Ex Parte Clark et al

Patent Trial and Appeal Board

Jul 26, 2016

11993794 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111993,794 05/07/2010
21028 7590 07/28/2016
Gowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTA WA, ON KIP 1C3
CANADA
FIRST NAMED INVENTOR
David William Clark
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. CONFIRMATION NO.
08929301US 9940
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
Patprosec@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM CLARK, ERIC JOHN WOLF,
JEFFREY WILLIAM DAWSON, and JONATHAN ALLAN ARSENAULT
Appeal2015-000372
Application 11/993,794
Technology Center 2400
Before MAHSHID D. SAADAT, MIRIAM L. QUINN,
and ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11, 18, 19, 24--36, 43, 44, and 48-56. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is BCE INC. (App.
Br. 3.)
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Application 11/993,794
STATEivIENT OF THE CASE
Introduction
Appellants' invention relates to "method, system and apparatus for
causing a communication client to join a media-over-packet communication
session." (Spec. 1.) Claim 1 is illustrative of Appellants' invention, and is
reproduced below:
1. A method comprising:
receiving from a particular communication client an
indication indicative of a desire of the particular communication
client to establish a communication session, the particular
communication client being registered in association with a
user account;
determining if there exists at least one active
communication session established with at least one other
communication client registered in association with said user
account;
responsive to determining that there does exist at least
one active communication session established with at least one
other communication client registered in association with said
user account, causing the particular communication client to
join at least one of said at least one active communication
sess10n.
Rejections on Appeal
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Low et al.
("Low")
Adams et al.
("Adams")
US 8, 166, 173 B2
US 2007 /0064682 Al
2
Apr. 24, 2012
Mar. 22, 2007
Appeal2015-000372
Application 11/993,794
Claims 1-11, 18, 19, 24--36, 43, 44, and 48-56 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Low in view of Adams.
(See Final Office Action (mailed October 31, 2013) ("Final Act.") 15-27.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are not persuaded by
Appellants' arguments.
Claims 1-5, 8-11, 24-28, 33-36, 48, and 56
Argument One
Neither Low nor Adams Takes into Consideration
the User Account to Which the Party Might Be Registered
The Examiner finds that Low in view of Adams teaches the
"determining if there exists at least one active communication session
established with at least one other communication client registered in,
association with said user account ... causing the particular communication
client to join at least one of said at least one active communication session"
limitation of claim 1. (Final Act. 15-18.) Appellants contend that "[n]either
reference takes into consideration the user account to which the party might
be registered, so as to determine, as a suitable session to join, one that is
'established' with at least one other communication client registered in
association with said user account." (App. Br. 12, emphasis added.)
According to Appellants,
Low . . . does not require---or even consider-as part of the
selection process, that the user account to which the requesting
party is registered must be the same as the user account to
which is registered one of the communication clients that is
party to the session that is ultimately selected.
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As for Aaams . . [the] other party also does not qualify as
another communication client registered to the same user
account as the communication client that requested the call
joining operation.
(App. Br. 12, emphasis in original.) We are not persuaded that
Appellants have shown the Examiner erred. We agree, instead, with
the Examiner's findings that Low teaches "database lookups in a
customer database 39 holding information about the requesting party
in order to complete the initiation context of the requested session[,
and] Low indicates that [the] requesting party must have met certain
conditions and have certain attributes before the session is allowed to
proceed." (Ans. 4; see Low, 14:5-15.) With regard to Adams, we
also agree with the Examiner's determination that "it would have been
obvious to assign a user account for the Adams customer premises
equipment in order for the VOIP service provider to implement
accurate billing and collection systems" because "it would have been
well-known in the networking art to assign a user account for
customer premises equipment." (Ans. 4--5; see US 2008/0084870 Al
to Taylor et al., i-f 86.)
Argument Two
Adams Does Not Teach Another Communication Client and
Resulting Conference Call Includes Only One Communication Client
Appellants contend that Adams does not teach the limitation of "at
least one other communication client registered in association with said user
account," recited in claim 1 because:
it would be unreasonable to interpret the "on hold" call as an
"active communication session" . . . [and even assuming if it
was] it is obvious that the communication client that requested
the call joining operation cannot simultaneously be another
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communication ciient reg1sterea to the same user account.
Meanwhile, the other of the two communication clients
involved in the "on hold" call is unknown and totally unrelated
to the communication client that requests the call joining
operation.
