Ex Parte Citron et al

Patent Trial and Appeal Board

Sep 26, 2013

11546384 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/546,384 10/12/2006 Jeffrey Citron Y2108-00240 3818
39290 7590 09/27/2013
DUANE MORRIS LLP - DC
505 9th Street
Suite 1000
WASHINGTON, DC 20004-2166
EXAMINER
PAPPAS, PETER
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
09/27/2013 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 JEFFREY CITRON and LOUIS MAMAKOS
____________________

Appeal 2011-005360
Application 11/546,384
Technology Center 2400
____________________

Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
DAVID C. McKONE, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005360
Application 11/546,384
2
STATEMENT OF THE CASE1
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to a method and system for detecting a change
in device attachment. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of detecting a change in location of a device
attached to a communications network:
(a) identifying a first network address of the device;
(b) identifying the removal of the device from the
communications network;
(c) identifying when the device is reconnected to the
communications network;
(d) identifying a second network address of the device
after the device is reconnected to the communications network;
(e) recording the amount of time between the removal
and the reconnection of the device;
(f) evaluating the differences between the first and
second network addresses; and
(g) identifying a change in physical location of the device
as a function of the differences between the first and second
network addresses and the recorded amount of time.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moore U.S. 2001/0047407 A1 Nov. 29, 2001

1 Throughout the decision, we refer to the Appellants’ Appeal Brief (“App.
Br.,” filed July 12, 2010) and Reply Brief (“Reply Br.,” filed Nov. 30,
2010), and the Examiner’s Answer (“Ans.,” mailed Oct. 5, 2010).
2 The Real Party in Interest is Vonage Holdings Corporation.
Appeal 2011-005360
Application 11/546,384
3
Chong ’990 U.S. 2007/0070990 A1 Mar. 29, 2007

Rejections
The Examiner made the following rejection:
Claims 1-23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Moore and Chong ’990. Ans. 3-7.

ISSUE
Appellants’ Appeal Brief presents us with the following issue:
Did the Examiner err in finding that Chong ’990 claims the benefit of
provisional application 60/719,106 (filed Sep. 21, 2005) (Chong ’106), such
that Chong ’990 teaches or suggests the (f) and (g) limitations of claim 1?
App. Br. 5-6.

ANALYSIS
Appellants contend that the Examiner erred in determining that Chong
’990 is proper prior art because it cannot claim the benefit of Chong ’106 for
the subject matter cited by the Examiner for limitations (f) and (g). App. Br.
6-7 (citing MPEP 706.02(F)1(B)). Appellants argue that Chong ’106 does
not provide support for the rejection because it fails to disclose
“identification of location as a function of the recorded amount of time the
device was disconnected from the network . . . .” App. Br. 7. Instead,
Appellants argue, Chong ’106 discloses identification of location as a
function of “the shift in the pattern of regular communication from the TA
[Telephony Adapters] to the phone service provider or a change in expected
IP address.” Id. In addition, Appellants argue that “Chong ’106 does not
Appeal 2011-005360
Application 11/546,384
4
reference time period other than a regular basis and certainly does not
include recording a time duration of a disconnection.” Id.
The Examiner answers that the relied-upon teachings in Chong ’990
are reasonably supported by Chong ’106’s description that a change in
virtual/IP addresses allocated to Telephony Adapters (TA) and the timing of
TA heartbeat indicators are used to analyze and predict a potential location
change of a TA device. Ans. 9-10 (citing Chong ’106).
Under 35 U.S.C. 119(e), the written description and drawing(s) (if
any) of the provisional application must adequately support and enable the
subject matter claimed in the nonprovisional application that claims the
benefit of the provisional application. In New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002), the court held that
for a non-provisional application to be afforded the priority date of the
provisional application,
the specification of the provisional must ‘contain a written
description of the invention and the manner and process of
making and using it, in such full, clear, concise, and exact
terms,’ 35 U.S.C. § 112 ¶1, to enable an ordinarily skilled
artisan to practice the invention claimed in the non-provisional
application.

Id. at 1294.
Chong ’990 claims benefit under 35 U.S.C. § 119(e) to Chong ’106.
We find that all the Examiner relies on Chong ’990 for is a teaching of
monitoring IP addresses to determine if a TA has moved physical locations.
See Ans. 5, 10. We agree with the Examiner (Ans. 10) that Chong ’106
reasonably conveys to those skilled in the art that Chong ’990’s inventors
had possession of evaluating the TA’s current IP address and comparing it to
expected values to determine if an address change has occurred. See Chong
Appeal 2011-005360
Application 11/546,384
5
’106, Overview (discussing “examining additional data in the TA
communication (such as the TA’s current lP address)” and matching that
data to “expected values”). Thus, Chong ’990 teaches “(f) evaluating the
differences between the first and second network addresses.”
Regarding limitation “g”, we find that all the Examiner relies on
Chong ’990 for is the teaching or suggestion that a TA heartbeat timing
pattern and physical or logical address are used together to determine if a TA
has a changed location. See Ans. 5, 10. Based on the record before us, we
find that Chong ’106 reasonably conveys to those skilled in the art that
Chong ’990’s inventors possessed the use of timing pattern changes in
combination with tracked changes in IP address to determine if a TA has
changed location. See Chong ’106, Overview (last paragraph).
We note that Appellants have not challenged the Examiner’s finding
that Moore teaches or suggests “(e) recording the amount of time between
the removal and the reconnection of the device.” App. Br. 3-7. The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Based on the record before us, we find that the recorded
amount of time between removal and reconnection of a device as suggested
by Moore in combination with the monitoring of IP addresses and TA
heartbeat timing suggested by Chong ’990 teach or suggest limitations (f)
and (g) to one of ordinary skill in the art.
Based on the foregoing, the Examiner did not err in finding that
Chong ’990 properly claims the benefit of provisional application Chong
’106, and teaches or suggests the (f) and (g) limitations of claim 1.
Appeal 2011-005360
Application 11/546,384
6
DECISION
For the above reasons, the Examiner’s rejection of claims 1-23 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)(1)(iv).

AFFIRMED

tj