Ex Parte KIM et al

Patent Trial and Appeal Board

Sep 6, 2018

12647137 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/647,137 12/24/2009
66547 7590 09/10/2018
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 2IOE
Melville, NY 11747
FIRST NAMED INVENTOR
Yo-Sun KIM
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.
1235-655 (SP9343) 1399
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YO-SUN KIM and JOONG-SEOK PARK 1
Appeal2018-002221
Application 12/ 647,137
Technology Center 2400
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Samsung Electronics
Co., Ltd. See Appeal Br. 1.
Appeal2018-002221
Application 12/ 647,137
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
THE INVENTION
The claims are directed to recording a cellular call in an internet
telephone system. Spec., Title. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. An apparatus in a dual-mode terminal supporting a non-Voice
over Internet Protocol (VoIP) call and a VoIP call, the apparatus
compnsmg:
one or more processors configured to:
after establishing the non-VoIP call, determine whether it
is possible to access a call server, which controls the VoIP call,
by attempting to access a data network which includes the call
server;
in response to it being possible to access the call server,
connect to a recording server in the data network; and
generate data packets comprising voice data carried
through the non-VoIP call while the non-VoIP call is maintained;
and
a communicator configured to transmit the data packets to
a recording server, wherein the VoIP call is available within a
coverage of the data network.
2 We refer to the Specification, filed Dec. 24, 2009 ("Spec."); the Final
Office Action, mailed Dec. 12, 2016 ("Final Act."); the Advisory Action,
mailed Mar. 13, 2017 ("Advisory Act.); the Appeal Brief, filed June 26,
2017 ("Appeal Br."); and the Examiner's Answer, mailed Oct. 27, 2017
("Ans."). The Reply Brief filed Dec. 27, 2017 is noted but it is not cited
herein.
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Application 12/ 647,137
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Barker
Doradla
Halbraich
Buckley
den Hartog
("Hartog")
US 2006/0233321 Al
US 2007/0153771 Al
US 2008/0170561 Al
US 2008/0186953 Al
US 2009/0129293 Al
REJECTIONS
The Examiner made the following rejections:
Oct. 19, 2006
July 5, 2007
July 1 7, 2008
Aug. 7, 2008
May 21, 2009
Claims 1 and 7 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hartog, Barker, and Doradla. Final Act. 6-8.
Claims 2, 3, 8, 9, and 14 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hartog, Barker, Doradla, and Buckley. Final Act.
8-10.
Claims 4 and 10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hartog, Barker, Doradla, and Halbraich. Final Act. 10-
12.
Claims 5, 6, 11, and 12 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hartog and Doradla. Final Act. 3-5.
Claim 13 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hartog, Doradla, and Buckley. Final Act. 12.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own ( 1) the findings and reasons set forth by the Examiner
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in the action from which this appeal is taken (Final Act. 2-12; Advisory
Act. 2) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief (Ans. 2-11) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
Limitation A: "in response to it being possible to access the call
server, connect to a recording server in the data network"
The Examiner finds Hartog's disclosure of mobile terminal 4
connected to node 19 of packet network 18 and the establishment of a
connection from node 19 to recording server 27 teaches Limitation A except
that Hartog does not explicitly describe recording server 27 as being "in"
packet network 18. Final Act. 6-7. The Examiner applies Barker's
disclosure of a recording server in a data network for explicitly teaching the
noted deficiency of Hartog such that the combination of Barker and Hartog
teaches or suggests Limitation A. Final Act. 7.
Appellants argue Hartog's recording server is in neither data network
2 nor packet switched network 18 and, therefore does not satisfy the "in the
data network" requirement. Addressing Barker, Appellants argue the
reference fails to teach or suggest the steps of (i) determining whether it is
possible to access a call server and (ii) generating packets of voice data, and
Barker further fails to teach or suggest the recited communicator
configuration of claim 1. Appeal Br. 9.
The Examiner responds, noting Appellants' argument is an improper
attack on the references individually when the rejection is based on their
combination. Ans. 3 (citing In re Keller, 642 F.2d 413,426 (CCPA 1981); In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). The Examiner
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explains Barker is relied upon only for disclosing a recording server in a data
network with Hartog disclosing the remaining subject matter of
Limitation A. Id.
Appellants' contention is unpersuasive for the reasons explained by
the Examiner. In particular, in focusing on the alleged deficiency of Hartog,
Appellants fail to address the Examiner's findings in connection with Barker
and, therefore, the teachings of the combination of Hartog and Barker.
Likewise, Appellants' argument that Barker is deficient ignores the
Examiner's findings that Hartog discloses the features argued to be absent
from Barker.
Furthermore, we remind Appellants that, when construing claim
terminology during prosecution before the Office, claims are to be given
their broadest reasonable interpretation consistent with the specification,
reading claim language in light of the specification as it would have been
interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims broadly
during prosecution is not unfair to the applicant ... because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage." Id.
Herein, Appellants fail to provide sufficient evidence or reasoning to
persuade us that Hartog's recording system 27 is not "in" network 18 or
network 2. Although Hartog's Figure 1 depicts recording system 27 outside
of the cloud symbol used to represent a network, this construct which
includes only network nodes within the cloud outline but not terminals or
other equipment, is not limiting of what one skilled in the art would have
considered to be part of or "in" the depicted networks. For example,
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recording system 27 is shown as directly connected to a network node with
no indication of an intervening device ( e.g., gateway device) functioning to
isolate or otherwise provide a demarcation point separating recording system
27 from network 18. Furthermore, Appellants do not provide a definition for
what is meant by the argued "a recording server in the data network." For
example, there are no electrical or physical features described that define the
boundaries of the data network such that merely being in communication
with a node of the network could be considered to be in the network. Thus,