(App. Br. 12.) We are not persuaded that Appellants have shown the
Examiner erred. We agree, instead, with the Examiner's finding that "[s]ub-
windows 3 lOa-3 lOd [(in Adams)], when used by the user for different
simultaneous calls, are equivalent to the claimed communication client that
requested the call joining operation" because "each of the different VoIP
telephone numbers are assigned to separate and distinct sub-windows 3 lOa-
3 lOd." (Ans. 7.) We also agree with the Examiner's determination that the
Adams sub-windows are registered to the same user account because "each
of the Adams sub-windows are implemented and initiated from the same
singular customer premises equipment [ ("CPE")]." (Ans. 7.)
Appellants further argue that "the resultant conference call includes
only a single alleged communication client from the CPE" because,
according to Appellants, "the sub-windows of Adams ... are combined into
a single multi-party conference call." (Reply 4.) We are not persuaded
because Appellants' argument is not commensurate with the scope of
claim 1. The claim requires "causing the particular communication client to
join at least one of said at least one active communication session," and does
not recite "that after joining, the active communication session includes both
communication clients." (Id.) Importantly, we agree with the Examiner's
finding that after joining the Adams sub-window communication sessions,
the resulting conference call in Adams includes both communication clients
because "[e]ach sub-window with its assigned VOIP telephone number is
equivalent to the communication client" and Adams discloses that the VOIP
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phone enables a user to make multi-party conference calls from those
telephone numbers. (Ans. 6-7.) Accordingly, we are not persuaded that
Appellants have shown the Examiner erred.
Argument Three
Examiner's Rejection is Logically Incoherent
Appellants contend that the Examiner's rejection is logically
incoherent because, on the one hand, "the Examiner seems to be alleging
that Low fails to teach determining whether a certain condition is met, but,
[on the other hand, the Examiner alleges] that Low somehow teaches
causing an action to take place in response to determining that this condition
was met." (App. Br. 13-14.) The Examiner explains that:
that there are two (2) separate conditions that are required in the
limitation.
Low disclosed 1) determining that there does exist at least one
active communication session established with at least one
other communication client.
Low however does not disclose 2) determining that active the
communication client(s) are registered in association with said
user account.
Low is not relied upon to disclose wherein the communication
client is registered in association with said user account.
Adams disclosed (re. Claim 1) a communication client being
registered in association with a user account ....
(Ans. 7-9.) In other words, the Examiner relies on the combination of Low
and Adams. Therefore, Appellants' argument is not responsive to the
Examiner's rejection, which clearly does not rely on Low alone.
Consequently, we are not persuaded that Appellants have shown that the
Examiner erred.
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Argument Four
Combination of Low and Adams Do Not Satisfj;
the "Determining . .. "Limitation
The Examiner finds that the limitation of "determining if there exists
at least one active communication session established," recited in claim 1 is
met by the combination of Low and Adams. (Ans. 5---6; Final Act. 5-9, 15-
18; see Low, 15:45---65, 16:5-25; Adams, Figs. 3, 27, i-fi-126-28, 35, 42.)
Appellants, however, contend that "even if Adams is combined with Low,
the contribution of Adams does not amount to" the limitation at issue. (App.
Br. 13, emphasis added.) We are not persuaded that Appellants have shown
the Examiner erred. "One cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references." See In re Keller, 642 F.2d 413, 426 (CCPA
1981 ). Here, we find that the Examiner has articulated a reasoning with a
rational underpinning for why a person of ordinary skill in the art at the time
of the invention would combine Low and Adams. (Ans. 5---6; Final Act. 18.)
See KSR Int'! Co., v. Teleflex, Inc., 550 U.S. 398, 415, 418 (2007).
Conclusion Concerning Claim 1 Arguments
For the reasons discussed above, we are not persuaded by Appellants'
contentions with respect to the disputed limitations recited in claim 1. Thus,
we sustain the Examiner's rejection of this claim under 35 U.S.C. § 103(a).
We also sustain the 35 U.S.C. § 103(a) rejection of claims 2-5, 8-11, 24--28,
33-36, 48, and 56, as well as the rejection of claims 25 and 28-30, because
these claims are not argued separately.
