Ex Parte den Hartog et al

Patent Trial and Appeal Board

May 12, 2016

11568959 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111568,959 08/14/2007
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
05/16/2016
FIRST NAMED INVENTOR
Jos den Hartog
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.
Pl9209-US1 2902
EXAMINER
DECKER, CASSANDRA L
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOS DEN HAR TOG and RAKESH TAORI1
Appeal2014-005737
Application 11/568,959
Technology Center 2400
Before JEFFREY S. SMITH, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 5-9, and 12-18, which are all of the claims pending.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in
interest. (App. Br. 1.)
2 Claims 3, 4, 10, 11, and 19 were canceled in an amendment dated July 7,
2011.
Appeal2014-005737
Application 11/568,959
Introduction
According to Appellants, "[t]he invention relates generally to a
method for initiating an enhanced communication connection, between a
calling party (A) and a called party (B), within a telecommunication network
system comprising multiple interconnected networks .... " (Spec. 1.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A method for initiating a communication connection
between a calling party and a called party within a
telecommunication network system compnsmg multiple
interconnected networks, said method comprising the steps of:
- initiating, in a circuit-switched network of the
telecommunication network system, a circuit-switched
connection between the calling party and the called party, and
initiating, in a packet-switched network of the
telecommunication network system, a packet-switched
connection between the calling party and the called party;
- alerting said called party with a first alert signal about
the initiation of said circuit-switched connection;
- alerting said called party with a second alert signal
about the initiation of said packet-switched connection; and
- after alerting said called party with said first and second
alert signals, utilizing a single response invoked by said called
party in response to one of said alert signals to indicate:
whether said called party accepts establishment of said
circuit-switched connection, and
whether said called party accepts establishment of said
packet-switched connection.
2
Appeal2014-005737
Application 11/568,959
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moricca et al. ("Moricca")
Bell et al. ("Bell")
Parker et al. ("Parker")
Sylvain ("Sylvain 2")
Sylvain
Sindhwani et al. ("Sindhwani")
us 4,080,517
us 5,937 ,057
US 2003/0074451 Al
US 2004/0008837 Al
US 7,366,183 Bl
US 7,496,360 B2
REJECTIONS3
Mar. 21, 1978
Aug. 10, 1999
Apr. 17, 2003
Jan. 15,2004
Apr. 29, 2008
Feb.24,2009
Claims 1, 8, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain and Moricca. (Final Act. 4--8.)
Claims 2 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Moricca, and Parker. (Final Act. 9-10.)
Claims 5, 7, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sylvain, Moricca, and Bell. (Final Act. 10-11.)
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Moricca, Bell, and Sindhwani. (Final Act. 11-
12.)
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Moricca, and Sindhwani. (Final Act. 12-13.)
3 In the Final Action, the Examiner also rejected claims 1, 2, 5-9, and 12-18
under 35 U.S.C. § 112, first paragraph, as "failing to comply with the written
description requirement." (Final Act. 2-3.) The Examiner also rejected
claims 15-18 under 35 U.S.C. § 112, second paragraph, "as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor ... regards as the invention." (Final
Act. 3--4.) In the Answer on appeal, the Examiner withdraws these
rejections. (Ans. 2.)
3
Appeal2014-005737
Application 11/568,959
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Moricca, Sindhwani, and Sylvain 2. (Final Act.
13.)
ISSUES4
1. Whether the Examiner erred in finding the combination of
Sylvain and Moricca teaches or suggests "alerting said called party with a
second alert signal about the initiation of said packet-switched connection,"
as recited in independent claim 1.
2. Whether the Examiner erred in finding Sylvain teaches or
suggests "utilizing a single response invoked by said called party in response
to one of said alert signals to indicate: whether said called party accepts
establishment of said circuit-switched connection, and whether said called
party accepts establishment of said packet-switched connection," as recited
in independent claim 1.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: ( 1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 4--
13) and (2) the reasons set forth by the Examiner in the Examiner's Answer
4 Appellants argue claims 8 and 15 collectively with claim 1 (App. Br. 10),
and do not argue the dependent claims separately from their respective
independent claims (App Br. 10-11 ). Therefore, we decide the appeal of all
pending claims (claims 1, 2, 5-9, and 12-18) based on claim 1 alone. See 37
C.F.R. § 41.37(c)(l)(iv).
