Ex Parte Brueckheimer et al

Patent Trial and Appeal Board

Jun 21, 2016

11759508 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111759,508 0610712007
31292 7590 06/23/2016
CHRISTOPHER & WEISBERG, PA
200 EAST LAS OLAS BOULEVARD
SUITE 2040
FORT LAUDERDALE, FL 33301
FIRST NAMED INVENTOR
Simon Daniel Brueckheimer
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
ATTORNEY DOCKET NO.
22493-324PUSREDIV2
(ID053
CONFIRMATION NO.
6418
EXAMINER
GUADALUPE CRUZ, AIXA AMYR
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
ptomail@cwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON DANIEL BRUECKHEIMER, DAVID JOHN STACEY,
and ROY HAROLD MAUGER
Appeal2013-005470
Application No. 11/759,5081
Technology Center 2400
Before JOHN A. JEFFERY, MARC S. HOFF, and STEVEN D.A.
McCARTHY Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 4-9, 12-16, 19-24, and 27-31. Claims 2, 3, 10, 11, 17, 18, 25, 26
and 31 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' invention is a system and method for routing
asynchronous transfer mode (ATM) network traffic. Digit analysis is
performed on a message received by a node. If the results indicate that a
message is to be handled internally, the message is passed to an N-ISUP
1 The real party in interest is Rockstar Consortium US LP.
Appeal2013-005470
Application No. 11/759,508
signalling subsystem in the node. If the message is not to be handled
internally, the message is forwarded to a destination node. A signalling
message for routing a call takes a different path across the network than call
traffic for said call. See Spec. 12.
Claim 1 is exemplary of the claims on appeal:
1. A telecommunications system comprising a broadband digital
communications network, wherein the system includes a node
configured to perform digit analysis on a message received by the
node,
from the results of the digit analysis determine whether to handle the
message internally and
if the message is to be handled internally, pass the message to an N-
ISUP signalling subsystem in the node or
if the message is not to be handled internally, forward the message to
a destination node;
wherein a signalling message for routing a call takes a different path
across the network than call traffic for said call and said message is an
N-ISUP signalling message.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Borchering
Christie et al.
us 5,867 ,571
us 6,081,525
Feb.2, 1999
June 27, 2000
Claims 1, 4-8, 16, and 19-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Borchering and Christie.
Claims 9, 12-15, 24, and 27-30 stand rejected under 35 U.S.C.
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Application No. 11/759,508
§ 103(a) as being unpatentable over Christie and Borchering.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Nov. 09, 2012), the Reply Brief ("Reply Br.," filed Mar.
15, 2013), and the Examiner's Answer ("Ans.," mailed Jan. 22, 2013) for
their respective details.
ISSUES
With respect to independent claims 1 and 16, Appellants argue that
the Examiner's combination of Borchering and Christie is improper because
Borchering discloses an originating switch as the node for performing digit
analysis, determining whether to handle the message internally, and passing
the message to an N-ISUP signalling subsystem, and that Christie teaches
away from the use of such a switch. App. Br. 7.
Appellants further contend that the Examiner impermissibly attempted
to combine the first and second embodiments of Christie. Id.
With respect to independent claims 9 and 24, Appellants rely on the
same arguments to contest the Examiner's rejection over Christie and
Borchering. See App. Br. 11-12.
Appellants' contentions present us with the following issues:
1. Does the combination of Borchering and Christie fairly suggest
modifying Borchering to include the use ofN-ISUP signalling, and sending
a signalling message for a call on a different network path than call traffic
for said call?
2. Does the combination of Christie and Borchering fairly suggest
modifying Borchering by performing digit analysis and determining whether
a message is to be processed internally, as taught by Christie?
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3. Did the Examiner impermissibly combine separate first and second
embodiments of Christie?
PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id.
"A determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements." In
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted).
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000);
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991 ). If the proposed modification would render the prior art invention
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Application No. 11/759,508
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that "[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int'!, 73 F.3d 1085,
1090 (Fed. Cir. 1995).
ANALYSIS
CLAIMS 1, 4-8, 16, AND 19-23
We are not persuaded by Appellants' contention that Christie does not
disclose a switch for performing digit analysis, determining whether to
handle a message internally, and passing the message to an N-ISUP
signalling subsystem. App. Br. 7. Neither are we persuaded that Christie
teaches away from using such a switch. Id.
We agree with the Examiner's conclusion that the combined teachings
of Borchering and Christie suggest the invention. We agree with the
Examiner's finding that Borchering (rather than Christie) discloses the
claimed node configured to perform digit analysis, and determine whether to
handle the message internally. Ans. 4; Borchering col. 4:7-32. We agree
with the Examiner's finding that Christie discloses N-ISUP as a known
protocol for routing internal signaling messages. Ans. 5; Christie col. 6:31-
43. The Examiner has stated reasoning having a rational underpinning for
combining Borchering, which teaches the use of known protocols to manage
internal messages, with Christie, which teaches the use ofN-ISUP: "in order
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to enhance the system's capability to provide services for various media and
interfaces." Ans. 14.
We are not persuaded that Christie's statement that its "system does
not require the call processing of signalling capabilities of an A TM switch"
teaches away from the use of such a switch, or from the combination of
Borchering with Christie. See App. Br. 7. Christie is not relied upon for a
teaching of an ATM switch, but rather the use of the N-ISUP protocol for
signalling. Ans. 5. Further, Christie's statement would not have discouraged
the person having ordinary skill in the art from modifying Borchering to use
N-ISUP as proposed by the Examiner. See Gurley, 27 F.3d at 553.
We do not agree with Appellants that the Examiner's proposed
combination of Borchering and Christie requires the skilled artisan to
combine the first and second embodiments of Christie. We agree with the
Examiner that the second embodiment of Christie, which mentions N-ISUP
messages, discloses that signaling messages and call traffic take different
paths across the network. Ans. 14. Signaling data pass through signaling
links 290-292; call traffic passes through connections 280-283. Ans. 14; see
Christie Fig. 2.
We conclude that the Examiner did not err in rejecting claims 1, 4-8,
16, and 19-23 as being unpatentable under § 103 over Borchering and
Christie. We sustain the Examiner's rejection.
CLAIMS 9, 12-15, 24, AND 27-30
Appellants present the same set of arguments with respect to claim 9
as were presented with respect to claim 1. App. Br. 10-11. Appellants'
arguments are not persuasive, for the reasons given with respect to claim 1.
As we discussed supra, we are not persuaded that Christie teaches away
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from combination with Borchering. See App. Br. 11. We agree with the
Examiner that the second embodiment of Christie may be relied upon for its
teaching of different paths; thus, there is no issue of combining different
embodiments of Christie. See App. Br. 10-11; Ans. 14.
We conclude that the Examiner did not err in rejecting claims 9, 12-
15, 24, and 27-30 as being unpatentable under§ 103 over Christie and
Borchering. We sustain the Examiner's rejection.
CONCLUSIONS
1. The combination of Borchering and Christie fairly suggests
modifying Borchering to include the use ofN-ISUP signalling, and sending
a signalling message for a call on a different network path than call traffic
for said call, as taught by Christie.
2. The combination of Christie and Borchering fairly suggests
modifying Christie by performing digit analysis and determining whether a
message is to be processed internally, as taught by Borchering.
3. The Examiner did not impermissibly combine separate first and
second embodiments of Christie.
ORDER
The Examiner's rejection of claims 1, 4-9, 12-16, 19-24, and 27-30 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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