Ex Parte Kumarasamy et al

Patent Trial and Appeal Board

Jun 14, 2016

11460219 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111460,219 0712612006 Parameswaran Kumarasamy
96039 7590 06/16/2016
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
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.
10143-104US1 1657
EXAMINER
NAW AZ, ASAD M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ARAMESW ARAN KUMARASAMY,
SOUMY A KUMAR KALAHASTI, PRASAD MIRIY ALA,
MICHAEL EDRIC TASKER, and
MANJUNATHSREEDHARABANGALORE
Appeal2014-007724
Application 11/460,219 1
Technology Center 2400
Before LARRY J. HUME, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1, 3, 5, 7, 11, 13, 15, 17, 18, 20, 21, and 23, which
constitute all of the pending claims in the application. Appellants have
previously canceled claims 2, 4, 6, 8-10, 12, 14, 16, 19, 22, and 24. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Cisco Technology,
Inc. Br. 2.
Appeal2014-007724
Application 11/460,219
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates to the field of
network communications, and more particularly to voice over Internet
Protocol (VoIP) communications." Spec. i-f 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A method comprising:
receiving a VoIP signaling packet, the VoIP signaling
packet including information indicative of a request for trace
information;
[L 1] appending trace information to the VoIP signaling
packet, the trace information including identifiers of each of a
plurality of network elements through which the VoIP signaling
packet was routed, the trace information including at least one
identifier of a network gateway element;
routing the VoIP signaling packet with the trace
information to a next network element on a path to a destination
node; and
[L2] routing the VoIP signaling packet with the trace
information to a previous network element on a path to a
source node, if an error condition is encountered.
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Jan. 21, 2014); Examiner's Answer ("Ans.," mailed May 8, 2014); Non-Final
Office Action ("Non-Final Act.," mailed July 24, 2013); and the original
Specification ("Spec.," filed July 26, 2006). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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Appeal2014-007724
Application 11/460,219
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Solymar et al. ("Solymar") US 6,244,758 Bl
Ethier et al. ("Ethier") US 2005/0276388 Al
June 12, 2001
Dec. 15, 2005
Lo her US 2006/0274760 Al Dec. 7, 2006
Rejections on Appeal
Claims 1, 3, 5, 7, 11, 13, 15, 17, 18, 20, 21, and 23 stand rejected
under 35 U.S.C. § 103(a) as being obvious over the combination of Ethier,
Loher, and Solymar. Non-Final Act. 3--4.
CLAIM GROUPING
Based on Appellants' arguments (Br. 10-13), we decide the appeal of
the obviousness rejection of claims 1, 3, 5, 7, 11, 13, 15, 17, 18, 20, 21,
and 23 on the basis of representative claim 1. 3
ISSUE
Appellants argue (Br. 10-13) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Ethier,
Loher, and Solymar is in error. These contentions present us with the
following issue:
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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Appeal2014-007724
Application 11/460,219
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, steps L 1 and L2, as recited in
claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 3, 5,
7, 11, 13, 15, 17, 18, 20, 21, and 23, and we incorporate herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
Appellants generally contend, "[i]ndependent claim 1 is not obvious
over the combination of Ethier, Loher, and Solymar because the
combination of references does not disclose, teach, or suggest [limitations
LI and L2] from claim 1." Br 10.
Appellants' contentions (Br. 11-13) do not persuade us of error on the
part of the Examiner because Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
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Appeal2014-007724
Application 11/460,219
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We agree with the Examiner's finding (Ans. 4---6) that the combination
of Ethier, Loher, and Solymar teaches or suggests contested limitations LI
and L2. In particular, we agree with the Examiner's detailed findings and
legal conclusions as set forth on pages 4 through 7 of the Answer, which we
incorporate herein and adopt as our own. We note Appellants do not file a
Reply Brief to rebut the Examiner's findings and legal conclusions.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
contested limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 3, 5, 7, 11, 13, 15, 17, 18, 20, 21, and 23 which fall therewith. See
Claim Grouping, supra.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 3, 5, 7, 11, 13, 15, 17, 18, 20, 21, and 23 under 35 U.S.C. § 103(a)
over the cited prior art combination of record, and we sustain the rejection.
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Appeal2014-007724
Application 11/460,219
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5, 7, 11, 13,
15, 17, 18, 20, 21, and 23.
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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