GENBAND US LLC

Patent Trials and Appeals Board

Nov 18, 2020

14472688 - (D) (P.T.A.B. Nov. 18, 2020)

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.
14/472,688 08/29/2014 Alex Nerst 47856.126 1277
106874 7590 11/18/2020
Haynes and Boone, LLP (47856)
2323 Victory Avenue, Suite 700
Dallas, TX 75219
EXAMINER
EDWARDS, JAMES A
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEX NERST and BOAZ ZILBERMAN
____________

Appeal 2019-004058
Application 14/472,688
Technology Center 2400
____________

Before NORMAN H. BEAMER, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 77–96, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as Genband US LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to peer-to-peer
networks and, more particularly, but not exclusively, to a battery operated
device communicating over a peer-to-peer network.” Spec. 1:10–11.2 The
Specification explains that a “typical peer-to-peer network requires each
peer device to continuously present itself to other peers, and to continuously
interrogate the presence of other peers.” Id. at 15:18–19. The Specification
also explains that “[c]ontinuously performing peer operations would quickly
drain the battery of a battery operated device, such as a mobile device, a
portable cellular telephone, a cellular PDA, etc.” Id. at 15:28–29.
Exemplary Claim
Independent claim 77 exemplifies the claims at issue and reads
as follows (with formatting added for clarity):
77. A method for use in a peer-to-peer network, the method
comprising:
registering a plurality of peer devices at a registration
server; and
registering a peer server at the registration server;
facilitating communications between a first peer device
of the plurality of peer devices and a second peer device of the
plurality of peer devices by the peer server, and

