Ex Parte MA et al

Patent Trial and Appeal Board

Oct 21, 2016

13730348 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/730,348 12/28/2012
96355 7590 10/25/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
KA-YUI KEVIN MA
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.
5524-159 8043
EXAMINER
ANSARI, NAJEEBUDDIN
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
10/25/2016 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 KA-YUI KEVIN MA and EUGENE PETER CANNON
Appeal2015-006008
Application 13/730,348
Technology Center 2400
Before ADAM J. PYONIN, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006008
Application 13/730,348
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The application is directed to "[a]n IP telephony system [that] allows
a user to register a telephony device that receives its native telephony service
from a different telephony service provider as an extension telephone,"
where "[t]he user can then place calls through the IP telephony system using
the extension telephone." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method of establishing a telephony communication for
a telephony device, comprising:
receiving a telephony communication setup request from an
application for a second telephony service provider on a first te-
lephony device that receives its native telephony service from a
first telephony service provider, the setup request being received
over a data network by the second telephony service provider;
and
establishing the requested telephony communication between
the first telephony device and a second telephony device by send-
ing caller ID information to the second telephony device, such
caller ID information including a calling party identifier associ-
ated with the first telephony device, or a calling party identifier
associated with an account maintained by the second telephony
service provider.
1 Appellants identify V onage Network, LLC as the real party in interest.
(See App. Br. 3.)
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Application 13/730,348
THE REFERENCES AND THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Desa et al. (US 2007/0201453 Al; published Aug. 30,
2007) and Reiher (US 2009/0279534 Al; published Nov. 12, 2009.) (See
Final Act. 3-21.)
ANALYSIS
Appellants' Claim 1 is directed to a method for establishing a
telephony communication for a telephony device that includes receiving a
telephony communication setup request "from an application for a second
telephony service provider on a first telephony device that receives its native
telephony service from a first telephony service provider, the setup request
being received over a data network by the second telephony service
provider." The Specification explains that "where the extension telephony
device is a mobile computing device, the user can download a software
application onto the mobile computing device, and the software application
can handle the registration of the mobile computing device as an extension
telephony device." (Spec. i-f 60.)
The Examiner relies on the combination of Desa and Reiher, finding
that Desa teaches all of the limitations of claim 1, except that "Desa fails to
explicitly teach the telephony communication setup request is received from
an application for the second telephony service provider on said first
telephony device and established by sending caller ID information to the
second telephony device." (Final Act. 5.) The Examiner further finds,
however, that "Reiher teaches a method and system for placing a VoIP call
from a user using a mobile phone or landline to a contact via an individual
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Appeal2015-006008
Application 13/730,348
local access number assigned to the contact" where "[t]he call comprises
caller identification information identifying the user voice interface device
from which the call originates and further the identity of the contact to which
the call must be completed to establish the VoIP call from the user to the
contact." (Id.)
Appellants argue that "Desa and Reiher fail to disclose or suggest
methods that include receiving a telephony communication setup request
from an application for a second telephony service provider on a first
telephony device that receives its native telephony service from a first
telephony service provider, the setup request being received over a data
network by the second telephony service provider." (App. Br. 13.)
The Examiner responds that Reiher "teaches application servers
including specific applications including placing calls, performing a call-up
function (through the use of a key pad on the user voice interface device)"
and that "[ o ]nee the name of the contact is ascertained, the selected
application server places a call to the selected contact to complete the call."
(Ans. 4--5.)
We find that Appellants have established error in the rejection. The
claim requires receipt of "a telephony communication setup request from an
application for a second telephony service provider on a first telephony
device that receives its native telephony service from a first telephony
service provider." Consistent with the Specification and Appellants'
argument, we interpret the italicized language to require that the request
come from an application supplied by or associated with a second telephony
provider (e.g., a VOIP provider) that resides on a device (e.g., a cellular
phone) that receives its native service from another provider (e.g., a cellular
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Appeal2015-006008
Application 13/730,348
service provider). We agree that the combination does not teach or suggest
such an arrangement. The Final Action is silent regarding the claimed
application (see Final Act. 4--5), and the Answer points only to Reiher's
application servers (see Ans. 5---6), which reside on the bridge server 28, not
on a first telephony device (see Reiher Fig. 1 & i-fi-124--25).
Because we conclude that the combination does not teach or suggest
"receiving a telephony communication setup request from an application for
a second telephony service provider on a first telephony device that receives
its native telephony service from a first telephony service provider," we do
not sustain (a) the rejection of claim 1, (b) the rejections of independent
claims 8 and 9, which contain analogous limitations, or (c) the rejections of
claims 2-7, 10-15, and 20, all of which depend from claims 1 or 9.
Claim 16 is directed to "[a] non-transitory computer readable medium
having instructions stored thereon which, when executed by one or more
processors of a first telephony device that receives its native telephony
service from a first telephony service provider, cause the first telephony
device to perform a method of setting up a telephony communication,"
where the method includes sending a setup request and establishing the
communication. Essentially, this claim is directed to the application on the
first telephone device. Because we conclude, for the reasons discussed
above, that the combination does not teach or suggest such an application,
we do not sustain the rejection of claim 16, or the rejections of its dependent
claims, 1 7-19.
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Appeal2015-006008
Application 13/730,348
DECISION
The rejections of claims 1-20 are reversed.
REVERSED
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