Ex Parte Efrati et al

Patent Trial and Appeal Board

Mar 8, 2016

13324585 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/324,585 12/13/2011
96355 7590 03/10/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Tzahi Efrati
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.
JCE-5524-63 2878
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TZAHI EFRATI, BARUCH STERMAN, and YARIV TRABEL
Appeal2014-005155
Application 13/324,585
Technology Center 2600
Before JOHN A. EVANS, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b ). We
reverse.
STATEMENT OF THE CASE
The present invention relates to Internet protocol (IP) telephony
systems. See generally Spec. 1. Claim 1 is exemplary:
Appeal2014-005155
Application 13/324,585
1. A method of conducting a voice over Internet protocol (VOIP)
telephone call, comprising:
establishing a first wireless data connection with a data network;
communicating with a media relay over the first wireless data
connection to exchange data packets bearing the media of a VOIP telephone
call;
establishing a second wireless data connection to the data network;
sending a certificate identifying the VOIP telephone call to the media
relay via the second wireless data connection; and
communicating with the media relay over the second wireless data
connection to exchange data packets bearing the media of the VOIP
telephone call.
YAMAMOTO
AKRAM
GOULD
SPINDOLA
References and Rejections 1
US 2007 /0008931 Al
US 2008/0310375 Al
US 2010/0323728 Al
US 2011/0222423 Al
Jan. 11, 2007
Dec. 18, 2008
Dec. 23, 2010
Sept. 15, 2011
Claims 1-13 are rejected under 35 U.S.C. § 112, i-f 2, as being
incomplete for omitting essential elements.
1 The double patenting rejection is moot, as Appellants filed a terminal
disclaimer on April 3, 2013. See Terminal Disclaimer dated April 3, 2013.
2
Appeal2014-005155
Application 13/324,585
Claims 1--4 and 8-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto and Akram.
Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto, Akram, and Spindola.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yamamoto, Akram, and Gould.
ANALYSIS
The Rejection under 35 U.S.C. § 112, i-f 2
The Examiner rejects claims 1-13 under 35 U.S.C. § 112, i-f 2, because
the Examiner finds the claims are incomplete. See Final Rej. 5. We agree
with Appellants that the statute does not require Appellants to include steps
from all of the elements of the IP telephony system in a single claim. See
App. Br. 12-14. Reply Br. 1-3. Therefore, we do not sustain the Examiner's
rejection of claims 1-13 under 35 U.S.C. § 112, i-f 2.
The Obviousness Rejection
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's response to Appellants' arguments,
and the evidence of record. We concur with Appellants' conclusion that the
Examiner errs in finding Yamamoto and Akram collectively teach "sending
a certificate identifying the VOIP telephone call to the media relay via the
second wireless data connection," as recited in independent claim 1. 2
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal2014-005155
Application 13/324,585
The Examiner finds one skilled in the art would have modified
Yamamoto' s method to include Akram' s teaching of "a certificate" for the
following reasons:
Ans. 5.
to authenticate the validity of the IP address and hence the
validity of the second connection made by the mobile device
in order to allow the continuation of the session via the second
connection.
Using a certificate in communicating the call information
to the gateway of Yamamoto would have been obvious in order
provide a security measure to the ongoing VoIP call by
verifying whether the second connection is indeed a connection
made by the same mobile device. This verification is
accomplished by using a certificate that binds the identity of the
mobile device which is used in the first connection to the IP
address used by the mobile device in the second connection.
We agree with Appellants that the Examiner's finding is unsupported
by the record. See App. Br. 19; Reply Br. 4-5. The Examiner cites
Yamamoto' s cellular telephone call-not a VoIP call-for the mapping of
claim 1. See Final Rej. 7; Reply Br. 5. Because Yamamoto' s cellular
telephone call is verified by a base station (instead of an IP address), the
Examiner fails to adequately explain why one skilled in the art would have
modified Yamamoto' s method to include a certificate for authenticating the
validity of the IP address, as such authentication is unnecessary for
Yamamoto's cellular telephone call. See App. Br. 19; Reply Br. 4-5.
Because the Examiner fails to show adequate support for the rejection,
we are constrained by the record to not sustain the Examiner's rejection of
claim 1, and corresponding dependent claims 2-7 for similar reasons.
For similar reasons, we do not sustain the Examiner's rejection of
independent claims 8 and 9, and corresponding dependent claims 10-13.
4
Appeal2014-005155
Application 13/324,585
DECISION
The Examiner's decision rejecting claims 1-13 is reversed.
REVERSED
5