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed August 29, 2014; “Final Act.” for the Final Office
Action, mailed April 11, 2018; “Appeal Br.” for the Appeal Brief, filed
November 7, 2018; “Ans.” for the Examiner’s Answer, mailed February 26,
2019; and “Reply Br.” for the Reply Brief, filed April 25, 2019.
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wherein the peer server registers the first peer device in
the peer-to-peer network on behalf of the first peer device when
the first peer device is in an off-line mode, and
wherein the peer server identifies itself to other devices
as the first peer device.
Appeal Br. 13 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103(a),3 the
Examiner relies on the following prior art:
Name Reference Date
Emerson US 2003/0008682 A1 Jan. 9, 2003
Mukherjee et al. (“Mukherjee”) US 2004/0006708 A1 Jan. 8, 2004
O’Neill US 2004/0013099 A1 Jan. 22, 2004
Pabla et al. (“Pabla”) US 2004/0162871 A1 Aug. 19, 2004
Bradley et al. (“Bradley”) US 2005/0027871 A1 Feb. 3, 2005
The Rejections on Appeal
Claims 77–79, 81–84, 86–90, and 92–96 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Pabla, Bradley, and Mukherjee.
Final Act. 4–14.
Claim 80 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pabla, Bradley, Mukherjee, and Emerson. Final Act. 14–15.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because the effective filing date for Application 14/472,688 predates the
AIA’s amendment to § 103, this decision refers to the pre-AIA version of
§ 103.
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Claims 85 and 91 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pabla, Bradley, Mukherjee, and O’Neill. Final
Act. 15–16.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner’s conclusions concerning unpatentability under § 103(a). We
adopt the Examiner’s findings and reasoning in the Final Office Action and
Answer. See Final Act. 2–16; Ans. 4–10. We add the following to address
and emphasize specific findings and arguments.
The § 103(a) Rejection of Claims 77–79, 81–84, 86–90, and 92–96
CLAIM 77: REGISTERING WHEN IN AN OFF-LINE MODE
As noted above, the § 103(a) rejection of claim 77 rests on Pabla,
Bradley, and Mukherjee. See Final Act. 4–6. Appellant argues that the
Examiner erred in rejecting claim 77 because the combination “does not
teach” the following limitation in claim 77: “wherein the peer server
registers the first peer device in the peer-to-peer network on behalf of the
first peer device when the first peer device is in an off-line mode.” Appeal
Br. 8; see Reply Br. 2.
Appellant notes that the Examiner cites Mukherjee paragraph 40 as
teaching or suggesting the disputed limitation. Appeal Br. 8; see Final
Act. 4–6. Appellant quotes the following statements from Mukherjee
paragraph 40: “In one embodiment, the subscriber may provide an offline
list of members (e.g., names) that the subscriber wishes to authorize to use
the [peer-to-peer virtual private network] P2P-VPN service. In this instance,
the member list is registered with the service provider 102 prior to any group
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communications initiating.” Appeal Br. 8; see Mukherjee ¶ 40. Appellant
then contends that “nowhere does it state that the members on the offline list
of members are registered while offline.” Appeal Br. 8 (emphasis by
Appellant). Appellant also contends that “being registered prior to group
communications initiating does not teach or suggest anything about the
online or offline state of those members” because “a member can be online
and be registered before any group communications are initiated.” Id.
Further, Appellant asserts that “the Examiner’s position on the cited
portions of Mukherjee conflate users and peer devices so that the cited
portions of Mukherjee do not address the first peer device is in an off-line
mode.” Reply Br. 2 (emphasis by Appellant). Appellant also asserts that
“Mukherjee refers to members and their names, rather than to any devices
that may be associated with the members.” Id. at 3 (emphasis by Appellant).
Appellant’s arguments do not persuade us of Examiner error because
the Examiner correctly finds that: (1) Pabla discloses a peer server
registering a first peer device in a peer-to-peer network on behalf of the first
peer device; (2) Bradley discloses a peer server acting on behalf of a first
peer device in a peer-to-peer network; and (3) Mukherjee discloses
registering a first peer device when the first peer device is in an off-line
mode. See Final Act. 2–6 (citing Pabla ¶¶ 491, 520; Bradley ¶ 118;
Mukherjee ¶¶ 21, 40); Ans. 4–8 (citing Pabla ¶¶ 491, 520; Mukherjee ¶¶ 21,
40–41).
Specifically, the Examiner finds that Mukherjee paragraphs 40 and 41
disclose offline registration and online registration, respectively. See Ans.
5–6. Paragraph 40 states, “In one embodiment, the subscriber may provide
an offline list of members (e.g., names) that the subscriber wishes to
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authorize to use the [peer-to-peer virtual private network] P2P-VPN
service.” Mukherjee ¶ 40. Paragraph 41 states, “In a second embodiment,
the list of members may be registered online.” Id. ¶ 41. And consistent with
those paragraphs, paragraph 48 states, “As discussed above, the member list
may be added prior to the session occurring (i.e., at registration),” i.e., when
offline, “or subsequently, for example, during a current session,” i.e., when
online. Id. ¶ 48. Further, the Examiner finds that Bradley discloses a
