Unify Patente GmbH & Co. KG

Patent Trials and Appeals Board

Nov 9, 2020

15854983 - (D) (P.T.A.B. Nov. 9, 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.
15/854,983 12/27/2017 Symeon Mattes 2016P00062US-1027 9209
88087 7590 11/09/2020
Unify
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
KWOH, JASPER C
ART UNIT PAPER NUMBER
2415
NOTIFICATION DATE DELIVERY MODE
11/09/2020 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 SYMEON MATTES, LAMPROS PAPPAS, and
VASILEIOS GIATILIS

Appeal 2020-001798
Application 15/854,983
Technology Center 2400

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and
JASON V. MORGAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection of claims 1–20, all of the claims pending. Appeal Br.,
Claims App. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing

1 We refer to the Specification filed Dec. 27, 2017 (“Spec.”); the Final
Office Action, mailed June 14, 2019 (“Final Act.”); the Appeal Brief, filed
Sept. 20, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed Dec. 12,
2019 (“Ans.”), and the Reply Brief, filed Jan 1, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies GmbH & Co. KG as the real party-
in-interest. Appeal Br. 1.
Appeal 2020-001798
Application 15/854,983

2
was held in this appeal on October 29, 2020. A transcript of the oral hearing
will be entered into the record in due course.
We reverse.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for establishing voice over Internet Protocol (VOIP)
communication between private box exchange (PBX) system (2) and
terminal device (4). Spec. 1:2–4.
Figure 2, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 2 above illustrates a communication network including terminal
device (4) running a VOIP/video call application for communicating via first
connection (11) or second connection (12) with PBX system (2) including
core unit (9) and provider unit (10). Spec. 11:1–15.
Appeal 2020-001798
Application 15/854,983

3

In particular, as depicted in Figure 2 above, upon receiving a call to be
forwarded to terminal device (4), PBX system (2) rejects the call if it
determines that terminal device (4) is not logged in the communication
network. Id. at 11: 2–21. However, upon verifying that terminal device (4)
is logged in, and is running a VOIP application actively in a foreground
mode, PBX system (2) uses first connection (11) to forward the call to
terminal device (4). Id. Alternatively, PBX system (2) uses second
connection (12) to forward the call to terminal device (4) upon determining
that terminal device (4) is running the application inactively in the
background mode. Id.
Claims 1, 12, and 14 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A computer-implemented method for establishing a voice
over internet protocol (VOIP) communication between a private
branch exchange (PBX) system and a first terminal device in a
communication network, wherein the first terminal device is provided
with a VOIP application or video call application, and wherein the
PBX system and the first terminal device are able to communicate via
a first communication connection and a second communication
connection in the communication network, the method comprising:
receiving, by the PBX system, a call from a second terminal
device to be forwarded to the first terminal device;
verifying, by the PBX system, if the first terminal device is
logged in the communication network, wherein when the PBX system
verifies that the first terminal device is not logged in, the call is
rejected, and when the PBX system verifies that the first terminal
device is logged in, then the PBX system performs the steps of:
determining, whether the VOIP application or video call
application on the first terminal device is running in a background
mode with the VOIP application or video call application being
inactive, or in a foreground mode with the VOIP application or video
call application being active, and
Appeal 2020-001798
Application 15/854,983

4
when the PBX system determines that the VOIP application or
video call application is running in the foreground mode, using the
first connection between the PBX system and the first terminal device
for forwarding the call to the first terminal device, and,
when the PBX system determines that the VOIP application or
video call application is running in the background mode, using the
second connection between the PBX system and the first terminal
device for receiving information from the first terminal device on
what type of its communication connection that it is using at that point
of time.
Appeal Br. 31 (Claims App.)
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Iwata US 2009/0029708 A1 Jan. 29, 2009
Fernandez US 2015/0035987 A1 Feb. 5, 2015
Medapalli US 2015/0245409 A1 Aug. 27, 2015
Belimpasakis US 2017/0134452 A1 May 11, 2017
Fukuda US 2017/0201627 A1 July 13, 2017
IV. REJECTIONS
The Examiner rejects the claims on appeal as follows:
Claims 1 and 8–14 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Fukuda and Medapalli. Final
Act. 3–14.
Claims 2, 4–6 and 15–17 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Fukuda, Medapalli, Iwata, and
Belimpasakis. Final Act. 14–20.