under a broad but reasonable interpretation, Hartog's recording system 27 is
"in" network 27 because, inter alia, it is depicted as connected directly to a
node of the network.
Limitation B: "after establishing the non-VoIP call, determine
whether it is possible to access a call server, which controls the
VoIP call, by attempting to access a data network which
includes the call server"
The Examiner finds Limitation B is taught or suggested by the
combination of Hartog, Doradia, and Barker. Final Act. 6. Appellants
contend Hartog's control signal transmitted by a user to initiate a recording
operation fails to teach or suggest Limitation B. Appeal Br. 8. According to
Appellants "in[] Hartog, a recording operation can be performed based on a
premise that the mobile terminal 4 can access a recording system 27." Id.
That is, Appellants' argument is that Hartog presumes accessibility and
therefore fails to determine whether it is possible to access a call server by
attempting to access a data network which include the call server.
Addressing Barker and Doradla, Appellants contend these references also
fail to teach or suggest Limitation B.
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The Examiner responds, concluding Appellants' arguments are
improper attacks on the references individually without taking into
consideration their combination. Ans. 4. The Examiner finds, Hartog
discloses "if the parties involved in the call [desire] to record the
conversation, the unit 4 terminal will attempt to access packet switched
network 18 by accessing node 19, which is equated here as the call server
claimed." Ans. 5. The Examiner further relies on Doradla's determination
of whether a cellular communication device 120 is located within a VoIP
service area 115 for determining whether it is possible to access a call server
by attempting to access a data network which includes the call server. Ans.
7.
Appellants' contentions are unpersuasive of error for the reasons
presented by the Examiner. Appellants' argument fails to substantively
address the Examiner's findings concerning Doradla as performing a
determination of whether access to a service is available by attempting to
access a data network. As such, Appellants' argument is an improper attack
on the references individually when the rejection is based on the
combination of Hartog, Barker, and Doradla.
Furthermore, Appellants fail to address Hartog's disclosure that, after
establishment of a circuit switched (CS) non-VO IP call ( e.g. universal
mobile telecommunications system (UMTS) call), a user can initiate a
recording using mobile terminal 4 that will attempt to access packet
switched network 18 via node 19. That is, mobile terminal 4 establishes a
connection via radio link 14, base station 13, and nodes 19 and 20 of packet
switched network 18 to recording system 27. Hartog ,r 35. Still further,
Appellants fail to persuade us that Doradla' s determination of whether VoIP
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service is available in combination with Hartog's establishment of a non-
VoIP (e.g., cellular) call fails to teach or suggest Limitation B.
We further note in passing, putting aside Doradla, one skilled in the
art would have understood that the success or failure of Hartog' s disclosed
attempt to access packet recording system 27 would be determined by
appropriate signaling by packet switched network 18 and/ or determined by
whether recording system 27 was activated. Additionally, Hartog's
disclosure of attempting to access packet switched network 18 suggests
making a determination of whether such a connection is possible prior to
initiating access and/or as a result of a successful or unsuccessful
connection.
Appellants' contentions of error in connection with Barker and
Doradla (Appeal Br. 9) are further unpersuasive as mere recitations of claim
language and conclusory assertions that the references fail to teach or
suggest such limitations. Merely reciting a claim limitation and asserting it
is not present falls short of identifying an error in the Examiner's rejection as
required on appeal. "Filing a Board appeal does not, unto itself, entitle an
appellant to de nova review of all aspects of a rejection." Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (internal citations omitted).
Arguments must address the Examiner's action. 37 C.F.R. § 4I.37(c)(l)(iv)
("The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant."); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). Furthermore, mere attorney arguments and
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conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney
argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). Nor can such argument take the place of evidence lacking in the
record. Accordingly, in the absence of sufficient reasoning in support of
such assertions, Appellants' naked contentions are insufficient to persuade us
of reversible Examiner error.
Limitation C: "generate data packets comprising voice data
carried through the non-VoIP call while the non-VoIP call is
maintained"
The Examiner finds Hartog' s disclosure that a communicator is
configured to transmit data packets to a recording server and that UMTS
phones can make cellular voice ( e.g., non-VoIP) calls simultaneously with a
data call to data network 18 collectively teach or suggest generating data
packets comprising voice data carried through the non-VoIP ( e.g., cellular)
call. Final Act. 7. The Examiner further finds Hartog's recording of an
ongoing call (i.e., a cellular voice call) teaches generating data packets while
the non-VoIP call is maintained. Id. Appellants contend Hartog fails to
teach or suggest this limitation. Appeal Br. 9.
Appellants' argument fails to address the Examiner's findings and, as
such, is insufficient to persuade us of Examiner error. As discussed above,
merely reciting a claim limitation and asserting it is not present falls short of
identifying an error in the Examiner's rejection as required on appeal. For
the same reason, Appellants' naked contention that Hartog fails to teach or
suggest a communicator configured to transmit the data packets to a
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recording server, wherein the VoIP call is available within a coverage of the
data network (Appeal Br. 9), is likewise unpersuasive of Examiner error.
SUMMARY
For the reasons discussed above, Appellants' contentions of error in
connection with independent claim 1 are unpersuasive of Examiner error.
Accordingly, we sustain the rejection of independent claim 1 together with
the rejection of independent claims 5, 7, and 11 which are argued on the
same basis as claim 1 (Appeal Br. 10) and the rejections of dependent claims
2--4, 6, 8-10, and 12-14 which are not argued separately with particularity.
DECISION
We affirm the Examiner's decision to reject claims 1-14 under 35
U.S.C. § 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)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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