Ex Parte Witzel et al

Patent Trial and Appeal Board

Jul 29, 2016

12281459 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/281,459 11/17/2008
27045 7590
ERICSSON INC.
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
08/02/2016
FIRST NAMED INVENTOR
Andreas Witzel
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.
P21756-US1 2260
EXAMINER
WEIDNER, TIMOTHY J
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS WITZEL
and DIRK KAMPMANN
Appeal2014-010005
Application 12/281,459
Technology Center 2400
Before JENNIFER L. McKEOWN, JEFFREY A. STEPHENS, and
JAMES W. DEJMEK, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-19 and 21. Claim 20 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "a method for and to respective
devices allowing for wideband codec negotiation." Spec., p. 1, 11. 6-7.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for providing a supported codec list of
a Call Control Server when setting up a call, the method
comprising the steps of:
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Application 12/281,459
receiving information regarding whether a terminal
supports a wideband codec,
retrieving configuration information regarding
whether a Radio Access Node supports the wideband
codec,
retrieving information regarding whether a media
gateway supports the wideband codec,
analyzing the information regarding whether the
terminal supports the wideband codec, the configuration
information regarding whether the Radio Access Node
supports the wideband codec, and the information
regarding whether the media gateway supports the
wideband codec, and in response to the analysis, providing
the supported codec list including the wideband codec if
supported,
wherein the wideband codec is selected for the call
only ifthe wideband codec can be used end-to-end without
any narrowband link in a call path of the call.
THE REJECTIONS
The Examiner rejected claims 1, 2, 4--11, 13-19, and 21 under
35 U.S.C. § 103(a) as unpatentable over iviuniere (US 2002/0142749 Al;
pub. Oct. 3, 2002) and Gesswein (US 2005/0091392 Al; filed Dec. 12,
2002). Final Act. 3-34. 1
The Examiner rejected claims 3 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Muniere, Gesswein, and Witzel (WO 2005/096585 Al;
Mar. 4, 2004). Final Act. 35-36.
1 Throughout this opinion, we also refer to ( 1) the Final Action, mailed
Dec. 13, 2013 ("Final Act."); (2) the Appeal Brief filed May 13, 2014
("App. Br."); (3) the Examiner's Answer mailed July 31, 2014 ("Ans."); and
(4) the Reply Brief filed Sept. 14, 2014 ("Reply Br.").
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ANALYSIS
THE OBVIOUSNESS REJECTION BASED ON MUNIERE AND GESSWEIN
Claims 1, 2, 4-11, 13-19, and 21
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claims 1, 2, 4--11, 13-19, and 21 as unpatentable over
Muniere and Gesswein.
Appellants contend Muniere fails to teach "wherein [the] wideband
codec is selected for the call only if the wideband codec can be used end-to-
end without any narrowband link in the call path." App. Br. 10. According
to Appellants, Muniere does not teach or suggest detecting whether the
wideband codec can be used end-to-end without any narrowband link in a
call path of the call and, therefore, cannot teach the disputed limitation.
App. Br. 11.
Appellants assert, contrary to the Examiner's findings, Muniere' s
reference to "a 'list or set of codecs' implies more than one codec and,
correspondingly, more than one link will be used in the call path."
App. Br. 12. Appellants also maintain "the Examiner still has not
adequately explained why it would have been obvious to modify Muniere 's
methods to include selection of the wideband codec 'only if' the wideband
codec can be used end-to-end without any narrowband link in a call path of
the call, as claimed." Reply Br. 2.
We disagree. As the Examiner finds, paragraphs 27-28 of Muniere
disclose:
The negotiation includes negotiation of codecs, for the purpose
of determining, for the session concerned, a list or set of codecs
which can be supported in common by the two parties to a call
and authorized for all the intermediate network nodes.
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Application 12/281,459
The codecs determine, both in the mobile stations and in the radio
access network (in particular the base stations) and in the core
network, how to perform the necessary source coding and
channel coding ... there are different types of codecs for speech
coding . . . wideband AMR codec offers a better quality of
service.
Ans. 3. Notably, Muniere teaches each codec of the list of codecs must be
supported in common by each party as well as all intermediate network
nodes. Muniere i-f 27. In other words, if any link could not support the
wideband codec, the wideband codec would not be included on the
commonly supported list of codecs and therefore would not be able to be
selected for the codecs for the session.
The Examiner points out Muniere' s "list or set of codecs" does not
imply using multiple codecs across the call path for a particular media
stream, but rather Muniere' s list or set of codecs is for different streams of a
multimedia session. Specifically, the Examiner, relying on paragraphs 28
and 34 of Muniere, finds Muniere "implies [] that different codecs are
negotiated for different media streams forming a multimedia session (e.g. a
