Ex Parte Puckett

Patent Trial and Appeal Board

Nov 4, 2014

11766508 (P.T.A.B. Nov. 4, 2014)

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.
11/766,508 06/21/2007 Steven Puckett 070020 (9400-342) 9503
39072 7590 11/05/2014
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
CHO, HONG SOL
ART UNIT PAPER NUMBER
2467
MAIL DATE DELIVERY MODE
11/05/2014 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 STEVEN PUCKETT
____________________

Appeal 2012-008587
Application 11/766,508
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, NATHAN ENGELS, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–11, 15, 16, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is AT&T Intellectual
Property I, L.P. (App. Br. 1.)
Appeal 2012-008587
Application 11/766,508

2

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to communications over Internet
Protocol (IP) networks using Session Initiation Protocol (SIP). (Spec. ¶ 2.)2
Specifically, Appellant claims systems and methods for registering the
physical location of an IP device with an Emergency 911 (E911) system
using SIP. (Abstract.)
Claims on Appeal
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1 is
illustrative of Appellant’s invention and is reproduced below with disputed
limitations emphasized:
1. A method of registering a physical location of an
internet protocol device with an emergency 911 system,
comprising:
subscribing to the internet protocol device using session
initiation protocol;
receiving a message containing physical address
information associated with the internet protocol device and a
session initiation protocol phone number associated with the
internet protocol device; and
storing the physical address information in a location
information repository.

Evidence Considered
Olshansky US 7,706,356 B1 Apr. 27, 2010
Bartlett US 6,611,752 B1 Aug. 26, 2003

2 Our decision refers to Appellant’s Appeal Brief filed February 27, 2012
(“App. Br.”); the Examiner’s Answer mailed March 13, 2012 (“Ans.”);
Appellant’s Reply Brief filed May 14, 2012; Final Office Action mailed
September 28, 2011 (“Final Act.”); and the original Specification filed June
21, 2007 (“Spec.”).
Appeal 2012-008587
Application 11/766,508

3

Examiner’s Rejections
Claims 1, 2, 5–11, 18, and 19 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Olshansky. (Ans. 4–5.)
Claims 3, 4, 15, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Olshansky and Bartlett. (Ans. 6–7.)

Issue on Appeal
Based on Appellant’s arguments, the issue on appeal is whether
Olshansky discloses “receiving a message containing physical address
information associated with the internet protocol device and a session
initiation protocol phone number associated with the internet protocol
device,” as required by claim 1. (See App. Br. 5–6.)

ANALYSIS
With respect to Appellant’s independent claims 1 and 18, the
Examiner relies on Olshansky as disclosing all of the claim limitations.
(Ans. 4–5.) In particular, the Examiner finds that Olshansky discloses
registering the physical location of an IP device and its SIP phone number
with a local information repository. (Id. (citing Olshansky, 3:16–25, 5:3–9,
10:60–67).)
Appellant disputes the Examiner’s factual finding regarding
Olshansky. (App. Br. 5.) Specifically, Appellant argues “Olshansky
describes a system in which a position server 142 determines location
information based on an IP device’s 110 telephone number or where a user
updates the location of a remote IP device 171 using a PC 115,” but “does
not appear to include any disclosure or description of receiving a message
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Application 11/766,508

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containing both physical address information and a SIP phone number
associated with an IP device as recited in independent Claims 1 and 18.”
(Id. (internal citations omitted) (emphasis added).)
We are not persuaded by Appellant’s arguments. The disputed claim
language requires “a message containing physical address information . . .
and a session initiation protocol phone number.” (App. Br. 7 (Cl. 1).)
Appellant does not dispute that Olshansky describes a “register message
including . . . [the IP device’s] telephone number . . . .” (Id. at 5 (citing
Olshansky, 10:60–67).) Moreover, as Appellant notes, the user can
manually input a physical address into the IP device. (Id. (citing Olshansky,
6:35–37).) This manual input is described throughout Olshansky as a way
for the E911 system to obtain physical address location for devices in
unknown locations. See, e.g., Olshansky, 4:39–45, 8:51–60, 11:62–12:4.
We observe that, similar to Olshansky, Appellant’s Specification also
describes the user manually inputting physical location information. (Spec.
¶ 55 & Fig. 8.) Thus, in the absence of sufficient rebuttal, we find
Olshansky discloses receiving both the phone number and physical location
as required by the claims.
To the extent Appellant’s position is that both pieces of information
are not contained within “a [single] message,” as recited in the claims (Ans.
5), we disagree. The use of the indefinite article “a” as in “a message” does
not necessarily limit the claims to a single message containing both pieces of
information. See Tate Access Floors, Inc. v. Interface Architectural Res.,
Inc., 279 F.3d 1357, 1370 (Fed.Cir. 2002) (“It is well settled that the term ‘a’
or ‘an’ ordinarily means ‘one or more.’ ”). Here, the Specification is
consistent with the interpretation of “a message” as “one or more messages.”
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Application 11/766,508

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For example, “the SIP softphone 605 may send a SIP Notify message to the
E911 server 630 containing the physical address information and/or SIP
phone number associated with the SIP softphone 605.” Spec. ¶ 58
(emphases added). Thus, in contrast to Appellant’s interpretation of “a
message” as a requirement limited to a single message containing both
pieces of information, we conclude that the broadest reasonable
interpretations of claim 1 includes within its scope transmitting both
physical address and phone number in one or more messages .
Because Olshansky’s disclosure of receiving the claimed phone
number and physical address falls within the scope of the claims and, we
conclude, teaches or suggests the disputed limitation, we are not persuaded
of Examiner error and sustain the rejections of independent claims 1 and 15.
With respect to the dependent claims 2, 5–11, and 18–19, Appellant makes
no separate patentability arguments. Therefore, we sustain the rejections of
these claims as well. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
With respect to dependent claims 3, 4, which depend from claim 1,
and claim 20, which depends from claim 18, the Examiner rejected these
claims under § 103(a) as being unpatentable over Olshansky and Bartlett.
(Ans. 6–7.) Because Appellant makes no separate patentability arguments
with respect to these claims, we sustain their rejection for the same reasons
as discussed supra with respect to the independent claims from which they
depend. Similarly, with respect to independent claim 15, Appellant’s sole
patentability argument is based on the limitation “[s]imilar to” the one
disputed with respect to claims 1 and 18. (App. Br. 6.) Because we are not
persuaded that Olshansky is deficient in this regard, we sustain the
Examiner’s rejection of claim 15. With respect to dependent claim 16,
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Application 11/766,508

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Appellant makes no separate patentability arguments. Therefore, we sustain
the rejection of claim 16 as well.

DECISION
We affirm the Examiner’s final rejection of claims 1–11, 15, 16, and
18–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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