Ex Parte Paulis et al

Patent Trial and Appeal Board

May 4, 2016

12225738 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/225,738 10/22/2008
32294 7590 05/06/2016
Squire PB (NV A/DC Office)
8000 TOWERS CRESCENT DRIVE
14THFLOOR
VIENNA, VA 22182-6212
FIRST NAMED INVENTOR
Herbert Paulis
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.
102202.00005 1348
EXAMINER
OH, ANDREW CHUNG SUK
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
IPGENERAL TYC@SQUIREpb.COM
SONIA.WHITNEY@SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT PAULIS and BERNHARD SPALT 1
Appeal2014-005730
Application 12/225,738
Technology Center 2400
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 11, 12, 14, 16-24, 26, and 28-34 ("Non-Final
Act"). 2 We have jurisdiction over the rejected claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Nokia Solutions & Networks, Oy, as the real party
interest. (App. Br. 3.)
2 The Examiner states that claims 1-10, 13, 15, 25, and 27 are allowed.
(Non-Final Act. 2.)
Appeal2014-005730
Application 12/225,738
Introduction
According to Appellants, "[t]he invention relates to a method for
lawful interception during call forwarding in a packet-oriented
telecommunication network in which switching functions are provided by
servers and wherein calls associated with a subscriber with call forwarding
are intended to be monitored by means of lawful interception." (Spec. 1.)
Exemplary Claim
Claim 11, reproduced below with disputed limitations italicized, is
exemplary of the claimed subject matter:
11. An apparatus, comprising:
at least one memory comprising computer instructions;
and
at least one processor,
wherein the at least one memory and the computer
instructions are configured to, with the at least one processor,
cause the apparatus at least to
after receipt of a notification of monitoring of calls
associated with a first subscriber and receipt of a request for
connection setup with the first subscriber from a calling
subscriber, detect that the connection setup is to be forwarded
to a second subscriber,
enter into a signaling message an indication indicating
that the first subscriber is to be monitored, and
transmit the signaling message to a node configured to
perform a control function.
2
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Application 12/225,738
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brunner
Bertacchi
Bern et al. ("Bern")
Pelaez et al. ("Palaez")
Heidermark et al.
("Heidermark")
us 5,796,790
us 5,930,698
US 2002/0159578 Al
US 2004/0185836 Al
US 2009/0067411 Al
REJECTIONS
Aug. 18, 1998
July 27, 1999
Oct. 31, 2002
Sept. 23, 2004
Mar. 12, 2009
Claims 11, 12, 14, 18, 19, 22-24, 26, 30, 31, and 34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Pelaez, Bertacchi, and
Brunner. (Non-Final Act. 12-20, 22.)
Claims 11 and 23 stand, alternatively, rejected under 35 U.S.C.
§ 102(b) as being anticipated by Pelaez. (Non-Final Act. 15-16.)
Claims 16, 17, 20, 21, 28, 29, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pelaez, Bertacchi, Brunner, and
Heidermark. (Non-Final Act. 20-24.)
ISSUE
Whether the Examiner erred in finding the prior art teaches or
suggests "enter into a signaling message an indication indicating that the
first subscriber is to be monitored, and transmit the signaling message to a
node configured to perform a control function," as recited in independent
claim 11?
3
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Application 12/225,738
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in support of the rejection under 35 U.S.C. § 103(a) 3 in the
action from which this appeal is taken (Non-Final Act. 12-15 and 16-24)
and (2) the reasons set forth by the Examiner in support of the rejection
under 35 U.S.C. § 103(a) in the Examiner's Answer in response to
Appellants' Appeal Brief. (Ans. 2-5, 7-15, and 29-36.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 4
3 The Examiner also issues a "Secondary Rejection" of claims 11 and 23
under 35 U.S.C. § 102(b) based on Pelaez alone. (Non-Final Act. 15.)
Because we affirm the rejection of claims 11 and 23 under 35 U.S.C.
§ 103(a) based on the combination of Pelaez, Bertacchi, and Brunner, we do
not address the Examiner's "Secondary Rejection," or Appellants'
arguments directed to that rejection. (App. Br. 11-21; Reply Br. 4--12, 17-
24.)