4
Appeal2014-005737
Application 11/568,959
in response to Appellants' Appeal Brief (Ans. 2-8.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 5
A. "[A]lerting said called party with a second alert signal . .. "
The Examiner finds Sylvain teaches or suggests all limitations of
claim 1, except for a "second alert signal for alerting said called party about
the initiation of the packet switched connection." (Final Act. 5.) The
Examiner finds, however, Moricca "teaches that it is well known to have
separate alerts for separate incoming connections to a single multiline
telephone .... " (Id. (citing Moricca, Abstract and 1:14--32).) Appellants
argue the Examiner's findings are in error because "nothing in Moricca
teaches or suggests alerting the called party with two alert signals about the
initiation of two corresponding connections initiated by the same calling
party, as required by claim 1." (App. Br. 7.)
Appellants' argument is not persuasive because it does not address the
Examiner's rejection as made. As the Examiner finds, and we agree,
"because Sylvain teaches two corresponding connections initiated by the
same calling party, it is not necessary that Moricca provide this teaching."
(Ans. 3 (emphasis added).)
Appellants also argue error in the Examiner's findings regarding a
motivation to combine Sylvain and Moricca. In particular, Appellants argue:
[T]he Examiner does not cite any prior art reference as
providing this motivation for the proposed modification, instead
5 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
5
Appeal2014-005737
Application 11/568,959
noting that "no prior art reference is needed for supplying such
a motivation." See Office Action at 3. However, if the
Examiner's position is that no prior art reference is needed to
supply the motivation, the Examiner implicitly must be relying
on personal knowledge that the motivation to combine
[Sylvain] and Moricca in the particular way that results in
Applicants' claimed invention was known at the time of the
invention.
(App. Br. 8 (emphasis added); see also Reply Br. 2.) Appellants then argue
that the Examiner's alleged reliance on "personal knowledge" must be
supported by an "Examiner affidavit, pursuant to 3 7 C.F.R. 1.104( d)(2) ...
" (App. Br. 8; Reply Br. 3.)
We do not agree the Examiner has erred in finding a motivation to
combine, or that the Examiner has based the motivation on "personal
knowledge." Rather, as the Examiner notes, the Examiner derived the
motivation from the teachings of the cited references. (Ans. 4.) We
recognize the Examiner must articulate "reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006). However, contrary to Appellants'
arguments, the Examiner's reasoning need not appear in, or be suggested by,
one or more of the references on which the Examiner relies. Instead, a
reason to combine teachings from the prior art "may be found in explicit or
implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved." WMS Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
"Under the correct [obviousness] analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
6
Appeal2014-005737
Application 11/568,959
provide a reason for combining the elements in the manner claimed." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
With regard to the rationale supporting the motivation of a person of
ordinary skill in the art to achieve the claimed subject matter, the Examiner
finds "[t]he motivation would be to allow the called party to respond from
whichever part of the circuit switching and packet switching terminal is most
convenient to the user." (Final Act. 5; see also Ans. 4.) We have considered
Appellants' arguments against the Examiner's finding (Reply Br. 2-3), but
do not find them persuasive of Examiner error. In particular, Appellants
have not provided persuasive evidence or reasoning explaining why such
rationale is erroneous or why a person of ordinary skill in the art would not
have reached the conclusions reached by the Examiner. See DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable of combining
the prior art references."). At most, Appellants suggest that the references
cannot be physically combined. (See Reply Br. 2.) However, "it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review." In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. Inc. v. United States,
702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958
(CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures."). "The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
7
Appeal2014-005737
Application 11/568,959
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted).
