Ex Parte Rosenberg et al

Patent Trial and Appeal Board

May 13, 2016

11059352 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111059,352 02/17/2005
30593 7590 05/17/2016
HARNESS, DICKEY & PIERCE, PLC
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Jonathan David Rosenberg
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.
29250-000104/US/DVC 9015
EXAMINER
NGUYEN, PHUONGCHAU BA
ART UNIT PAPER NUMBER
2464
NOTIFICATION DATE DELIVERY MODE
05/1712016 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):
dcmailroom@hdp.com
pshaddin@hdp.com
jcastellano@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DAVID ROSENBERG and
HENNING G. SCHULZRINNE1
Appeal2014-000895
Application 11/059,352
Technology Center 2400
Before KRISTEN L. DROESCH, KAL YAN K. DESHPANDE, and
JASON V. MORGAN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a Final Rejection
of claims 16---35 and 38--49.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants indicate the real party-in-interest is ALCATEL-LUCENT USA.
App. Br. 6.
2 Claims 36 and 37 were objected to as dependent on a rejected claim, but
indicated as being allowable if rewritten in independent form. Final Act. 1,
30. Claims 50-51 were allowed. Id.
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Application 11/059,352
BACKGROUND
Appellants' disclosed invention relates to internet telephony
communication. Appellants disclose methods to provide relatively advanced
telephony services such as multi party calling. Spec. i-fi-f 12-13, 129--41.
Independent claim 16 is illustrative and is reproduced from the Claim
Appendix below (disputed limitations in italics):
16. A method for communicating via a conference bridge, the
method comprising:
receiving, at at least a first party, an invitation message from
a second party, the invitation message including an identifier of
the conference bridge, the invitation message being a session
initiation protocol (SIP) message;
sending, from at least the first party to the conference bridge,
a request to establish communication with the conference bridge,
the request including the identifier identifying the conference
bridge; and
establishing communication between the first party and the
conference bridge in response to the request.
REJECTIONS
Claims 16, 18, 22, 25, 48, and 49 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chakrabarti (US 6,163,692; iss. Dec. 19,
2000) and Oran (US 6,275,574 Bl; iss. Aug. 14, 2001).
Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stanley (US 4,635,251; iss. Jan. 6, 1987) and Oran.
Claims 17, 19, 20, 23, and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Chakrabarti, Oran, and Jonsson (US 6,272,214 Bl; iss.
Aug. 7, 2001).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chakrabarti, Oran, and Erb (US 5,920,622; iss. July 6, 1999).
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Application 11/059,352
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chakrabarti, Oran, and Kurganov (US 6,775,264 Bl; iss. Aug. 10,
2004).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chakrabarti, Oran, and Borwankar (US 6,594,693 B 1; iss. July 15,
2003).
Claims 28, 29, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fenton (US 5,619,555; iss. Apr. 8, 1997), Maurille (US
6,484,196 Bl; iss. Nov. 19, 2002), and Oran.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fenton, Maurille, Oran, and Jonsson.
Claims 32, 34, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fenton, Maurille, Oran, and Borwankar.
Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fenton, Maurille, Oran, and Beyda (US 6,404,873 Bl; iss.
June 11, 2002).
Claims 40 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chakrabarti, Oran, Fenton, and Maurille.
Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chakrabarti, Oran, and Fenton.
Claims 44--47 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chakrabarti, Maurille, and Oran.
ISSUE
Did the Examiner err in finding that Oran teaches or suggests an
invitation message, and a request message, being a Session Initiation
Protocol message?
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Application 11/059,352
ANALYSTS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants' arguments in the Reply Brief presented in response
to the Answer. We agree with Appellants' conclusions and highlight and
address specific findings and arguments for emphasis as follows.
Claims 16--27 and 40--43
In rejecting independent claim 16, the Examiner relies on Chakrabarti
or Stanley for teaching all of the claim limitations with the exception of "the
invitation message being a session initiation protocol (SIP) message." Final
Act. 2-5. The Examiner finds Oran teaches the session application can
process Session Invitation Protocol (SIP) invitations in conferencing. Id. at
3, 5 (citing Oran 6:1-8). The Examiner determined it would have been
obvious to apply Oran's teachings to Chakrabarti's system or Stanley's
system to provide telephone service to a conferee over IP (Internet Protocol)
networks. Id. at 3, 5.