Claims 6, 7, and 29-32
With regard to dependent claim 6, in addition to the arguments raised
above, Appellants further contend that "[i]n Adams, there is never a set of
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two or more VoIP phones registered to the same VoIP number," and
therefore, "Adams cannot possibly be held to teach the [limitation of] 'based
on said first communication client identifier . . . retrieving from said
database a second communication client identifier of at least one other
communication client registered to said user account,'" recited in claim 6.
(App. Br. 17-19, emphasis added.) The Examiner disagrees and finds that
Low, in view of Adams, discloses the limitation at issue. (Ans. 1 O; Final
Act. 20-21; Low, 14:5-15; Adams, Fig. 27, i-fi-14, 42.) We do not find
Appellants' contention persuasive because it is not commensurate with the
scope of the challenged claim. For example, Appellants' argument suggests,
without support in the claim language, that claim 6 requires a
"communication client" to be a separate physical device. The Specification
belies Appellants' interpretation at least because it describes the
"communication client" broadly as a "functional entity." See Spec. 4:6-15;
see also Spec. 8:8-10 ("communication client .... may be implemented in
hardware, software, firmware or a combination thereof'). Further,
Appellants have not offered persuasive argument that the Examiner's
interpretation of "communication client" is either overbroad or
unreasonable. (Ans. 3, 6.) SeelnreZletz, 893 F.2d319, 321 (Fed. Cir.
1989) (holding that although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims).
Appellants further argue that:
while the claims do not specifically refer to VoIP phones, they
clearly recite that the first and second communication clients
are different. In particular, the claims refer to a particular
communication client as well as at least one other
communication client. It 1s clear that the particular
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communication client and the at least one other communication
client are different from each other.
(Reply 3.) The Examiner has shown, however, that "the first and second
communication clients are different." As discussed above, we agree with the
Examiner's finding that "[ s ]ub-windows 31 Oa-31 Od, when used by the user
for different simultaneous calls, are equivalent to the claimed
communication client that requested the call joining operation" because
"each of the different VoIP telephone numbers are assigned to separate and
distinct sub-windows 3 lOa-3 lOd." (Ans. 7.) We also agree with the
Examiner's finding that Adams's sub-windows are registered to the same
user account because "each of the Adams sub-windows are implemented and
initiated from the same singular customer premises equipment [('CPE')]."
(Ans. 6-7.)
For the reasons discussed above, we are not persuaded by Appellants'
contentions with respect to claim 6. Thus, we sustain the Examiner's
rejection of this claim under 35 U.S.C. § 103(a). We also sustain the
35 U.S.C. § 103(a) rejection of claims 7 and 29-32, which are not argued
separately.
Claims 18, 19, 43, and 44
Appellants contend that Adams fails to disclose "at least two active
communication sessions, each of which is in progress with a separate 'other
communication client registered in association with the user account,"' as
required by claim 18. (App. Br. 20-24.) Specifically, similar to the above
argument, Appellants contend that
as has already been explained, while in Adams, the same VoIP
phone may use multiple different VoIP numbers, there is never
a set of two or more VoIP phones registered to the same VoIP
number. As such, it is implausible to expect that Adams will
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yield "a first active communication session is in progress with a
first other communication client registered in association with
the user account", let alone two active communication sessions
in progress with two other communication client registered in
association with the user account.
(App. Br. 21-22.)
We do not agree with Appellants' contentions regarding claim 18 for
the same reasons stated with respect to Argument Two, above. We agree,
instead, with the Examiner's finding that Low, in view of Adams, teaches
the limitations at issue. (See Final Act. 10-11, 23-25.) Thus, we sustain the
Examiner's rejection of claim 18 under 35 U.S.C. § 103(a). We also sustain
the 35 U.S.C. § 103(a) rejection of claims 19, 43, and 44, which are not
argued separately. (App. Br. 25.)
Claims 49-54
With regard to claim 49, Appellants make similar arguments to those
raised above. (App. Br. 25-29.) We do not agree with Appellants'
contentions for the same reasons stated with respect to Arguments One and
Two, above. We agree, instead, with the Examiner's finding that Low, in
view of Adams, teaches the limitations at issue. (See Final Act. 11-12, 25-
27.)
For the reasons discussed above, we sustain the Examiner's rejection
of claim 49 under 35 U.S.C. § 103(a). We also sustain the 35 U.S.C.
§ 103(a) rejection of claims 50-54, which are not argued separately. (App.
Br. 29-30.)
DECISION
The decision of the Examiner to reject claims 1-11, 18, 19, 24--36, 43,
44, and 48-56 is affirmed.
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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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