Ex Parte Shaw et al

Patent Trial and Appeal Board

Aug 1, 2016

12389600 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/389,600 0212012009
48500 7590 08/03/2016
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Michael J. Shaw
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.
4366YDT-9 3525
EXAMINER
TSEGA YE, SABA
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. SHAW and KENNETH WNUCK
Appeal2015-002490
Application 12/389,600
Technology Center 2400
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-002490
Application 12/389,600
STATEMENT OF THE CASE
Appellants' invention routes secure communications by determining
endpoint capabilities. If an endpoint is incapable of secure communications
via Internet Protocol (IP), the communication is routed over a Public
Switched Telephone Network (PSTN) using Inter-Gateway Alternate
Routing (IGAR). See generally Abstract; Spec. 8-9; Fig. 3. Claim 1 is
illustrative:
1. A secure communication management method
compnsmg:
detecting a request for a secure communication;
in response to detecting the request, determining
capabilities of one or more endpoints included in the secure
communication, wherein at least one of the one or more
endpoints is determined to not be IP (Internet Protocol) capable;
and
based on the determining step, and in response to detecting
the request for a secure communication, forcing routing of the
secure communication over PSTN by using IGAR (Inter-
Gateway Alternate Routing).
THE REJECTIONS
The Examiner rejected claims 1---6, 8-16, and 18-20 1 under 35 U.S.C.
§ 103(a) as unpatentable over Coppage (US 2012/0230480 Al; Sept. 13,
1 Although the Examiner's statement of the rejection (1) includes claim 17,
which was rejected over Coppage, Son, Spies, and Foster (Ans. 6), and (2)
omits claim 19 despite discussing the claim in the rejection's body (Ans. 4),
we nevertheless treat these apparent typographical errors as harmless, and
present the correct claim listing here for clarity.
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Application 12/389,600
2012), Son (US 2006/0013195 Al; Jan. 19, 2006), and Spies (US 7,103,911
B2; Sept. 5, 2006). Ans. 2---6. 2
The Examiner rejected claims 7 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Coppage, Son, Spies, and Foster (US 4,888,801; Dec. 19,
1989). Ans. 6.
THE REJECTION OVER COPP AGE, SON, AND SPIES
The Examiner finds that Coppage discloses every recited element of
claim 1, except for ( 1) Coppage' s routing being forced, and (2) secure
communication, and cites Son and Spies for respectively teaching these
features in concluding that the claim would have been obvious. Ans. 2-3.
In reaching this conclusion, the Examiner finds that Coppage' s router and
network device, Son's gateway, and Spies' network equipment correspond
to the recited IGAR. Ans. 8-10.
Appellants argue that the cited prior art does not force routing of
secure communication over PSTN by using IGAR responsive to detecting a
request for a secure communication, as claimed. App. Br. 5-9; Reply Br. 2-
4. According to Appellants, the Examiner's reliance on various routing
functions for teaching IGAR is misplaced because IGAR's functions extend
beyond routing as evidenced by the definition on page 2 of the Specification,
as well as the two applications incorporated by reference on that page.
Reply Br. 3. Appellants argue other recited limitations summarized below.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 16,
2014 ("App. Br."); (2) the Examiner's Answer mailed October 8, 2014
("Ans."); and (3) the Reply Brief filed December 8, 2014 ("Reply Br.").
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Application 12/389,600
ISSUES
Under § 103, has the Examiner erred by finding that Coppage, Son,
and Spies collectively would have taught or suggested:
(1) forcing routing of secure communication over PSTN by using
IGAR responsive to detecting a request for a secure communication, as
recited in claim 1 ;
(2) two separate instances of an IGAR gateway communicate via two
separate instances of communication managers, as recited in claim 5?
ANALYSIS
Claims 1-4, 6, 8, 9--14, 16, and 18-20
We begin by construing the key disputed limitation of claim 1, namely
IGAR. According to Appellants, IGAR is defined as a system that is
constructed to route a call under any of the four stated conditions, including
( 1) exceeding allocated bandwidth or number of calls; (2) exceeding a
detected network performance deterioration threshold; (3) exhausting VoIP
RTP resources in gateways in network regions 1 or 2; or (4) configuring
forced IGAR between these regions. Reply Br. 3 (citing Spec. 2).
We emphasize Appellants' term "defined" here, for although this
description informs our understanding of IGAR and the conditions under
which routing occurs, it is not a definition of IGAR that so limits our
interpretation of the term. That Appellants clearly and unambiguously
define other terms in the Specification, yet provide no such clear definition
for IGAR, only bolsters this conclusion. Compare Spec. 4: 15-5 :29
(defining various terms).
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Application 12/389,600
We reach the same conclusion regarding the two applications
incorporated by reference on page 2 of the Specification that are said to
detail and define IGAR. But here again, these applications do not squarely
define IGAR, but rather describe associated routing functions in the context
of the disclosed systems, including routing calls over circuit-switched trunks
in a PSTN when a Wide Area Network (WAN) cannot carry a bearer
connection. See, e.g., U.S. Appl'n No. 11/107,659 ("'659 Appl'n") 8:25-
9:28; Figs. 2-5.; see also U.S. Appl'n No. 11/107,524 ("'524 Appl'n")
9:14--10:11; Figs. 2-5. According to Appellants, the '659 application's
Figures 1 and 2 differentiate a general call controller architecture from that
of IGAR. Reply Br. 3. Even assuming, without deciding, that this is the
case, these descriptions, at best, inform our understanding of IGAR in the
context of the disclosed systems, but do not squarely define the term to so
limit its interpretation.
Although not raised in connection with the Examiner's rejection of
claim 1, but rather claim 5, Appellants also refer to intelligence installed in
an IGAR gateway in one embodiment that enables backwards compatibility