For the foregoing reasons, we are not persuaded of error in the
Examiner's findings that the combination of Sylvain and Moricca teaches or
suggests the disputed limitation requiring a "second alert signal .... "
B. "[U]tilizing a single response invoked by said called
party in response to one of said alert signals ... "
Appellants argue the Examiner's findings regarding the "single
response" limitation are in error because:
Although [Sylvain] states that after the voice call is answered
associated multimedia clients "have the necessary information
to communication with each other," the multimedia clients do
not necessarily establish a multimedia session with each other
in response to the voice call being answered. Instead, [Sylvain]
simply states that a session "may" be initiated with a SIP Invite
message, implying that the multimedia sess10n may
alternatively not be initiated.
(App. Br. 9 (emphases added).) In other words, Appellants argue Sylvain
does not teach "utilizing a single response" because, according to
Appellants, Sylvain "does not explicitly describe how the multimedia clients
decide whether to establish a multimedia session" (App. Br. 9), and it is
possible a ''further response from the called party is required for the
multimedia session to actually be initiated." (Id. at 3 (emphasis added).)
This argument is unpersuasive. As the Examiner finds, and we agree,
Sylvain teaches "only a single response from the called party (the Offuook
signal), and the circuit switched and packet switched sessions are established
without a further response from the called party." (Ans. 6; see also Ans. 5
8
Appeal2014-005737
Application 11/568,959
(citing Sylvain 7:60-8: 12).) In particular, we agree with the Examiner that
Sylvain's use of the phrase "may be initiated" does not suggest that a
multimedia session will require an additional response invoked by the called
party before the multimedia session will commence. To the contrary, as
depicted in Figure 3 and described in columns 7-8 of Sylvain, Sylvain
describes automated messaging between the calling party's and the called
party's multimedia clients so that they each learn of the other's multimedia
capabilities as the called party's phone is ringing. (Sylvain 7:44--56 and
Figure 3.) Once the called party answers the call, thus generating an
"Offuook message," the multimedia clients communicate back and forth and
"a video session is established." (Sylvain 8: 1-12.) Sylvain states:
A session between multimedia clients 22A [calling party] and
22B [called party] may be initiated by multimedia client 22A
sending a SIP Invite message to multimedia client 22B using
the appropriate multimedia address (step 226). For a video
session, the SDP within the SIP Invite message may identify the
session as video. _L"",,1ultimedia client 22B 1r'Vill take the necessary'
steps to configure itself to receive or transmit video packets,
and send a SIP 200 OK message back to multimedia client 22A
to acknowledge receipt of the SIP Invite message (step 228).
In normal SIP fashion, multimedia client 22A will respond with
a SIP Acknowledgement (ACK) message (step 230), wherein a
video session is established (step 232).
(Sylvain 7:66-8: 12 (emphases added).)
Even supposing the phrase "may be initiated" could be read to suggest
that the multimedia client 22A (calling party) may or may not send an SIP
Invite message, Sylvain's teachings would still be within the scope of claim
1 because, either way, no further response need be invoked by the called
party. Rather, as noted above, Sylvain teaches that when the multimedia
client of the calling party sends an SIP Invite, the multimedia client of the
9
Appeal2014-005737
Application 11/568,959
called party will automatically respond and "take the necessary steps to
configure itself to receive or transmit video packets," and thereafter, "[i]n
normal fashion ... a video session is established . ... " (Sylvain 8:6-12
(emphasis added).) Thus, as the Examiner correctly finds, Sylvain does not
suggest that further action on the part of the called party is required beyond
the "single response" of the "Offuook message." (Ans. 5-6.) In making
these findings, the Examiner has not, as Appellants argue, based his findings
on "personal knowledge" instead of on the teachings and suggestions of the
Sylvain reference itself. (See App. Br. 10; cf Ans. 7.)
For the foregoing reasons, we are not persuaded of error in the
Examiner's finding that the combination of Sylvain and Moricca teaches or
suggests the limitations of claim 1, and we, therefore, affirm the Examiner's
35 U.S.C. § 103(a) rejection of claim 1, and also claims 2, 5-9, and 12-18,
which are not argued separately from claim 1.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1, 2, 5-9, and 12-18 are 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
10