Ex Parte Clark et alDownload PDFPatent Trial and Appeal BoardFeb 3, 201711993748 (P.T.A.B. Feb. 3, 2017) Copy Citation 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. 11/993,748 05/07/2010 David William Clark 08929083US 9520 21028 7590 02/07/2017 Cowling WLG (Canada) LLP 160 ELGIN STREET SUITE 2600 OTTAWA, ON KIP 1C3 CANADA EXAMINER ANSARI, NAJEEBUDDIN ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 02/07/2017 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, JONATHAN ALLAN ARSENAULT, JEFFREY WILLIAM DAWSON, and ERIC JOHN WOLF Appeal 2016-002976 Application 11/993,748 Technology Center 2400 Before ST. JOHN COURTENAY III, ERIC FRAHM, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—86, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2016-002976 Application 11/993,748 Invention The disclosed and claimed invention on appeal “relates generally to communications over a data network and, more particularly, to a method and system for managing communications for a group of communication clients sharing a common customer identifier.” (Spec. 1,11. 8—10). Representative Claim 1. A method of implementing a virtual private branch exchange (PBX) feature for a customer associated with a plurality of endpoints, comprising: receiving information regarding a call; determining from the information regarding the call if the call is an external inbound call or an internal call from one of the endpoints that identifies a different particular one of the endpoints; responsive to determining that the call is an external inbound call, causing the call to be routed to the plurality of endpoints associated with the customer without being passed through a PBX or key system; responsive to determining that the call is an internal call from one of the endpoints that identifies a different particular one of the endpoints, causing the call to be routed to the particular one of the endpoints without being passed through a PBX or key system. (Contested limitation emphasized, hereinafter referred to as the “internal call” limitation.) 2 Appeal 2016-002976 Application 11/993,748 Rejections A. Claims 1—6, 12—16, 27—33, 36—39, 46—54, 61, 63—68, and 75—86 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Forte (US 2006/0245569 Al; Nov. 2, 2006) in further view of Hakusui (US 2007/0047534 Al; Mar. 1, 2997) hereinafter “Forte” and “Hakusui”, respectively. B. Claims 8-11, 17, 19-26, 34, 35, 40-A5, 55-60, 62, and 69-74 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Forte, Hakusui, in view of Mansfield (US 2003/0035523 Al; Feb. 20, 2003) hereinafter “Mansfield”. C. Claims 7 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Forte, Hakusui, in view of Dolan et al. (US 2006/0227957 Al; Oct. 12, 2006) hereinafter “Dolan”. Grouping of Claims Based upon Appellants’ arguments, we decide the appeal of all claims rejected under rejection A on the basis of representative claim 1. We address rejections B and C separately, infra. To the extent Appellants have not advanced separate, substantive arguments for particular rejected claims or issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. We find Appellants’ arguments unpersuasive for the reasons discussed infra. We adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Office Action from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in 3 Appeal 2016-002976 Application 11/993,748 the Answer in response to Appellant’s arguments (Ans. 3—8). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Representative Claim 1 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the cited combination of Forte and Hakusui would have taught or suggested the contested “internal call” limitation: responsive to determining that the call is an internal call from one of the endpoints that identifies a different particular one of the endpoints, causing the call to be routed to the particular one of the endpoints without being passed through a PBX or key system[,] within the meaning of representative claim 1 (emphasis added)? 1 Appellants contend, inter alia, that Forte does not teach or suggest the negative limitation because: Forte’s solution presumes the use of a PBX, both in case of a direct extension call from one internal telephone device to another internal device (see paragraph 0029 and FIG. 3, step 104) and the case of an inbound DID [(Direct Inward Dial 117)] call (see paragraph 0037 and FIG. 4, steps 210 and 214). Thus, the teachings of Forte are contrary to those recited in claim 1, and it is difficult to see how Forte could be reasonably interpreted as teaching the feature of “responsive to determining that the call is an internal call from one of the endpoints that 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Cf Spec. 28,11. 2A-27: “While specific embodiments of the present invention have been described and illustrated, it will be apparent to those skilled in the art that further modifications and variations can be made without departing from the scope of the invention as defined in the appended claims.” See also Spec. 5,1. 22: “DETAIFED DESCRIPTION OF NON-FIMITING EMBODIMENTS.” 4 Appeal 2016-002976 Application 11/993,748 identifies a different particular one of the endpoints, causing the call to be routed to the particular one of the endpoints without being passed through a PBX or key system” (emphasis added) as recited in claim 1. Appeal Br. 12—13. Claim Construction At the outset, we note the negative limitation “without being passed through a PBX or key system’'’ (claim 1) (emphasis added) was added by amendment during prosecution. Appellants point to written description support (i.e., a reason to exclude) for the negative limitation on page 27 of the Specification, lines 21—23: “In addition, it is noted that customer 101A does not need to purchase or lease any PBX or key system hardware in order to benefit from the present solution.” 