3 All reference citations are to the first named inventor only.
Appeal 2020-001798
Application 15/854,983

5
Claims 3, 7, and 18–20 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Fukuda, Medapalli, Iwata,
Belimpasakis, and Fernandez. Final Act. 20–24.
V. ANALYSIS
We consider Appellant’s arguments in the order they are presented in
the Appeal Brief, pages 14–29, and the Reply Brief, pages 1–8.
Appellant argues that the Examiner erred in finding that the
combination of Fukuda and Medapalli teaches or suggests upon determining
that the VOIP or video call application in the terminal device is running
actively in the foreground mode, the PBX uses the first connection to
forward a received call to the terminal device, as recited in independent
claims 1, 12, and 14. Appeal Br. 14. Appellant further argues that the
Examiner similarly erred in finding that the combination of Fukuda and
Medapalli teaches or suggests, upon determining that the VOIP or video call
application in the terminal device is running inactively in the background
mode, the PBX uses the second connection to forward a received call to the
terminal device, as recited in independent claims 1, 12, and 14. Id. In
particular, Appellant argues that Medapalli does not cure the admitted
deficiencies of Fukuda because Medapalli’s communication manager only
collects parameter data for the server/PBX upon which it is implemented,
but not for the destination terminal with which it is communicating. Id. at
14–16 (citing Medapalli ¶¶ 63, 67, 68).
Appellant’s arguments are persuasive of reversible Examiner error.
As a preliminary matter, we note the disputed claim limitations
require that the PBX determine whether a VOIP application is running
actively in the foreground mode or passively in background mode in the
Appeal 2020-001798
Application 15/854,983

6
terminal with which it is communicating. Medapalli discloses a computing
device including a connection manager that communicates with a destination
device. Medapalli ¶ 63. The computing device may be integrated in a server
to execute one or more applications including a VOIP application. Id. ¶ 56.
When the computing device is configured to communicate with the
destination device, the connection manager monitors network and
communications parameters to and from the application including whether
the application is running in the foreground mode or in the background
mode in the computing device, as well as whether the destination is
multipath capable to determine which one of the two communications
connections to use or whether to use both. Id. ¶¶ 56–68. Medapalli
discloses determining whether an application is running in the foreground
mode or the background mode in the computing device, as opposed to the
destination device, as required by the disputed limitations. Therefore, even
if integrated into Fukuda’s PBX, Medapalli’s connection manager would
only collect application status data for the PBX in which the VOIP
application is running, as opposed to the destination device with which it is
communicating. Accordingly, we agree with Appellant that the Examiner’s
proposed combination of Fukuda, Medapalli, and Iwata would not have
taught or suggested the disputed limitations. Because Appellant has shown
at least one reversible error in the Examiner’s obviousness rejection of
independent claims 1, 12, and 14, we do not reach Appellant’s remaining
arguments. Accordingly, we do not sustain the Examiner’s obviousness
rejection of independent claims 1, 12, and 14, each of which includes the
argued disputed limitations. Likewise, we do not sustain the rejections of
Appeal 2020-001798
Application 15/854,983

7
dependent claims 2–11, 13, and 15–20, which also recite the disputed
limitation.
VI. CONCLUSION
We reverse the Examiner’s rejections of claims 1–20.

VII. DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1, 8–14 103 Fukuda, Medapalli, Iwata 1, 8–14
2, 4–6,
15–17 103
Fukuda, Medapalli, Iwata,
Belimpasakis 2, 4–6, 15–17
3, 7,
18–20 103
Fukuda, Medapalli, Iwata,
Belimpasakis, Fernandez 3, 7, 18–20
Overall
Outcome 1–20

REVERSED