Ex Parte Batni et al

Patent Trial and Appeal Board

Jul 31, 2014

11384147 (P.T.A.B. Jul. 31, 2014)

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.
11/384,147 03/17/2006 Ramachendra P. Batni LUC-578/Batni 18-18 8879
47382 7590 08/01/2014
Carmen Patti Law Group, LLC
One N. LaSalle Street
44th Floor
Chicago, IL 60602
EXAMINER
PHUNG, LUAT
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
08/01/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAMACHENDRA P. BATNI and RANJAN SHARMA
____________

Appeal 2012-003536
Application 11/384,147
Technology Center 2400
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and BRETT C. MARTIN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 24–46. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention provides ring-back services to calling terminals
in a cable telecommunication network. See generally Abstract; Spec. ¶¶ 08–
09. Claim 24 is illustrative with disputed limitations emphasized:
24. A method, comprising:
placing a call from a calling terminal to a called terminal in a
cable telecommunication network, and communicating with a
ring back application;
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initiating a new call leg by the ring back application to the
called terminal via a call management server;
ringing the called terminal by the call management server and
providing an indication of the ringing to the ring back
application; and
sending, by the ring back application, a predetermined ring
back signal to the calling terminal during a ringing phase of the
call.

THE REJECTIONS
The Examiner rejected claims 25, 28, and 37 under 35 U.S.C. § 112,
second paragraph as indefinite. Ans. 4.1,2
The Examiner rejected claims 2430, 3239, and 4146 under 35 U.S.C.
§ 103(a) as unpatentable over DeMent (US 2005/0117726 A1; June 2, 2005)
and Kenrick (US 2007/0201484 A1; Aug. 30, 2007). Ans. 5–11.

1 Although the Examiner does not reject explicitly claims 25, 28, and 37 on
page 4 of the Answer, they are nonetheless included under the heading
“Claim Rejections – 35 USC § 112” and follow the quotation from the
second paragraph of that statute. Ans. 4. Accordingly, we presume that the
Examiner intended to so reject those claims. We omit, however, claim 34
from this presumption in view of the Examiner’s withdrawing the § 112
rejection of that claim in the Advisory Action. See Adv. Action mailed Apr.
22, 2011, at ¶ 5 (noting that Applicant’s reply overcame the rejection of
claim 34 under § 112, second paragraph). Accord Reply Br. 2 (noting this
withdrawal). Despite the Examiner’s including claim 34 under the above-
noted heading on page 4 of the Answer, the record nonetheless indicates that
the Examiner intended to withdraw the § 112 rejection of this claim.
Accordingly, we treat the Examiner’s error in this regard harmless and
present the correct claim listing here for clarity.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed July 25,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed October 12, 2011
(“Ans.”); and (3) the Reply Brief filed December 12, 2011 (“Reply Br.”).
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The Examiner rejected claims 31 and 40 under 35 U.S.C. § 103(a) as
unpatentable over DeMent, Kenrick, and Stifelman (US 7,613,287 B1; Nov
3, 2009). Ans. 11–12.

THE INDEFINITENESS REJECTION
The Examiner finds that there is insufficient antecedent basis for “the
step of initiating a new call by the ring back application” recited in claim 25
because independent claim 24 (from which claim 25 depends) states that a
new call leg is initiated by the ring back application. Ans. 4.
Appellants argue that because Paragraph 29 of their original
Specification supports all recitations where the ring back application initiates
a new call, this support resulted in the Examiner’s withdrawing the § 112
rejection of claim 34. Reply Br. 2. As such, the Examiner’s not
withdrawing the § 112 rejection of claims 25, 28, and 37 is said to be an
“oversight.” Reply Br. 3.

ISSUE
Has the Examiner erred in rejecting claim 25 under § 112, second
paragraph by finding that “the step of initiating a new call by the ring back
application” lacks antecedent basis?