to legacy phones by recognizing that an endpoint is not IP-compatible, and
forcing routing of secure communications over PSTN. App. Br. 10-11;
Reply Br. 5; Spec. 2:30-3:4. To the extent that this argument is also
intended to apply to claim 1 's !GAR-based recitation, this description, like
the foregoing description regarding call routing conditions on page 2 of the
Specification, informs our understanding of IGAR, but does not define the
term to so limit its interpretation.
Turning to the rejection, the Examiner finds, and we agree, that claim
1 does not specify any !GAR-based particulars apart from its use to route a
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Application 12/389,600
secure communication over PSTN. See Ans. 8. Notably, the claim does not
specify how IGAR is so used, let alone recite any !GAR-specific aspects
pertaining to this use.
As such, we see no error in the Examiner's finding at least to the
extent that IGAR would have been at least an obvious variation in light of
Coppage's router and network device, Son's gateway, and Spies' network
equipment. See Ans. 2-3, 8-10. First, nothing in the claim precludes the
routing capabilities of the systems of Coppage and Son, which both teach
routing communications over PSTN instead of an IP network under certain
conditions. See Coppage i-fi-140, 43, 47, 52, 56; Figs. 3, 5, 7, 8, 10; see also
Son i-fi-1 42, 64; Figs. 1-2. These gateway-based alternate routing schemes,
then, at least suggest inter-gateway-based schemes. Appellants' arguments
regarding the cited prior art not disclosing IGAR are unavailing and not
commensurate with the scope of the claim.
Second, even assuming, without deciding, that IGAR involves more
than the routing capabilities of these devices as Appellants contend (Reply
Br. 3--4), Appellants have not shown that using IGAR in the
Coppage/Son/Spies system would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. In short, such an
enhancement uses prior art elements predictably according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007); see also Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Lastly, Appellants' arguments regarding the individual shortcomings
of each cited reference (App. Br. 6-9; Reply Br. 4) are unavailing. First, to
the extent that Appellants contend that Coppage does not request a secure
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Application 12/389,600
communication, norforce routing that communication as claimed (see App.
Br. 6-7), such arguments are not germane to the Examiner's reliance on
Spies and Son, respectively, for those emphasized features. See Ans. 3.
Appellants' contention that Spies does not determine whether endpoints are
IP-capable (App. Br. 8) is also unconvincing, for the Examiner cites
Coppage-not Spies-for that feature. See Ans. 2-3, 10. Appellants'
arguments regarding Son's alleged shortcomings are likewise unpersuasive,
for they are not germane to the limited purpose for which Son was cited,
namely to show that it was known to force routing over PSTN under certain
conditions, and that such forcing would have been obvious in Coppage' s
system. See Ans. 3. In short, Appellants' individual attacks on the cited
references do not show non-obviousness where, as here, the rejection is
based on the cited references' collective teachings. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accord Ans. 9-10 (noting these
individual attacks).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2--4, 6, 8, 9-14, 16, and 18-20 not argued separately
with particularity. 3
Claims 5 and 15
We also sustain the Examiner's rejection of claim 5 reciting that two
separate instances of an IGAR gateway communicate via two separate
3 Although Appellants nominally argue claims 2--4, 6, 8, 9, 11-14, 16, and
18-20 separately (App. Br. 9-11 ), Appellants reiterate arguments similar to
those made with respect to claim 1. Accordingly, we group those claims
with claim 1.
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Application 12/389,600
instances of communication managers. Despite Appellants' arguments to
the contrary (App. Br. 10-11; Reply Br. 4--5), we see no error in the
Examiner's reliance on Coppage's routers 908, 910, 912 in Figure 9 for at
least suggesting the recited features. Ans. 4, 11-12. Appellants' arguments
pertaining to Coppage's alleged shortcomings regarding IGAR (Reply Br.
4--5) are unpersuasive for the reasons previously discussed.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 5, and claim 15 not argued separately with particularity.
THE REJECTION OVER COPP AGE, SON, SPIES, AND FOSTER
We also sustain the Examiner's obviousness rejection of claims 7 and
17 over Coppage, Son, Spies, and Foster. Ans. 6, 12-13. Claim 7 recites
receiving a request for the secure communication from an endpoint
responsive to a user selection of a button on the endpoint.
The Examiner acknowledges that the sender's equipment 12 in Spies
Figure 1 encrypts and sends messages to an endpoint secure terminal, but
lacks a button on the endpoint. Ans. 6. The Examiner, however, cites Foster
for teaching such a button in concluding that the claim would have been
obvious. Ans. 6 (citing Foster, Abstract; col. 4, 11. 27--46).
We see no error in this finding. As Appellants acknowledge, Foster
discloses a request for secure communication responsive to pressing a secure
key. App. Br. 13; col. 4, 11. 40--41; Figs. 2-3. Given this functionality,
providing such a button in the prior art system, as the Examiner proposes,
uses prior art elements predictably according to their established functions-
an obvious improvement. See KSR, 550 U.S. at 417. Appellants' arguments
regarding Foster's alleged shortcomings for determining endpoint
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Application 12/389,600
capabilities responsive to secure communication, and forcing secure
communication over PSTN (App. Br. 13), are unpersuasive given the limited
purpose for which Foster was cited.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 7, and claim 17 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 103.
DECISION
The Examiner's decision rejecting claims 1-20 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).
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