Ex Parte Costa-Requena et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10270042 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSE COSTA-REQUENA, PETRI KOSKELAINEN, IGNACIO
ALMAR, IMMACULADA ESPIGARES, and ORIOL RIBERA
____________________

Appeal 2010-000874
Application 10/270,042
Technology Center 2400
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS,
and JOHHNY A. KUMAR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-000874
Application 10/270,042

2
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed April 25, 2012 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of:
Claims 1-4, 6-7, 9-16, 18, 20-27, 29, and 31-34 under 35 U.S.C.
§ 102(a) as being anticipated by IETF1; and
Claims 5, 8, 17, 19, 28, 30, and 35-36 under 35 U.S.C. § 103(a)
as being obvious over IETF and Official Notice.

We have reconsidered our Decision, in light of Appellants’ arguments
in the Request for Rehearing, and we find no errors therein. We decline to
change our prior Decision for the reasons discussed infra.

Appellants request reconsideration of the following issues:
1) That the Examiner misinterpreted membership control channel
and thus, incorrectly found that IETF discloses “communicating the
conference request to the conference server over a membership
control channel;” and
2) That it would not have been obvious for the membership
control channel to use HTTP as a transportation protocol and CGMP
for group management control.

1 Petri Koskelainen, Xiaotao Wu, & Henning Schulzrinne, Internet
Engineering Task Force (IETF) Internet Draft, Additional Requirements to
Conferencing, pp. 1-10, April 29, 2002.
Appeal 2010-000874
Application 10/270,042

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ISSUE 1
35 U.S.C. § 102(a): claims 1-4, 6-7, 9-16, 18, 20-27, 29, and 31-34
Initially, we note that the term “membership control channel” was not
explicitly defined by Appellants in their Specification. Contrary to
Appellants’ argument, Appellants do not define “membership control
channel” but instead, describe that “[i]n one aspect of the present invention,
one or more membership control channels are created between the
conference server 100 and UAs…” (Spec. 14, ll. 3-4 (emphasis added)).
Figure 3 merely shows a coupling between a UA and a Conference Server.
Thus, Appellants provide examples – not a definition.
“[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Accordingly, we
find no error in the interpretation of “member control channel.”
Appellants argue “[t]he only disclosure in IETF relative to the
conference server is that the conference is created at the conference server,
implying, at best, that the data needed to create the conference is
communicated to the conference server” (Reh’g Req. 3). We agree with
Appellants that the data needed to create the conference is communicated –
such as data requesting the conference. Additionally, Appellants argue
“IETF provides no detail regarding any mechanism for communicating a
conference request to a conference server” (id.). However, the Examiner
relied on knowledge of an ordinary artisan as set forth by Appellants in their
Specification of “other side channels as needed” disclosing use of one of the
other side channels as the membership control channel (Ans. 10).
Appeal 2010-000874
Application 10/270,042

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IEFT discloses a conference is created (IEFT, §1 Introduction) and
communication occurs between the server and conference members (IEFT,
§2 Overview), and Appellants admit an ordinary artisan had the knowledge
to have used channels to communicate (Spec. 1 and 2). Therefore, as set
forth in our Decision, we find IEFT discloses “communicating the
conference request to the conference server over a membership control
channel” (Ans. 3).
As a result, Appellants have not persuaded us of error in the
Examiner’s rejections of claims 1-4, 6, 7, 9-16, 18, 20-27, 29, and 31-34.

ISSUE 2
35 U.S.C. § 103(a): claims 5, 8, 17, 19, 28, 30, and 35-36
Appellants contend “IETF does not provide sufficient evidence that
would have led the person of ordinary skill in the art to modify IEFT…to
provide for the use of SOAP for group management in a membership control
channel or for the use of CGMP in the specific claimed environment”
(Reh’g Req. 6). We are not persuaded of error in the rejection of claims 5,
17, and 28 – HTTP as a transportation protocol and the rejection of claims 8,
19, and 30 – CGMP for group management. We agree with the Examiner’s
findings and conclusions (Ans. 5-6) as set forth in our Decision (Decision 7).
We further emphasize that we conclude it would have been obvious to an
ordinary artisan at the time of the invention for the membership control
channel to use HTTP as a transportation protocol and CGMP for group
management.

Appeal 2010-000874
Application 10/270,042

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CONCLUSION
We have considered the arguments raised by Appellants in the
Request for Rehearing, but find none of these arguments persuasive that our
original Decision was in error. It is our view that Appellants have not
identified any points that the Board has misapprehended or overlooked. We
are still of the view that the invention set forth in claims 1-4, 6-7, 9-16, 18,
20-27, 29, and 31-34 is anticipated over the applied prior art based on the
record before us in the original appeal and set forth in claims 5, 8, 17, 19, 28,
30, and 35-36 as being obvious over the applied prior art and Official Notice
based on the record before us in the original appeal. We have reconsidered
our Decision but decline to grant the relief requested.
This Decision on Appellants’ Request for Rehearing is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1).

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of April 25, 2012, but we deny the request with
respect to making any changes therein.

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). See also 37
C.F.R. § 41.52(b).

REHEARING DENIED

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