2 (See Appeal Br. 5) (emphasis added). We note the Examiner relies on Hakusui, not Forte, for teaching or suggesting the contested negative limitation. (Final Act. 4—5; Ans. 5), although in the “Response to Arguments” (Ans. 4), the “Examiner questions [Appellants’] argument that the wireless connect unit of Forte cannot be considered an endpoint within the enterprise network when the present application itself discloses similar features.”3 * 5(emphasis added). 2 See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”). 3 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.). 5 Appeal 2016-002976 Application 11/993,748 “Virtual Private Branch Exchange ” versus “PBX” We additionally note the distinction between the preamble term “virtual private branch exchange (PBX)” and the similar term “PBX” that is twice recited within the body of claim 1 (i.e., within each negative limitation —“without being passed through a PBX or key system”).4 In considering claim 1 as a whole, and in light of the Specification (1,11. 29-33), we conclude the term “PBX” refers to any non-virtual PBX system, under a broad but reasonable interpretation.5 Turning to the Specification for context, we note a “virtual private branch exchange service” is expressly disclosed on page 12, line 33 of Appellants’ Specification (using the acronym VPBX instead of PBX). We find the “Detailed Description Of Non-Limiting Embodiments” section of the Specification (beginning on page 5) is focused on descriptions of the virtual private branch exchange (VPBX) service, as distinguished from the prior art (non-virtual) “PBX” described in the “Background” section of the Specification (1): “A private branch exchange (PBX) or key system is 4 “[T]he use of [two similar but different] terms in close proximity in the same claim gives rise to an inference that a different meaning should be assigned to each . . . That inference, however, is not conclusive; it is not unknown for different words to be used to express similar concepts, even though it may be poor drafting practice.” Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (citing Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (stating that “[i]f the terms ‘pusher assembly’ and ‘pusher bar’ described a single element, one would expect the claim to consistently refer to this element as either a ‘pusher bar’ or a ‘pusher assembly, ’ but not both, especially not within the same clause. Therefore, in our view, the plain meaning of the claim will not bear a reading that ‘pusher assembly’ and ‘pusher bar’ are synonyms.”)). 5 See Morris, YU F.3d at 1054. 6 Appeal 2016-002976 Application 11/993,748 another solution for allowing members of the small business or household to communicate with one another by dialing ‘extensions.’” Further, we conclude claim 1 fails to precisely define the claim term “external inbound call,” thus raising the question of what specific element in claim 1 the “external inbound call” is “external” to. Therefore, we broadly but reasonably construe this claim term as a term of degree.6 7 Turning to the Specification for context, we find a description of a non limiting embodiment where the external inbound call is from the perspective of a customer. (Spec., 18,11. 33—34; 19,11. 6—8). Therefore, consistent with the Specification {id.), we broadly but reasonably construe the claim term “external inbound call” as having a scope at least covering the perspective of any customer who makes a call from any endpoint “without being passed through a PBX or key system” (claim 1), and that is not an “internal call” as distinguished infra. 1 As recited in claim 1, if the method determines a call to be an external inbound call, such call is “routed to the plurality of endpoints associated with the customer without being passed through a PBX or key system,” i.e., a one-to-many mapping from a caller (customer) to a plurality of endpoints (e.g., plural telephones at a business). 6 See Claim 1: We parse and construe the “determining” step of claim 1 in accordance with the alternative “or” claim language: determining from the information regarding the call if the call is {an external inbound call} or {an internal call from one of the endpoints that identifies a different particular one of the endpoints.} (emphasis added). 7 “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)(citing Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 65-66 (1923)). 7 Appeal 2016-002976 Application 11/993,748 In accordance with the alternative “or” claim language, we broadly but reasonably construe the recited “internal call” as any “call from one of the endpoints that identifies a different particular one of the endpoints,” as expressly defined within claim 1. (emphasis added). See n.6, supra. In contrast to the “external inbound calf discussed above, if the method of claim 1 determines a call to be an “internal call,” such call is “routed to the particular one of the endpoints without being passed through a PBX or key system,” i.e., a one-to-one mapping from a single caller to a single endpoint (e.g., a single telephone endpoint). We additionally conclude that “endpoints” are not defined in claim 1. Nor have Appellants pointed in the Briefs to a definition for the claim term “endpoints” in the Specification. However, in the Reply Brief (2), Appellants refer to a non-limiting example of an endpoint: “The claimed subject matter provides a method for implementing a virtual private branch exchange for a number of endpoints, which for the sake of simplicity of the discussion may be considered as telephones.” 