4 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2014-005730
Application 12/225,738
A. 35 USC§ 103(a): Claims 11, 12, 14, 18, 19, 22-24,
26, 30, 31, and 345
1. Claim 11
In support of the primary ground of rejection, based on unpatentability
under 35 U.S.C. § 103(a), the Examiner finds Pelaez "teaches a lawful
interception method where a call is forwarded from a first subscriber 16 I
MSC 20 to a second subscriber 22 I MSC 26," but also finds Pelaez "may
not explicitly teach" the disputed limitations of claim 11. (Non-Final Act.
13.) The Examiner further finds, however, Bertacchi teaches those
limitations. (Id.) In particular, the Examiner finds Bertacchi teaches or
suggests the disputed limitation "enter into a signaling message an indication
indicating that the first subscriber is to be monitored," by disclosing
including a Billing Identification number ("B-ID") in a "trunk request
(signal RI)" that is sent to a monitoring center if "the dialed B-number is
associated with a subscriber whose calls are to be monitored by a law
enforcement agency.'' (Non-Final Act. 3--4 (citing Bertacchi 3:55--4:60,
6:1-7:10 and Figs. 2 and 4).) The Examiner further finds Bertacchi teaches
or suggests the disputed limitation "transmit the signaling message to a node
configured to perform a control function" by teaching that the call is
forwarded from one switching node to another, including the B-ID. (Non-
Final Act. 4 (citing Bertacchi 6:10-39 and Fig. 4).)
5 Appellants do not present separate substantive arguments for dependent
claims 12, 14, 18, 24, 26, or 30, or for independent claim 23, but instead
argue these claims collectively with claim 11. (App. Br. 27, 29-30.)
Therefore, based on Appellants' arguments, we decide the appeal of claims
12, 14, 18, 23, 24, 26, and 30 based on claim 11. See 37 C.F.R.
§ 41.37(c)(l)(iv). Except for our ultimate decision, the Examiner's rejection
of these claims is not discussed further herein.
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Application 12/225,738
Appellants argue the Examiner's findings are in error because the
B-ID taught in Bertacchi is not an "indication" that "the first subscriber is to
be monitored." (App. Br. 23-24.) Rather, Appellants argue, "the B-ID is
used in Bertacchi to avoid redundant set-up of a tap trunk connection, and
not as an indication indicating that the first subscriber is to be monitored."
(App. Br. 24 (emphasis added).) Appellants further argue "the B-ID that is
included in the request signal for a tap trunk connection signifies that the
phone call or connection is already/currently being monitored." (App. Br.
24.) Thus, as Appellants further argue, Bertucchi's B-ID provides only an
"identifier to assist the monitoring center 28 from being overloaded with
information it already has." (App. Br. 24--25; Reply Br. 15-16.)
We disagree with Appellants' unduly narrow reading of Bertacchi.
As the Examiner finds, and we agree, inserting the B-ID into the tap trunk
request serves multiple purposes in Bertacchi. First, it causes a wiretap to be
set up if the called subscriber is to be monitored and a tap trunk has not yet
been set up: "Bertacchi teaches that the B-ID is used to set-up a tap trunk
connection, and the avoidance of redundancy occurs only if there is a
wiretap connection already previously established, but its inherent purpose
is to set-up a tap trunk connection." (Ans. 30 (citing Bertacchi 6:48-58).)
In other words, although Bertacchi discloses a scenario in which the call is
already being monitored and a redundant request for a tap trunk is denied, it
also discloses a scenario in which monitoring has not yet started, in which
case the tap trunk request will go through. (Bertacchi 4:30-38.) Second, as
the Examiner further correctly finds, the act of sending a tap trunk request
with the B-ID provides an indication the dialed subscriber is "to be
monitored" within the meaning of the claim: "The B-ID identifies the call
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24 that is to be monitored and signals this information to the monitoring
center 28 which then creates the wiretap." (Ans. 30-31 (citing Bertacchi
4:30-38) (emphasis added).) Conversely stated, if the dialed number is not
to be monitored, no trunk request signal (and hence no B-ID) will be sent to
the monitoring center.
