COMCAST CABLE COMMUNICATION, LLC

Patent Trials and Appeals Board

Sep 24, 2020

14153571 - (D) (P.T.A.B. Sep. 24, 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.
14/153,571 01/13/2014 Eugene Nolan 26141.0139U1 3813
16000 7590 09/24/2020
Comcast
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1600
Atlanta, GA 30309-4421
EXAMINER
HACKENBERG, RACHEL J
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE NOLAN
Appeal 2019-003318
Application 14/153,571
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, AND
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–5, 8–19, 22–26, which are all claims
pending in the application. Appellant has canceled claims 6, 7, 20 and 21.
See Appeal Br. 9–12 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Comcast Cable
Communications, LLC. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to dynamic connection management. See
Spec. ¶ 2. In particular, Appellant’s “systems and methods for dynamic
registration and connection management disclosed herein allow a device
such as a user device to establish a connection with a computing device only
when a communication session is requested.” Spec. ¶ 6.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (labelling, and emphases added to contested prior-art limitations):
1. A method comprising:
establishing, by a user device, a persistent connection with a
service subscribed to a presence service;
[L1] receiving, at the user device, a notification of a request for
a communication session with a computing device via the
service, wherein the request is published by the presence
service to the service in response to receiving the request for the
communication session;
determining a location of the user device;
[L2] registering, by the user device, in response to the
notification and based on the location of the user device, with a
communication processing system to receive the request for the
communication session; and
engaging, by the user device, in the communication session
with the computing device via the communication processing
system.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 24, 2018); Appellant’s Reply Brief (“Reply Br.,” filed Mar. 25, 2019);
Examiner’s Answer (“Ans.,” mailed Jan. 25, 2019); Final Office Action
(“Final Act.,” mailed May 4, 2018); and the original Specification (“Spec.,”
filed Jan. 13, 2014).
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Kennedy et al. (“Kennedy”) US 2004/0252683 A1 Dec. 16, 2004
Rogers et al. (“Rogers”) US 8,312,092 B2 Nov. 13, 2012
REJECTION
Claims 1–5, 8–19, 22–26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Kennedy and Rogers. Final
Act. 2.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 4–7) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of independent claims 1, 10, and 16 on the basis of representative
claim 1. Remaining dependent claims 2–5, 8, 9, 11–15, 17–19, and 22–26,
not argued separately, stand or fall with the respective independent claim
from which they depend.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–5,
8–19, 22–26 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 103 Rejection of Claims 1–5, 8–19, 22–26
Issue 1
Appellant argues (Appeal Br. 6–14; Reply Br. 2) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Kennedy and Rogers is in error. These contentions present
us with the following issues:
(a) Did the Examiner err in finding the cited prior art
combination teaches or suggests limitation L1, i.e., “receiving a
notification of a request” as recited in claim 1 (emphasis
added)?
(b) Did the Examiner err in finding the cited prior art
combination teaches or suggests limitation L2, i.e., “registering,
by the user device, in response to the notification and based on
the location of the user device, with a communication
processing system to receive the request for the communication
session” as recited in claim 1 (emphasis added)?
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Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
(a) Limitation L1 (“receiving a notification”) is Taught or Suggested
The Examiner relies upon the combination of Kennedy and Rogers as
teaching or suggesting the contested limitation L1. Final Act. 3–5 (citations
omitted).
Appellant contends:
Although Kennedy discloses sending and receiving a “request,”
Kennedy is silent as to receiving a “notification of a request.”
One skilled in the art would appreciate the difference between
receiving a “request” and receiving a “notification of a request”
as claimed.
Appeal Br. 5.
We are not persuaded by Appellant’s argument quoted above, because
we find Kennedy’s INVITE/SDP request, sent from a client 1202 to the
application server 1201, teaches or at least suggests the disputed
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“notification of a request.” Kennedy ¶ 70; Final Act. 4, Ans. 3–4; see
generally Kennedy ¶ 62 et seq. Appellant’s Specification provides a non-
limiting list of embodiments as examples of a “notification.” Spec. ¶ 41.
Given this list, we agree with the Examiner’s conclusion that the broadest
reasonable interpretation of “notification of a request” encompasses
Kennedy’s INVITE/SDP request. Ans. 3–5.
(b) Limitation L2 (“registering . . .”) is Taught or Suggested
Appellant contends the disputed limitation “registering, by the user
device, in response to the notification, with a communication processing
system to receive the request for the communication session, wherein
registering with the communication processing system comprises
determining a location of the user device” is not taught by Kennedy. Appeal
Br. 6. Appellant further argues “Even if, for the sake of argument, this ‘SIP
application server’ discloses the claimed ‘communication processing
system,’ it does not appear that the ‘SIP client B’ is ‘registered’ with the
‘SIP application server’ in response to a ‘notification’ as claimed.” Appeal
Br. 7.
We are not persuaded by Appellant’s argument because Kennedy’s
SIP application server 1301, in determining the location of the user device
1304 and forwarding the SIP Invite request to user device 1304, and
registering with application server 1301, teaches or at least suggests the
disputed limitation L2. Kennedy ¶ 70, Ans. 6–7.
Appellant further argues:
Furthermore, Applicant notes that, in rejecting this element, the
Office Action maps the “SIP application server” to the claimed
“communication processing system.” However, as set forth
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above, the Office Action has previously mapped the “SIP
application server” to the claimed “service [subscribed to a
presence service],” further ignoring the relationships between
the claim elements.
App. Br. 7.
We are not persuaded by Appellant’s argument because Appellant’s
contention is not commensurate with the Examiner’s rejection that relies
upon Rogers, not Kennedy, as teaching or suggesting “service subscribed to
a presence service.” Final Act. 3 (citing Rogers Col. 7, ll. 13–21, 35–49).
Thus, we are not persuaded by Appellant’s arguments, and we agree
with the Examiner’s finding that the combination of Rogers and Kennedy
teaches or suggests disputed limitations L1 and L2 in claim 1.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1 and grouped
claims 2–5, 8–19, 22–26, which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–5, 8–19, 22–26 under 35 U.S.C. § 103 over the cited prior art
combination of record, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–5, 8–19,
22–26 103
Obviousness
Kennedy, Rogers
1–5, 8–19,
22–26
FINALITY AND 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)(1)(iv). See
37C.F.R. § 41.50(f).
AFFIRMED