Appellants argue that Oran teaches Session Invitation Protocol, not
Session Initiation Protocol. App. Br. 22; Reply Br. 7. Appellants assert
Session Invitation Protocol and Session Initiation Protocol are distinct
protocols. App. Br. 22-25; Reply Br. 4--7 (citing Mark Handley & Eve
Schooler, Session Invitation Protocol INTERNET-DRAFT, INTERNET
ENGINEERING TASK FORCE (1996), Section 5.1; Spec. ,-r,-r 34--35, Fig. 2).
Appellants argue that the Examiner has not established a prima facie case of
obviousness because Oran does not disclose or fairly suggest "the invitation
message being a session initiation protocol (SIP) message," as recited in
claim 16. Id. at25.
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Application 11/059,352
In response to Appellants' arguments, the Examiner asserts that
Oran's Session Invitation Protocol (SIP) is the claimed Session Initiation
Protocol (SIP) because Oran's SIP discloses Session Description Protocol
(SDP) and Session Announcement Protocol (SAP). Ans. 32 (citing Oran
6:1-18). The Examiner also bases this assertion on Oran's following
teachings: (1) a Dial Plan Mapper located in one or more gateways 18, 28
(citing Oran 3:11-13, Fig.I); (2) the Dial Plan Mapper can be located into a
variety ofH.320/H.323 gateways (citing Oran 3:16-18); (3) the gateways
18, 28 include a session application 34 (citing Oran 3:24--27, Fig.I); and (4)
the VoIP session application 34 in the Dial Plan Mapper 20 receives
incoming signaling message 48 over the IP network using a session protocol
(citing Oran 4:10-13); (5) gateway 18 has a Dial Plan Mapper 20 comprise a
session application 34 for initiating a session with another gateway 28 to
establish a VoIP call between telephones (citing Oran 3:11-15, Fig. 1); and
( 6) Appellants' Specification discloses "SIP [may be] used for gateway-to-
gateway signaling" (citing US 2005/0165934 Al i-f 13). Id. at 32-33.
The Examiner's does not provide a sufficient factual basis to
demonstrate that Oran's Session Invitation Protocol (SIP) is the claimed
Session Initiation Protocol (SIP). The Examiner does not direct us to
extrinsic evidence that makes it clear that use of SDP and SAP means that
Session Initiation Protocol is necessarily present in Oran based on Oran's
disclosure of Session Invitation Protocol, and that it would have been so
recognized by one with ordinary skill in the art. See In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1997) ("To establish inherency the extrinsic
evidence 'must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by person of ordinary skill."'). Thus, we agree with Appellants
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rebuttal arguing that although the Session Initiation Protocol and the Session
Invitation Protocol may function in conjunction with SDP or SAP, this does
not mean that they are the same protocol. See Reply Br. 4. The Examiner
also does not direct us to extrinsic evidence that makes it clear that use of
that Session Initiation Protocol is necessarily present in Oran based on
Oran's disclosure of signaling between gateways and Appellants' disclosure
of signaling between gateways, and that it would have been so recognized by
one with ordinary skill in the art. See Robertson, 169 F.3d at 745.
Therefore, we also agree with Appellants' rebuttal that merely because
Appellants' Specification and Oran both discuss gateway-to-gateway
signaling does not mean that Oran discloses Session Initiation Protocol. See
Reply Br. 9. Moreover, we note that evidence of record before the Examiner
includes the Internet Engineering Task Force (IETF) drafts for Session
Invitation Protocol3, Simple Conference Invitation Protocol4, and Session
Initiation Protocol, 5 which supports Appellants' argument that Session
Initiation Protocol is distinct from Session Invitation Protocol.
The Examiner also finds "Oran inherently indicated that the Session
Invitation Protocol (SIP) invitations as Session Initiation Protocol INVITE
.... " Ans. 33. The Examiner bases this finding on the following: (1)
Oran's session application 34 initiates a session with a destination on IP
3 Mark Handley & Eve Schooler, Session Invitation Protocol INTERNET-
DRAFT, INTERNET ENGINEERING TASK FORCE (1996), considered by the
Examiner on October 7, 2009.