ANALYSIS
We sustain the Examiner’s indefiniteness rejection of claim 25. As
noted above, the Examiner finds that there is insufficient antecedent basis
for “the step of initiating a new call by the ring back application” recited in
claim 25 because its base claim 24 recites that a new call leg is initiated by
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the ring back application. Ans. 4. Our emphasis underscores the
inconsistency between the two terms at issue: “new call” and “new call leg.”
Because these terms are different, the Examiner’s position that there is
no antecedent basis for “initiating a new call” in claim 24 has at least a
rational basis on this record that has not been persuasively rebutted. To the
extent that these two terms are equivalent such that “initiating a new call”
means “initiating a new call leg” to provide antecedent basis for such a
reference, such an equivalency has not been addressed on this record, nor
will we speculate in that regard here. Appellants’ reference to paragraph 29
of the Specification (Reply Br. 2) is inapposite in this regard, for even
assuming, without deciding, that this passage supports all recitations where
the ring back application initiates a new call as Appellants contend, it says
nothing about initiating a new call leg, let alone whether this initiation is the
same as initiating a new call. In short, Appellants’ arguments fail to address
the inconsistency between a “new call” and a “new call leg” that forms the
basis for the Examiner’s indefiniteness rejection. Indeed, Appellants’
contention that their original Specification supports the “new call” initiation
limitation in claim 25 is more germane to the issue of written description
under § 112, first paragraph—not the particular inconsistency in the claim
language resulting in the lack of antecedent basis to render associated claims
indefinite under § 112, second paragraph.
We also find unavailing Appellants’ contention that the Examiner’s
not withdrawing the § 112 rejection of claims 25, 28, and 37 is an
“oversight” in light of the Examiner’s withdrawal of the § 112 rejection of
claim 34. Reply Br. 3. The Examiner’s Advisory Action, however, states
unambiguously why the Examiner maintained the § 112 rejection of claim
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25 in view of the foregoing inconsistency, despite withdrawing a similar
rejection of claim 34 that recites different limitations. Compare Adv. Action
¶ 5 with ¶ 11. On this record, the Examiner’s rationale for maintaining the
§ 112 rejection of claim 25 is clear and unambiguous, and is hardly an
“oversight” as Appellants contend.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 25 under § 112, second paragraph, and claims 28 and 37 not argued
separately with particularity. We add, however, that the foregoing
inconsistency likewise weighs in favor of the Examiner’s position that
dependent claims 28 and 37 are indefinite because it is unclear whether “the
call” in those claims refers to the “call leg” in their respective base claims 24
and 33.

THE OBVIOUSNESS REJECTION OVER DEMENT AND KENRICK
The Examiner finds that DeMent discloses every recited feature of
independent claim 24 except for using the ring-back method in a cable
telecommunication network, for which Kenrick is cited. Ans. 4–6.
According to the Examiner, because Kenrick’s telecommunication network
is wired, it is “made up of cables” and, therefore, is a “cable
telecommunication network” as claimed. Ans. 13–14.
Appellants argue that neither DeMent nor Kenrick discloses cable
telecommunication networks, let alone calling terminals in cable networks
that are said to differ from other types of networks with respect to, among
other things, architectures, protocols, and components. App. Br. 5–7; App.
Br. 4–7. According to Appellants, the Examiner’s interpreting a “cable
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telecommunication network” as one that is wired is overly broad when
considering the term in light of the Specification. Id.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 24 by finding
that DeMent and Kenrick collectively would have taught or suggested
placing a call from a calling terminal to a called terminal in a cable
telecommunication network in conjunction with the other recited
limitations?

ANALYSIS
We begin by noting that it is undisputed that DeMent lacks a cable
telecommunication network. Nor is it disputed that the ring-back method of
independent claim 1 must be performed in a cable telecommunication
network. The question, then, is whether the Examiner’s reliance on Kenrick
for teaching such a network is erroneous in light of the Examiner’s
interpreting broadly a “cable telecommunication network” as one that is
wired or “made up of cables.” See Ans. 6, 12.
To resolve this question, we first turn to the Specification. In the
Background section, Appellants discuss known ring-back methods in various
types of networks including traditional wireline or wireless telephone
systems and packet-based Internet Protocol Multimedia Sub-Systems (IMS).
Spec. ¶¶ 05–06. In one IMS-based implementation, Session Initiation
Protocol (SIP) messaging is used where the client pulls ring-back
information from the IMS network. Id. ¶ 06. Notably, the Specification
emphasizes that IMS-network-based ring-back methods may not be applied
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directly for use in cable networks—networks that are used increasingly for
telephone-type services. Id. ¶ 07.
In contrast, Appellants’ ring-back method is used in a cable network
that may, for example, conform to CableLabs PacketCable™ 1.5
Specifications. Spec. ¶ 021. The Specification, however, emphasizes that
the disclosed ring-back method is not limited to networks conforming with
that particular specification, and can apply to other cable networks as well.
Id. Nevertheless, Appellants maintain that ordinarily skilled artisans,
namely cable network designers, recognize the term “cable
telecommunication network” to mean a distinct type of telecommunication
network (1) deploying cable modem service, and (2) using protocols such as,
for example, CableLabs PacketCable™ 1.5 Specifications. Reply Br. 6.
On this record, we find Appellants’ position to be persuasive. As is
known in art, “PacketCable” is a project managed by CableLabs aimed at
developing interoperable interface specifications for delivering advanced,
real-time multimedia services over IP-based packet channels carved out of
two-way [cable television] CATV cable plants. Harry Newton, NEWTON’S
TELECOM DICTIONARY 678 (22d ed. 2006) (“Newton”) (emphasis added).
This dictionary further explains that “PacketCable is built on the
infrastructure . . . previously known as DOCSIS (Data Over Cable Service
Interface Specification), which sets standards for CATV modems and related
network elements supporting high-speed Internet access over CATV
networks.” Id.
Although Appellants’ claimed invention is not limited to a particular
PacketCable” Specification, it nonetheless informs our understanding of
what a “cable telecommunication network” means in the context of the
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claimed invention, namely a distinct type of telecommunication network that
(1) deploys cable modem3 service, and (2) uses protocols such as CableLabs
PacketCable™ 1.5 Specifications as Appellants indicate. Reply Br. 6.
Other art-recognized sources confirm this understanding. The term
“cable telephony” is defined as “[t]elephone service over a cable TV
connection rather than over traditional telephone lines. Although service is
delivered over cable rather than telephone wire, the end user perceives no
difference between cable telephony and normal telephone service.”
MICROSOFT COMPUTER DICTIONARY 81 (5th ed. 2002) (“Microsoft”)
(emphases added).
Our emphasis above not only underscores the fact that the term
“cable” in this context refers to cable television (CATV),4 but its distinction
from telephone lines and wires undermines the Examiner’s position (Ans.
12) that a wired network comprising cables is a “cable telecommunication
network” in the context of the claimed invention. Although telephone and
other such telecommunication networks are wired and have associated