Appellants next argue that the B-ID in Bertacchi cannot indicate that
the "first subscriber" is to be monitored because the B-ID identifies "the call
(not the subscriber)." (App. Br. 24 (emphasis added); Reply Br. 16.) We
disagree. Although the B-ID does not expressly identifj; the monitored
subscriber, as Appellants correctly observe, the claims do not require such
identification. Rather, the claims require "an indication" the called
subscriber is "to be monitored." (App. Br. 39 (Claims Appendix) (emphasis
added).) As the Examiner finds, and we agree, Bertacchi teaches that the B-
ID is added into tap trunk request only if the subscriber being called (which
the Examiner maps to the "first subscriber") is to be monitored. (Ans. 32
(citing Bertacchi 4:30-38).) In particular, Bertacchi teaches:
Assume further that the dialed B-number is associated with a
subscriber whose calls are to be monitored by a law
enforcement agency. Accordingly, the B-number entry is an
entry in the stored list 50 maintained by the switching nodes 12.
Responsive to the incoming call 24, the switching node 12(1)
compares the dialed B-number to its stored list 50, and notes a
match. A trunk request (signal RI) is then sent to the
monitoring center 28.
(Bertacchi 4:21-30 (emphases added).)
Appellants additionally argue "the B-ID of Bertacchi is not sent upon
detection that a connection set-up is to be forwarded." (App. Br. 24.) This
argument is not persuasive of Examiner error because it does not address the
Examiner's rejection as made. As the Examiner correctly notes, the
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Examiner cites Pelaez, not Bertacchi, for the limitation reciting "detect that
the connection setup is to be forwarded to a second subscriber." (Ans. 34
(citing Pelaez i-fi-f 15, 1 7 as teaching "that the MSC 2 0 determines that call to
subscriber 16 ought to be forwarded to MSC 26.") We agree the Examiner's
finding is supported by the teachings of Pelaez.
Finally, Appellants note the Examiner acknowledges that "Bertacchi
fails to disclose or suggest inserting a billing identification number into a
call message, and cites Bruner as allegedly curing this deficiency in
Bertacchi." (App. Br. 25-26 (emphasis added).) Appellants argue the
Examiner's reliance on Brunner is in error because Brunner "is silent as to
the above-referenced features of independent claim 11" and, in particular,
does not deal "with the monitoring of phone calls." (App. Br. 26.)
Appellants' argument is not persuasive of Examiner error because it fails to
address the Examiner's rejection as made, which relies on Brunner in
combination with Pelaez and Bertacchi. (Non-Final Act. 18 (citing Brunner
Abstract); see also Ans. 5.) Where, as here, the rejections are based upon
the teachings of a combination of references, "[ n ]on-obviousness cannot be
established by attacking references individually." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981)).
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 11.
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2. Claim 196
With regard to claim 19, the Examiner finds:
Pelaez may not explicitly teach check the request for the
connection setup to determine if an indication indicating that
the forwarded subscriber is to be monitored is present in the
request, and initiate monitoring of the forwarded subscriber if
the indication is present in the request. However, Bertacchi
teaches check the request for the connection setup to determine
if an indication indicating that the forwarded subscriber is to be
monitored is present in the request . . . and initiate monitoring
of the forwarded subscriber if the indication is present in the
request ....
(Non-Final Act. 17 (citing Bertacchi 6:1-7:10; 3:55---4:60 and Figs. 2 and
4).)
In their Appeal Brief, Appellants argue the rejection of claim 19 with
reference only to alleged deficiencies in the Pelaez reference, and do not
address the Examiner's combination of Pelaez with Bertacchi. (App. Br.
28-29.) This argument is not persuasive of error as it fails to address the
basis of the Examiner's rejection.
In their Reply Brief, Appellants raise a new argument for claim 19,
arguing that "Bertacchi also fails to disclose or suggest the checking of the
request for the connection setup to determine if an indication indicating that
the forwarded subscriber is to be monitored is present in the request, as
recited in independent claims 19 and 31." (Reply Br. 1 7.) We find nothing
6 Appellants do not present separate substantive arguments for dependent
claims 22 and 34, or for independent claim 31, but instead argue these
claims collectively with claim 19. (App. Br. 29-30.) Therefore, based on
Appellants' arguments, we decide the appeal of claims 22, 31, and 34 based
on claim 19. See 37 C.F.R. § 41.37(c)(l)(iv). Except for our ultimate
decision, the Examiner's rejection of these claims is not discussed further
herein.
