Ex Parte Phillips et al

Patent Trial and Appeal Board

Jan 24, 2018

14087253 (P.T.A.B. Jan. 24, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
47856.84 2644
EXAMINER
MEKONEN, TESFU N
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
14/087,253 11/22/2013
106874 7590 01/24/2018
Haynes and Boone, LLP (47856)
2323 Victory Avenue, Suite 700
Dallas, TX 75219
Paul Phillips
01/24/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL PHILLIPS, IAN MACFARLANE, and SUMIT GARG
Appeal 2017-007381
Application 14/087,253
Technology Center 2400
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1, 2, 4—11, and 13—20. Claims 3 and 12
have been canceled. Appeal Br. 15, 17 (Claims App’x). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify GENBAND US LLC as the real party in interest.
Appeal Br. 3.
Appeal 2017-007381
Application 14/087,253
EXEMPLARY CLAIM
Claims 1, 10, and 19 are independent claims. Claim 1, reproduced
below, is exemplary of the claimed subject matter:
1. A computer-implemented method for configuring
a computing system that processes messages according to the
Session Initiation Protocol (SIP), comprising:
providing one or more rules of an ingress profile and one
or more rules of an egress profile, wherein the one or more
rules of the ingress profile are different than the one or more
rules of the egress profile;
defining, by a scripting-type computer processing
language, one or more variables, each variable configured to
store state data based on processing of a SIP message and
associated with the one or more rules of the ingress profile and
the one or more rules of the egress profile, wherein each of the
one or more variables is associated with a SIP message flow
and wherein the one or more variables are accessible by the one
or more rules of the ingress profile or the one or more rules of
the egress profile with which they are associated;
receiving, by at least one computer processor of the
computing system, a series of SIP messages belonging to the
SIP message flow, the series of SIP messages including a
plurality of SIP messages;
as each respective SIP message in the series is received,
processing, by the computing system, each respective SIP
message, wherein the processing includes modifying state data
stored in at least one of the one or more variables based on data
included in the respective SIP message.
THE REJECTIONS
1. Claims 1,2, 4—11, and 13—20 stand provisionally rejected under
the doctrine of nonstatutory obviousness-type double patenting over
co-pending Application No. 14/087,280 (“the ’280 Application”) and
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Application 14/087,253
co-pending Application No. 14/087,311 (“the ’311 Application”).
Final Act. 3—14.
2. Claims 1, 2, 4, 5, 8—11, 13, 14, and 17—20 stand rejected under
35 U.S.C. § 103 as unpatentable over Clark et al. (US 8,275,896 B2;
Sept. 25, 2012) (“Clark”) and Peter et al. (US 2014/0032773 Al;
Jan. 30, 2014) (“Peter”). Final Act. 15—25.
3. Claims 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Clark, Peter, and Evens (US 2014/0006632 Al;
Jan. 2, 2014). Final Act. 26—27.
ANALYSIS
Rejection under doctrine of nonstatutorv obviousness-type double patenting
As the Examiner explains in the Final Office Action, “[a] timely filed
terminal disclaimer . . . may be used to overcome an actual or provisional
rejection based on a nonstatutory double patenting ground.” Final Act. 4.
Subsequent to the Final Office Action, on July 3, 2017, Appellants filed a
terminal disclaimer identifying the ’280 Application and the ’311
Application, and the terminal disclaimer was approved. See Terminal
Disclaimer 1 (filed July 3, 2017); Terminal Disclaimer Review Decision
(entered July 3, 2017). Accordingly, we summarily reverse the rejection of
claims 1, 2, 4—11, and 13—20 under the doctrine of non-statutory
obviousness-type double patenting.
Rejections under 35 U.S.C. f103
In rejecting claim 1, the Examiner finds, among other things, Peter
teaches “wherein the processing includes modifying state data stored in at
least one of the one or more variables based on data included in the
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Application 14/087,253
respective SIP message.” Final Act. 16—17. In particular, the Examiner
finds Peter discloses a session border controller (“SBC”) for controlling
session initiation protocol (“SIP”) communication sessions between devices.
Final Act. 16 (citing Peter 1 8); Ans. 2—3 (citing Peter 13). According to the
Examiner, Peter’s SBC includes (1) incoming and outgoing SIP message
profilers that execute specific types of rules to process received SIP
messages and (2) a policy engine that can modify user- or system-generated
actionable information that is located in a policy and associated with a SIP
message (e.g., SIP header information or policy parameter information).
Final Act. 16 (citing Peter H 8, 18, 33, 38-40, Figs. 5, 8); see also Ans. 3.
