Ex Parte Hearty et al

Patent Trial and Appeal Board

Aug 15, 2016

11535882 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111535,882 0912712006
83579 7590 08/17/2016
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
John Hearty
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.
0080-US-Ol 8223
EXAMINER
ANSARI, NAJEEBUDDIN
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
~UNITED STATES PATENT AND TR~ADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HEARTY, MUD AS SIR F AJANDAR,
RONALD MATTHEW MuNOZ, and DANIEL RYAN
Appeal2015-001786
Application 11/535,882
Technology Center 2400
Before KEVIN C. TROCK, ADAM J. PYONIN, and SHARON PENICK,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
Appellants' disclosure includes embodiments directed to the
"determination of potential relocation of a Voice over IP (VoIP) - enabled
Appeal2015-001786
Application 11/535,882
device based on Session Initiation Protocol (SIP) registration state." Spec.
i-f 2. Claims 1, 8, and 12 are independent. Claim 12 is reproduced below for
reference (with emphases added):
12. A non-transitory computer-readable medium having
computer-executable instructions, which, when executed, cause
a computer to implement a process, the process comprising:
by an online service provider that provides billing services
for use of a Voice over Internet Protocol (VoIP)-enabled device,
subscribing to a registrar of a VoIP network associated with the
VoIP-enabled device before said device has been activated for an
initial time, the registrar configured to monitor activity of the
VoIP-enabled device over the VoIP network and provide state
information of the VoIP-enabled device to the online service
provider;
receiving a first message at the online service provider
from the registrar indicating that the VoIP-enabled device has
entered an active state;
based on the first message indicating that the VoIP-
enabled device has entered the active state, beginning a billing
process to bill the customer for use of the VoIP-enabled device;
receiving one or more other messages at the online service
provider from the registrar indicating that the VoIP-enabled
device has re-entered the active state from a terminated state;
and
based on the message indicating that the VoIP-enabled
device has re-entered the active state from the terminated state,
determining that the VoIP-enabled device has potentially
relocated.
References and Re} ections
Claims 1-13 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiss (US 2007/0010275 Al; Jan. 11, 2007) and Moore
(US 2003/0193961 Al; Oct. 16, 2003). Final Act. 3.
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Application 11/535,882
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiss, Moore, and Mehio (US 2007 /0173223 Al; July 26,
2007). Final Act. 21.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments, and we adopt the Examiner's findings and conclusions as our
own to the extent they are consistent with our analysis below.
A. Potential Relocation Based On State Change
Appellants argue the Examiner erred in rejecting independent claim 1,
because the cited portions of Kiss
do not teach determining that the IP-enabled telephony device
has potentially relocated, based on one or more registration state
changes, as claimed. Instead, these portions of Kiss discuss a
session initiation protocol event package for registration that
includes three states, namely the initial state, the active state, and
the terminated state. There is no discussion in these portions of
using one or more registration state changes to determine that the
IP-enabled telephony device has potentially relocated.
Furthermore, Appellant notes that the terms "relocate" and
"relocation" do not appear in Kiss.
App. Br. 5---6. Appellants present substantively similar arguments regarding
the commensurate limitations recited by independent claims 8 and 12. See
App. Br. 6-7, 8.
We are not persuaded the Examiner erred. The exact terms "relocate"
and "relocation" need not be recited explicitly in Kiss in order to be taught
or suggested. 1 See, e.g., Kiss i-f 93 ("provide location updates"). Further,
1 Cf In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
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Application 11/535,882
although Appellants have provided a general description of Kiss along with
a restatement of the claim limitations (see App. Br. 5---6), Appellants'
arguments fail to compare and contrast the claim limitations with the
Examiner's specific findings to show error therein. See Final Act. 3-7
(citing Kiss i-fi-134, 35, 38, 91, 92); see also Ans. 3-5.
Therefore, Appellants do not persuade us of error in the Examiner's
determination that the claim 1 limitation "based on one or more registration
state changes, determining that the IP-enabled telephony device has
potentially relocated" is obvious in view of Kiss, which "teach[ es] the
registration remains in an active state and transitions to a terminated state
205 and can further be mapped to presence information." Final Act. 26
(citing Kiss i-fi-134, 35). Nor do Appellants challenge the Examiner's
additional finding that "Kiss teaches when a mobile station roams between a
home and a visiting network (other radio network) the presence information
changes reflecting such relocation of the mobile station," as "the registration
state must change when a user is relocated to another radio network in the
prior art of Kiss." Ans. 4 (citing Kiss i-fi-190, 93, 95).
Accordingly, Appellants do not persuade us Kiss fails to teach or
suggest the disputed limitations recited by claim 1, and the similar
limitations recited by independent claims 8 and 12. See Ans. 3-7.
B. Indication the Device Re-Entered the Active State from a
Terminated State
Appellants also argue the Examiner erred in rejecting independent
claim 12 because,
Kiss does not teach ["]receiving one or more other messages at
the online service provider from the registrar indicating that the
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Application 11/535,882
VoIP-enabled device has re-entered the active state from a
terminated state[" as claimed]. Instead, these [cited] portions of
Kiss disclose a refresh causes the active state to move to the
active state, in other words remain in the active state, as shown
in Figure 2. There is nothing in Figure 2 indicated a re-entered
the active state from a terminated state. Also, there is nothing in
paragraph [0035] that discusses a device having re-entered the
active state from a terminated state.
App. Br. 7-8.
We are not persuaded of Examiner error. See Ans. 8; Final Act. 16.
Kiss discloses device account states can change and notifications are sent
when an account is registered; thus we agree with the Examiner that the
reference teaches or suggests sending a notification for a registration (i.e.,
active state) that follows a lapse in registration (i.e., terminated state). 2 See
Final Act. 16; see also Kiss i-f 35 ("[a] notification is generated to the
subscribers when any event occurs in either the address-of record or per-
contact state machines. The events of interest include registered, refreshed,
expired, unregistered and rejected'} Further, Appellants do not challenge
the additional support provided by the Examiner in the Answer: that the
disputed limitation encompasses Kiss' s teaching of roaming amongst
different networks because "the registration state must change"-between
terminated and active-upon exiting and entering the networks. Ans. 8
(citing Kiss i-fi-1 90, 95).
2 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.").
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Application 11/535,882
Therefore, Appellants do not persuade us Kiss fails to teach or suggest
"receiving one or more other messages at the online service provider from
the registrar indicating that the VoIP-enabled device has re-entered the
active state from a terminated state" as recited by claim 12.
CONCLUSION
We sustain the Examiner's rejection of independent claims 1, 8, and
12. Appellants advance no further substantive arguments on dependent
claims 2-7, 9-11, and 13-15. See App. Br. 8-9. Accordingly, we sustain
the Examiner's rejections of these claims for the same reasons discussed
above. See 37 C.F.R. § 41.37(c)(l)(iv) see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
DECISION
The Examiner's rejection of claims 1-15 is 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
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