codec for speech and a codec for video), not that each of multiple codecs are
selected and correspondingly that more than one link will be used in the call
path." Ans. 4. We are not persuaded of error in these findings.
We also agree with the Examiner that Muniere at least suggests the
recited "only if' limitation. See, e.g., Final Act. 5; Ans. 4. As discussed
above, a wideband codec would only be included on the list of codecs if it
were supported for each party and all intermediate nodes. Although
Muniere does not expressly state that the wideband codec is selected,
Muniere recognizes that the wideband codec provides "a better quality of
service" and thus would be selected at least in some instances when
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Application 12/281,459
available on the list of commonly supported codecs. As such, we are not
persuaded the Examiner erred in finding Muniere teaches or suggests
"wherein the wideband codec is selected for the call only if the wideband
codec can be used end-to-end without any narrowband link in a call path of
the call."
Appellants present similar arguments with respect to claims 11 and
21. In particular, Appellants contend Muniere fails to teach or suggest
"wherein, the wideband codec can be used end-to-end without any
narrowband link in the call path if both supported codec lists comprise the
wideband codec as a direct codec," as recited in claim 11, and "wherein the
received supported codec list and the provided supported codec list each
comprise a common wideband codec and the common wideband codec is
selected for the call," as recited in claim 21. See App. Br. 12-14.
We note the Specification distinguishes direct codecs from indirect
codecs as follows:
... so-called "direct codecs", which are codecs that are supported by
the terminal, the radio access network and the Media Gateway, where
the radio access network is connected to, and the other part so-called
"transcoding codecs" or "indirect codecs", which are supported by the
Media Gateway, but not by the terminal or not by the RAN, and
therefore afford transcoding in the Media Gateway.
Spec., p. 2, 11. 11-17. As such, a wideband direct codec would mean that a
wideband codec is supported across the call path.
Muniere is silent to any discussion between direct and indirect
wideband codec, but, again, because Muniere discloses the wideband codec
is only included on the list of codecs if it is commonly supported by all links
(Muniere i-f 27), we understand Muniere discloses only including direct
wideband codec on the list. Final Act. 14--15. Also, as discussed above,
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while Muniere does not explicitly state that the wideband codec is selected,
Muniere describes selecting the codec based the list of codecs that can be
supported in common. Muniere i-f 29; Ans. 4--5. Further, Muniere at least
suggests that a wideband codec would be selected in at least some
circumstances, such as when an improved quality of service is desired.
Muniere i-f 28; Ans. 4--5. Thus, we are not persuaded the Examiner erred in
finding Muniere teaches or suggests the limitation of claim 11.
Appellants' arguments with respect to claim 21 are similarly
unpersuasive. See App. Br. 13-14. The Specification refers to a "common"
wideband codec as a listing of direct wideband codec by each of the parties
supported codec lists. See Spec., p. 14, 11. 15-20. Muniere does not include
a discussion of a "common" wideband codec, but as discussed above
Muniere describes that the selected codec must be one that is "supported in
common by the two parties (calling party and called party)." Muni ere i-f 29;
see also Final Act. 34. As such, we are not persuaded that the Examiner
erred in finding that iviuniere teaches or suggests the limitation of claim 21.
Accordingly, for the reasons discussed above and by the Examiner,
claims 1, 2, 4--11, 13-19, and 21 are unpatentable over the combination of
Muni ere and Gesswein. 2
2 While we determine Muniere teaches or suggests the recited "only if'
limitation, this is a conditional limitation within a method claim. As such,
upon further prosecution, the Examiner should consider whether the claimed
invention may be performed even when the precondition is not met. See,
e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010)
(unpublished) (affirming a district court's interpretation of a method claim
as including a step that need not be practiced if the condition for practicing
the step is not met); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243
Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that
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Application 12/281,459
ANALYSIS
THE OBVIOUSNESS REJECTION BASED ON MUNIERE, GESSWEIN, AND WITZEL
Claims 3 and 12
Appellants do not argue patentability for claims 3 and 12 separately
and, instead, rely on the arguments presented for claim 1. See App. Br. 12.
For the reasons discussed above, we find these arguments unpersuasive.
Accordingly, claims 3 and 12 are unpatentable over the combination of
Muniere, Gesswein, and Witzel.
CONCLUSION
The Examiner did not err in rejecting claims 1-19 and 21under§103.
DECISION
We affirm the Examiner's decision to reject claims 1-19 and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.").
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