the same issues as the arguments that we addressed above in connection with
claim 29. See Appeal Br. 31–33. As discussed above, those arguments are
unpersuasive. Thus, we sustain the rejection of claim 23.

Obviousness Rejections of Claims 17–22, 24–28, and 30–33
The Examiner rejects claims 17–22, 24–28, and 30–33 over various
combinations of Chen, Awada, Cisco, Theis, Sun, and Ambrose. Final 10–
13. In the briefs, Appellant does not separately discuss the limitations found
in these claims. See generally Appeal Br.; Reply Br. Nor does Appellant
substantively address the Cisco, Theis, Sun, and Ambrose references. See
Appeal Br. 13–33; Reply Br. 4–9. Rather, Appellant groups the claims with
the independent claims and discusses the Chen and Awada references. Id.;
Appeal Br. 13–33; Reply Br. 4–9. Because we find these arguments
unpersuasive, as discussed above, we sustain the rejections of 17–22, 24–28,
and 30–33.

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CONCLUSION
The Examiner’s decision to reject claims 15–34 is affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 16, 23,
28, 29, 34
103 Chen, Awada, Sun 15, 16,
23, 28,
29, 34

17, 22, 24,
27, 32, 33
103 Chen, Awada,
Cisco
17, 22,
24, 27,
32, 33

18–21, 25,
26, 30
103 Chen, Awada, Sun,
Theis
18–21,
25, 26, 30

31 103 Chen, Awada, Sun,
Ambrose
31
Overall
Outcome
15–34

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED