Ex Parte Sylvain

Patent Trial and Appeal Board

Mar 6, 2014

10824039 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANY SYLVAIN
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Appeal 2011-010978
Application 10/824,039
Technology Center 2600
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Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and J. JOHN LEE,
Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-42, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest identified by Appellant is Nortel Networks
Limited. App. Br. 1. The record indicates an assignment from Nortel
Networks Limited to Rockstar Bidco, LP and from Rockstar Bidco, LP to
Apple Inc. See “STATEMENT UNDER 37 CFR 3.73(b)” (filed July 20,
2012).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to communications, and in particular to
. . . a personal communication device [(“PCD”)] capable of supporting
multiple user IDs [(identifications)].” Spec. 1:4-6. Claim 1, which is
illustrative, reads as follows:
1. A personal communication device comprising:
a) at least one packet communication interface;
b) a control system associated with the at least one
packet communication interface and adapted to:
i) provide a plurality of packet communication
clients, which are associated with unique IDs, each of the
unique IDs uniquely associated with distinct service
nodes, wherein the unique IDs facilitate packet
communications with the plurality of packet
communication clients; and
ii) establishing packet communications with
each of the plurality of packet communication clients via
the at least one packet communication interface, the
packet communications for each of the plurality of packet
communication clients associated with a corresponding
one of the IDs.
The Examiner relies on the following prior art in rejecting the claims:
Nassar US 6,801,528 B2 Oct. 5, 2004
Phillips US 7,454,206 B1 Nov. 18, 2008
Yach US 2002/0128036 A1 Sept. 12, 2002
Westman US 2004/0122934 A1 June 24, 2004
Claims 1-3, 7, 8, 10, 19-24, 28, 29, 31, and 40-42 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Phillips and Nassar. Ans.
3-6.
Claims 4-6, 11-18, 25-27, and 32-39 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Phillips, Nassar, and Yach. Ans. 6-10.
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Claims 9 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Phillips, Nassar, and Westman. Ans. 10.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Dec. 8, 2010; “Reply Br.” filed Apr. 28, 2011) and the Answer
(“Ans.” mailed Mar. 7, 2011) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUE
Appellant argues independent claims 1 and 22 together. See App. Br.
10-14. Claims 2-21 and 23-42 are not separately argued with particularity.
See App. Br. 14. Therefore, we discuss the appeal by reference to
illustrative claim 1. The issue presented by Appellant’s contentions is as
follows: Does the combination of Phillips and Nassar teach or suggest
“provid[ing] a plurality of packet communication clients, which are
associated with unique IDs, each of the unique IDs uniquely associated with
distinct service nodes” (emphasis added), as recited in claim 1?

ANALYSIS
The Examiner relies on Phillips to teach a PCD having a control
system adapted to provide a plurality of packet communication clients that
are associated with unique IDs to facilitate packet communications with the
plurality of packet communication clients, as set forth in claim 1. Ans. 4
(citing Phillips, Fig 2; col. 5, l. 10-col. 7, l. 11; col. 7, l. 15-col. 8, l. 2). The
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Examiner relies on Nassar to teach that “each of the unique IDs [is] uniquely
associated with distinct service nodes,” as recited in claim 1. Id. (citing
Nassar, Abstract; Figs. 1, 6, 7A, 7B; col. 2, ll. 11-41; col. 3, l. 44-col. 4, l. 7;
col. 4, l. 60-col. 5, l. 10; col. 5, l. 13-col. 8, l. 7). The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to combine
the teachings of Phillips and Nassar. Ans. 4-5. The Examiner explains:
In interpreting this claim limitation “unique IDS uniquely
associated with a distinct service node[,]” the broadest
reasonable interpretation of the term “associated” is -- a
relationship -- which is consistent with the specification.
However, the term “associated” can encompass at least two
degrees of relationship between the unique IDS and the distinct
service node, including a direct relationship wherein the unique
IDS are registered to the distinct service node and an indirect
relationship as disclosed above in Nassar wherein a unique ID
is registered to a service provider which is reached through a
service node distinctly and uniquely connected to the service
provider, wherein communicating with a service provider
requires using a unique ID which routes to the distinct service
node as gateway to the service provider.
Ans. 12.
Appellant contends
Nassar discloses providing a new address that is assigned to a
service provider that provides a requested service. However,
. . . a service provider is not equivalent to a service node. More
specifically, a service node is a switching point that comprises a
point of end user access to a network and network services. In
contrast, a service provider is an organization that provides a
communications service, a storage service, a processing service,
or any combination of the three. Nassar discloses a service
provider that is entirely consistent with this definition.
App. Br. 12; see also Reply Br. 2, 4-5.
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Appellant further contends that the Examiner’s broad construction of
the term “associated” is “as it relates to the claims is completely inconsistent
with the Specification.” App. Br. 13; see also Reply Br. 5-6. Appellant
points (id.) to the Specification which recites, in part:
In operation, each packet-based communication 10 must be
registered with a service node 22 in association with the PCD
14. As illustrated, different personal communication IDs for a
given PCD 14 may be registered with different service nodes
22. In this example, the packet communication ID
USER_A@HOME.NET is registered with service node 22(A)
and the packet-based communication IDS [sic]
USER_A@BUSINESS.COM is registered with service node
22(B). Once registered, session requests from remote
communication devices intended for the PCD 14 will be routed
to the corresponding service node 22, which will function to
assist in the establishment of a session with the PCD 14 using
the packet communication 10.
Spec. ¶ [0019] (emphases added). In other words, Appellant proposes an
interpretation of “associated” that would limit its meaning to “registered.”
See App. Br. 14.
Appellant additionally contends that the Examiner’s construction of
“associated” ignores the modifying term “uniquely” preceding “associated”
in claim 1, arguing that the ordinary meaning of “uniquely” requires “that
the ID is only associated with the service node and nothing else.” Reply Br.
6-7.
We are unpersuaded of error in the rejection of claim 1. Appellant’s
arguments turn on the broadest reasonable interpretation of the terms
“service node” and “uniquely associated.” As there appears to be no
substantial dispute between Appellant and the Examiner as to the broadest
reasonable interpretation of a “service node” (compare App. Br. 12 with
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Ans. 12) we need not construe that term, but accept, arguendo, that a
“service node” is different from a “service provider.” However, we agree
with the Examiner’s broad, but reasonable, construction of “uniquely
associated.” Ans. 12.
As pointed out by the Examiner (Ans. 11-12), “[t]hough
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enterprises., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). A pertinent
dictionary definition is: “associate . . . v.t. 1. to connect or bring into
relation.” THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE
126 (2d ed. unabridged 1987). The Specification uses the term “associated”
and related terms in various contexts (see, e.g., Spec ¶¶ [0002]-[0003],
[0005]-[0007]. [0016]-[0019]; [0021]-[0028]), none of which evidence an
intent to deviate from the ordinary meaning of “associated” or limit the
meaning of “associated” to “registered.” We construe the modifier
“uniquely” in the context of the claim language “uniquely associated” to
mean that the ID is associated with a particular distinct service node, and no
other service node.
Accordingly, we conclude that the broadest reasonable interpretation
of the phrase “unique IDs uniquely associated with distinct service nodes” is
that each unique ID is uniquely connected to, or brought into relation with, a
particular distinct service node and no other. As pointed out by the
Examiner (Ans. 12) this interpretation is consistent with the Specification
because it encompasses the narrower term “registered” used in the
Specification to describe the preferred embodiment. See Spec. ¶ 0019.
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However, it also encompasses Nassar’s teaching that “a unique ID is
registered to a service provider which is reached through a service node
distinctly and uniquely connected to the service provider, wherein
communicating with a service provider requires using a unique ID which
routes to the distinct service node as gateway to the service provider.” Ans.
12.
Appellant has failed to persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejection as unpatentable over Phillips and
Nassar of (1) claim 1; (2) independent claim 22, which was argued together
with claim 1; and (3) claims 2, 3, 7, 8, 10, 19-21, 23, 24, 28, 29, 31, and 40-
42, which depend, directly or indirectly, from claim 1 or 22 and were not
separately argued with particularity. The remaining claims depend, directly
or indirectly, from claim 1 or 22, and were not separately argued with
particularity. Accordingly, we sustain the rejection of (4) claims 4-6, 11-18,
25-27, and 32-39 as unpatentable over Phillips, Nassar, and Yach; and (5)
claims 9 and 30 as unpatentable over Phillips, Nassar, and Westman. Ans.
10.
DECISION
The decision of the Examiner to reject claims 1-42 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

rvb