3 A cable modem is “[a] modem that sends and receives data through a
coaxial cable television network instead of the phone lines, as with a
conventional modem.” MICROSOFT COMPUTER DICTIONARY 80 (5th ed.
2002).
4 CATV is “[a] television broadcasting system that uses coaxial or fiber-
optic cable to distribute a broadband signal containing many separate
television program channels. CATV systems are also increasingly being
used to carry digital data—for example, Internet connections—to and from
subscribers.” Microsoft, at 88. Accord Newton, at 206 (noting that CATV
is a broadband transmission facility that generally uses a 75-ohm coaxial
cable that carries many frequency-divided TV channels simultaneously,
where channels are separated by guard channels).

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cables containing those wires, these networks are not “cable
telecommunication networks” as the term is understood in the art.
The Examiner’s reliance on Kenrick for teaching a “cable
telecommunication network” is, therefore, problematic. Although Kenrick
introduces media during calls between terminals implementing channel-
based telecommunication protocols, they are not associated with a cable
telecommunication network, but rather commensurate with other network
types, such as packet-based IMS networks, whose ring-back techniques are
inapplicable to the cable telecommunication networks as in the claimed
invention. Compare Kenrick Spec. ¶ 3–4 (describing various types of
channel-based telecommunication protocols, including H.324 and Session
Initiation Protocol (SIP)) with Spec. ¶ 6 (noting that a known IMS ring-back
method uses SIP messaging and that such methods may be inapplicable in
cable networks). Accord App. Br. Ev. App’x, at 4 (noting Kenrick’s SIP-
based methods and Kenrick’s not addressing cable systems). The
Examiner’s reliance on Kenrick’s paragraphs 52 through 56 is unavailing in
this regard, for here again, these methods do not pertain to cable
telecommunication networks. See, e.g., Kenrick ¶ 55 (describing
transmitting ringback media streams to H.324-like or SIP-like terminals).
Because the Examiner’s reliance on Kenrick for teaching cable
telecommunication networks is flawed, it does not cure DeMent’s
deficiencies in this regard. To the extent that adapting DeMent’s ring-back
method to cable telecommunication networks would have been an obvious
variation because such an enhancement is (1) not uniquely challenging, or
(2) would have been within the level of ordinarily skilled artisans, we cannot
say. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
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(Fed. Cir. 2007). Nor has the Examiner shown as much on this record. But
what we can say is that the Examiner’s articulated position is untenable on
this record.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 24; (2) independent claims 33 and 42 that recite
commensurate limitations; and (3) dependent claims 25–30, 32, 34–39, 41,
and 43–46 for similar reasons.

THE REMAINING OBVIOUSNESS REJECTION
Because the Examiner has not shown that the additional cited prior art
cures the deficiencies noted above regarding the independent claims, we will
not sustain the obviousness rejection of dependent claims 31 and 40 (Ans.
11–12) for similar reasons.

CONCLUSION
The Examiner did not err in rejecting claims 25, 28, and 37 under
§ 112, but erred in rejecting claims 24–46 under § 103.

DECISION
The Examiner’s decision rejecting claims 24–46 is affirmed-in-part.
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).

AFFIRMED-IN-PART

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