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Application 12/225,738
in the Examiner's Answer that would have prompted this new argument be
raised by Appellants for the first time in the Reply Brief. Rather, the
Examiner's stated reasoning in the Non-Final Action (Non-Final Act. 16-
19) is matches the reasoning stated in the Answer (Ans. 7-9), and
Appellants have not argued to the contrary. Therefore, Appellants' new
argument regarding Bertacchi in the context of claims 19 and 31 is not
entitled to our consideration. Optivus Technology, Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (informative opinion) (absent a showing of good cause, the
Board is not required to address an argument newly presented in the reply
brief that could have been presented in the principal brief on appeal).
Nevertheless, even considering Appellants' new argument, we are not
persuaded of Examiner error. Appellants' argument regarding claim 19
amounts to little more than the naked assertion that Bertacchi "fails to
disclose or suggests [sic]" the disputed limitation "as recited in independent
claims 19 and 31." (Reply Br. 17.) Such a conclusory attorney assertion has
little or no value in identifying the Examiner's alleged error, and,
consequently, has little persuasive value. See 37 C.F.R. § 41.37(c)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Moreover, we agree the
Examiner's findings regarding claim 19 are supported by the teachings of
the cited references. (Ans. 7-9 (citing Pelaez Figs. 1 and 4 and i-fi-f 10-17;
Bertacchi Figs. 2 and 4, 3:55---4:60, and 6:1-7:10).)
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Application 12/225,738
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 19.
B. 35 USC§ 103(a): Claims 16, 17, 20, 21, 28, 29, 32, and 33
In support of the rejection of claims 16, 17, 20, 21, 28, 29, 32, and 33,
the Examiner adds Heidermark to the combination of Pelaez and Bertacchi.
(Non-Final Act. 20-24.) In response, for each claim, Appellants merely
reference the arguments presented for claim 11, and add a conclusory
statement that "Heidermark does not provide a reason to modify the prior art
approaches so as to arrive at the claimed invention .... " (App. Br. 32-36.)
As noted above, such conclusory attorney assertions have little or no value
in identifying the Examiner's alleged error, and, consequently, have little
persuasive value. See 37 C.F.R. § 41.37(c)(iv). Appellants' arguments also
fail to address the Examiner's findings regarding the combined teachings of
Heidermark with Pelaez and Bertacchi, and thus are unpersuasive of error
for that reason as well. See In re Keller, 642 F.2d at 425.
We additionally note Appellants' argument based on a lack of express
teaching in Heidermark that would provide a "reason to modify the prior art
approaches" (e.g., App. Br. 32) is contrary to the Supreme Court's holding
in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As the Court
explained in KSR, the problem purportedly addressed by a claimed invention
need not be expressly recognized in the prior art. Rather, "[ u ]nder the
correct analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed." KSR, 550 U.S. at 420. In
the instant appeal, the Examiner has provided a rationale supporting
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motivation by a person of ordinary skill in the art to achieve the claimed
subject matter. (Non-Final Act. 13-15.) Appellants have not provided
persuasive evidence or line of reasoning explaining why such rationale is
erroneous or why a person of ordinary skill in the art would not have reached
the conclusions reached by the Examiner. See DyStar Textilfarben GmbH &
Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir.
2006) ("[T]he proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the prior art
references.").
For the foregoing reasons, we are unpersuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claims 16, 17, 20, 21, 28, 29, 32,
and 33, and we, therefore, sustain that rejection.
C. 35 US.C. § 102(b): Claims 11and23
As noted supra, we sustain the rejection of claims 11 and 23 under 35
U.S.C. § 103(a) based on the combination of Pelaez, Bertacchi, and Brunner.
Consequently, we find it unnecessary to reach a decision about the
additional rejection of claims 11 and 23 under 35 U.S.C. § 102(b) based on
Pelaez alone, which the Examiner has designated as a "Secondary
Rejection." (Non-Final Act. 15.) See 37 C.F.R. § 41.50(a)(l) ("The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
1 . ") c aim. . . . .
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DECISION
For the above reasons, the Examiner's decision to reject claims 11, 12,
14, 16-24, 26, and 28-34 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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