Further, the Examiner finds Peter discloses processing a received SIP
message such that a policy’s modified actionable information is used to
manipulate a specific SIP message profiler rule in order to facilitate a
specific routing treatment for a VoIP call. Final Act. 16—17 (citing Peter
1148-49, 59, Fig. 8); Ans. 3 (citing Peter 146), 4 (citing Peter, Fig. 6).
The Examiner explains “Peter’s modifying actionable information
[would have] fairly suggested the claimed features of modifying state data
stored in the variable.” Ans. 4. The Examiner further explains that “[s]ince
the SIP message profiler [is] triggered by [a] SIP request message . . ., the
actionable information could be modified by [the] incoming SIP message
[i]n addition to the modification by the user when the actionable information
[of the] policy is modified.” Ans. 3 (citing Peter 15, Fig. 5; see also Ans. 4
(citing Peter 148).
Appellants contend, among other things, the Examiner errs because
“neither the Action nor the Answer bothers to identify anything within Peter
that corresponds to the claimed ‘data included in the respective SIP
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message.’” Reply Br. 3. Appellants assert “a SIP request message that
triggers something to allow user interaction, does not suggest that the
actionable information is modified based on any data included within that
SIP request message.” Reply Br. 4.
We agree with Appellants. The Examiner has not identified a
disclosure within Peter or Clark that teaches or suggests modifying the
actionable information of a policy based on “data included in the respective
SIP message.” Absent sufficient persuasive explanation or technical
reasoning, the Examiner’s finding and explanation that Peter’s actionable
information “could be modified by [the] incoming SIP message” are
speculative and unsupported by evidence of record. We decline to resort to
impermissible speculation or unfounded assumptions or rationales to cure
the deficiencies in the factual bases of the rejection before us. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
Therefore, having considered the Examiner’s rejection of independent
claim 1 in light of Appellants’ arguments and the evidence of record, we do
not sustain the Examiner’s rejection of independent claim 1. For similar
reasons, we do not sustain the Examiner’s rejection of independent claim 10,
which includes the same deficiency, nor the Examiner’s rejection of
dependent claims 2, 4, 5, 8, 9, 11, 13, 14, 17, and 18. We also do not sustain
the Examiner’s rejections of dependent claims 6, 7, 15, and 16—these
claims include the same deficiency discussed above for claim 1 and the
Examiner has neither cited the Evens reference to overcome that deficiency
nor otherwise provided an adequate rationale to fill the gaps in the cited
prior art. See Final Act. 26—27.
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Application 14/087,253
Appellants further contend
[independent claim 19 recites features that are similar, though
not identical, to those of claim 1. Specifically, claim 19 recites
in part, ‘modifying state data stored in at least one of the one or
more variables based on data included in the respective SIP
message.’ For the reasons mentioned above, this feature is not
taught or suggested by Peter or Clark. Furthermore, claim 20
depends from and adds additional features to independent claim
19. Thus, the arguments made above in favor of the
patentability of claim 1 apply to claims 19-20 as well.
Appeal Br. 12.
Contrary to Appellants’ arguments, however, independent claim 19
does not recite “modifying state data stored in at least one of the one or more
variables based on data included in the respective SIP message.” Rather,
claim 19 recites “modifying state data stored in at least one variable
associated with the particular flow based on a compiled rule.” Appeal
Br. 18 (Claims App’x) (emphasis added). Accordingly, Appellants’
arguments are not commensurate with the scope of claim 19, and Appellants
have not substantively rebutted the Examiner’s findings relating to claim 19.
See Final Act. 23—25; see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(finding that appellants cannot rely upon limitations not appearing in the
claims for patentability).
Therefore, we sustain the Examiner’s rejection of independent claim
19 and the rejection of claim 20, which depends therefrom and was not
argued separately with particularity.
DECISION
We summarily reverse the Examiner’s decision provisionally rejecting
claims 1,2, 4—11, and 13—20 under the doctrine of nonstatutory
obviousness-type double patenting.
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We reverse the Examiner’s decision rejecting claims 1, 2, 4—11, and
13-18 under 35 U.S.C. § 103.
We affirm the Examiner’s decision rejecting claims 19 and 20 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv)(2016).
AFFIRMED-IN-PART
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