4 Henning Schulzrinne, Simple Conference Invitation Protocol INTERNET-
DRAFT, INTERNET ENGINEERING TASK FORCE (1996), considered by the
Examiner on October 7, 2009.
5 Mark Handley et. al., SIP: Session Initiation Protocol INTERNET-DRAFT,
INTERNET ENGINEERING TASK FORCE (1997), considered by the Examiner on
September 25, 2008.
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network (citing Oran 4:61-65, Fig. 4); (2) session application 34 can also
process Session Invitation Protocol invitations (citing Oran 6: 14--15); (3)
Figure 6 of Oran depicts the input or output for Dial Plan Mapper having the
Session Protocol Description: a signaling protocol to use, e.g., H.323, SIP;
( 4) Figure 6 of Oran depicts the message/invitation/INVITE comprises
Session Description Protocol (SDP) in SIP; and (5) the assertion that "the
term '[i]nvite' and 'initiate' were used interchangeabl[y] in Oran." Id. at
32-33.
The Examiner does not provide a sufficient factual basis to
demonstrate that a Session Initiation Protocol INVITE is inherent based on
Oran's teaching of Session Invitation Protocol invitations. The Examiner
does not direct us to extrinsic evidence that makes it clear that Session
Initiation Protocol invitation messages are necessarily present in Oran, based
on Oran's disclosures of the "Session Protocol: A signaling protocol to use,
e.g. H.323, SIP" in Figure 6, the session application initiating a session at
column 4, lines 61---65, and the session application processing Session
Invitation Protocol invitations at column 6, lines 14--18, and that it would
have been so recognized by one with ordinary skill in the art. See
Robertson, 169 F.3d at 745. Therefore, we agree with Appellants' rebuttal
that Oran's teaching that the session application 34 initiates a session with a
destination at column 4, lines 61 through 65, does not mention Session
Initiation Protocol or a Session Initiation Protocol INVITE message, and
does not necessarily require the initiation message to be a Session Initiation
Protocol Message. See Reply Br. 7-8. We further agree with Appellants'
rebuttal that the mere use of the terms invite or initiate in Oran does not
disclose, teach or suggest the use of Session Initiation Protocol. See id. at 8.
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For these reasons, we are constrained to reverse the rejections of
independent claim 16, and claims 17-27 and 40-43, dependent ultimately
therefrom.
Claims 28-35, 38, 39, and 44-49
The remaining independent claims 28, 44, 46, 48, and 49 each recite a
request message being a session initiation protocol (SIP) message. The
Examiner relies on the same teachings of Oran discussed above for teaching
or suggesting the request message being a session initiation protocol (SIP)
message. See Final Act. 11, 24--30; Ans. 35, 42--43, 49-51. Accordingly,
for the same reasons as those explained above addressing claim 16, we are
constrained to reverse the rejections of independent claims 28, 44, 46, 48,
and 49, and dependent claims 29-35, 38, 39, 45, and 47.
In the Event of Further Prosecution
We have decided the Appeal before us. In the event of further
prosecution, we direct the Examiner's attention to Multiparty Multimedia
Session Control Working Group (MMUSIC) Minutes from the 3 7th IETF San
Jose, California, USA Dec. 9-10, 1996, http://www.ietf.org/ietf-
ftp/mmusic/mmusic-minutes-96dec.txt (last accessed May 9, 2016), which
discloses the following: "Mark Handley presented a 'new' protocol, the
Session Initiation Protocol (SIP v2) .... This protocol represents the
unification of Handley/Schooler' s Session Invitation Protocol (SIP v 1) and
Schulzrinne's Simple Conference Invitation Protocol (SCIP)." We further
direct the Examiner's attention to Oran's Figure 9 which discloses "SIP:
Internet Simple Conference Invitation Protocol." We leave it to the
Examiner to determine whether it would have been obvious to one with
ordinary skill in the art at the time of the invention to modify the teachings
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of the various combinations of references including Oran, to include Session
Initiation Protocol messages for the invitation messages, request messages,
and instruction messages, recited in the claims.
DECISION
We REVERSE the rejections of claims 16-35 and 38--49 under
35 U.S.C. § 103(a) over the cited prior art.
REVERSED
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