8 (emphasis added). Therefore, we broadly but reasonably construe the recited “endpoints” as encompassing any telecommunications endpoint (i.e., a point of connection between any telephony elements, including, but not limited to, telephones).8 9 8 See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The “court. . . observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.”). 9 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 8 Appeal 2016-002976 Application 11/993,748 Given our claim construction, on this record, we are not persuaded the Examiner erred in finding that the contested “internal call” limitation is taught or suggested by Forte, in combination with Hakusui, as follows: Forte teaches the WC 30 allows a remote device such as wireless telephone 70 to act as an office PBX telephone for outbound telephone calls such that a user will be able to use its wireless telephone or any remote device to make station-to- station calls as if he were using an office telephone directly connected to the office PBX 14 (Forte: paragraph 0041; see also paragraphs 0031, 0036 & 0046). If the user decides to place a station-to station call, for example, the call would appear to be an internally dialed call at the destination office telephone (Forte: paragraph 0046). [The] Examiner notes since the call is placed internally from any remote device to another station or destination office telephone, the wireless connect unit still acts as another station internal of the private enterprise network regardless of the device being wireless or not. Thus Examiner has considered the wireless device as another station of the enterprise network that may place internal calls to other stations similarly teaching endpoints making internal calls from another endpoint as in the present application. (Ans. 4—5) (emphasis added). As pointed out by the Examiner {id.), a preferred embodiment in Forte (141) bypasses PBX 14 (Fig. 1) and uses the wireless connection unit (WC 30) as an endpoint: In accordance with a preferred embodiment, WC 30 allows a remote device such as a wireless telephone 70 to act as an office PBX telephone for outbound telephone calls following call processing flow 300 illustrated in FIG. 5. That is, a user will be able to use its wireless telephone (or any remote device) to make station-to-station calls as if he were using an office telephone directly connected to the office PBX 14. (Forte 141). 9 Appeal 2016-002976 Application 11/993,748 As noted above, the Examiner relies on Hakusui, and not Forte, for teaching or suggesting the recited negative limitation. (Final Act. 4—5). Appellants acknowledge “Hakusui discloses a virtual PBX (VPBX) system” (App. Br. 15); however, we find Appellants attack Hakusui in isolation without considering the collective teachings and suggestions of Forte and Hakusui. (See App. Br. 15—16). Moreover, Appellants do not substantively contest the Examiner’s proffered combinability of the references under §103. (Final Act. 5). Because we broadly but reasonably construe the recited “endpoints” as encompassing any telecommunications endpoint (i.e., any point of connection between telephony elements, including wireless telephones or wireless connection units), we find Appellants’ contention unpersuasive that “[t]he remote device [in Forte] does not place an internal call but rather places an inbound call to the wireless connect unit as alleged.” (Reply Br. 3, last sentence). See n.6, n.9 supra. Moreover, our reviewing court guides, “the question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (citation omitted); see also MPEP § 2123. This reasoning is applicable here. For essentially the same reasons articulated by the Examiner in the Answer (3—8), we find the combined teachings of Forte and Hakusui teach or at least suggest all that is contested by Appellants. Therefore, on this record, and given the evidence relied on by the Examiner (Final Act. 2—5; Ans. 3—8), as further discussed above, we find Appellants’ arguments unavailing regarding the contested “internal 10 Appeal 2016-002976 Application 11/993,748 call” limitation. Accordingly, we sustain rejection A of representative claim 1. The associated grouped claims fall with claim 1. See “Grouping of Claims’ '' supra. Rejections B and C of Remaining Claims Appellants do not separately argue the patentability of the remaining claims on appeal. Instead, Appellants rely on arguments previously advanced for independent claim 1, and urge the respective additional cited secondary references fail to overcome the purported deficiencies of the base combination of Forte and Hakusui. (App. Br. 17—18). However, for the same reasons discussed above regarding claim 1, we find these arguments unpersuasive. Accordingly, we sustain the Examiner’s rejections B and C of the remaining claims on appeal, over the respective combinations of prior art. Reply Brief To the extent Appellants advance new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note 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). Conclusion For at least the aforementioned reasons, and on this record, Appellants have not persuaded us the Examiner erred. We find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for all contested claims on appeal. 11 Appeal 2016-002976 Application 11/993,748 DECISION We affirm the Examiner’s decision rejecting claims 1—86 under § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 12 Copy with citationCopy as parenthetical citation