requesting peer delegating to a gateway peer “its identity and allow[ing] that
gateway peer to negotiate and make decisions on its behalf.” Final Act. 5;
see Bradley ¶ 118.
Next, we turn to Appellant’s arguments about alleged differences
between Mukherjee’s “members” and the claimed “devices.” Although
Mukherjee describes registering “members,” Mukherjee explains that a
member utilizes an end-user device, e.g., a mobile terminal, to participate
in a peer-to-peer virtual private network. Mukherjee ¶¶ 18–21, 50, 56,
code (57); see id. ¶¶ 5–6, Fig. 5. Mukherjee also explains that a network
controller uses IP addresses to establish the peer-to-peer virtual private
network. Id. ¶¶ 6, 16, 25, 28, 32–35, 42, 44–45, 47, 53–54, 63. In addition,
Mukherjee discloses that in certain circumstances the network controller
“already has an IP address” for a member’s end-user device when the
member joins a session. Id. ¶ 53. If the network controller “already has an
IP address” for a member’s end-user device when the member joins a
session, the end-user device has been registered in an off-line mode. See
Ans. 5–6. Hence, we disagree with Appellant’s assertion that Mukherjee
does not refer to “any devices that may be associated with the members.”
See Reply Br. 3; Mukherjee ¶¶ 18–21, 50, 53, 56, code (57).
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Thus, we agree with the Examiner’s determination that combining
Mukherjee’s teachings about offline registration and Bradley’s teachings
about identity delegation with Pabla’s teachings yields the disputed
limitation. See Final Act. 4–6; Ans. 4–8.
CLAIM 77: COMBINING THE TEACHINGS OF THE REFERENCES
Appellant argues that the Examiner erred in rejecting claim 77
because the Examiner “has not provided any factual basis to support [the]
reasons to combine Mukherjee with Pabla and Bradley.” Appeal Br. 9; see
Reply Br. 4. Appellant also argues that the Examiner has offered conclusory
reasoning by “merely stating that it would have been obvious to add a
feature of Murkherjee [sic] for the sake of adding the feature of Mukherjee.”
Appeal Br. 9.
We disagree that the Examiner offers conclusory reasoning regarding
a motivation to combine Mukherjee’s teachings with the teachings of the
other references. See Final Act. 6; Ans. 9. In particular, the Examiner
determines that an ordinarily skilled artisan would have been motivated to
combine Mukherjee’s teachings with the teachings of the other references so
that “audio, video, text, and data, may be communicated privately, as well as
securely between those authorized users in a particular group” via a peer-to-
peer virtual private network. Final Act. 9 (citing Mukherjee ¶ 19); see
Mukherjee ¶ 19.
Consistent with that determination, Mukherjee discloses a peer-to-
peer virtual private network (P2P-VPN) that differs from and overcomes
disadvantages with conventional services. See Mukherjee ¶¶ 5, 15, 37, 70,
74, 77. Mukherjee states that the P2P-VPN “allow[s] the owner of such
service to have private and secure communication with other persons over
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the Internet.” Id. ¶ 36; see id. ¶¶ 17, 19. Mukherjee also states that the P2P-
VPN “allow[s] any individual who has access to the Internet” from “any
location to initiate and own a P2P-VPN.” Id. ¶ 37; see id. ¶ 47. Moreover,
Mukherjee explains that the P2P-VPN “enables [secure group]
communication to go over the Internet” for “significantly lower costs” than
conventional services. Id. ¶ 70.
The “law does not require that the references be combined for the
reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364,
1371 (Fed. Cir. 2017). The motivation to combine may come “from the
prior art reference itself, from the knowledge of one of ordinary skill in the
art, or from the nature of the problem to be solved.” SIBIA Neurosciences,
Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (citations
omitted). For example, “an implicit motivation to combine” may result from
a desire to make a product or process “stronger, cheaper, cleaner, faster,
lighter, smaller, more durable, or more efficient.” DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Here, the motivation to combine comes from the reference itself, i.e.,
from Mukherjee’s disclosure that the P2P-VPN provides private and secure
group communication and improves upon conventional services. See, e.g.,
Mukherjee ¶¶ 19, 36–37; see also id. ¶¶ 5, 15, 17, 70, 74, 77; Final Act. 6;
Ans. 9.
Appellant argues that providing private and secure group
communication “says nothing regarding why” an ordinarily skilled artisan
“would have modified the combination of Pabla and Bradley” with
Mukherjee’s teachings about offline registration. Appeal Br. 9.
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In response, the Examiner explains that an ordinarily skilled artisan
would have been motivated to apply Mukherjee’s teachings about offline
registration to the other references because the skilled artisan would have
“realize[d] that adding devices when they are still offline allows them to
immediately use the services, saving time for the user.” Ans. 9. Thus, the
Examiner provides “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
Appellant asserts that the Examiner’s reasoning lacks support in
Mukherjee because “Mukherjee does not teach ‘adding devices when they
are still off-line,’ or the alleged technical benefit.” Reply Br. 4. We
disagree with that assertion because, as discussed above, Mukherjee
discloses registering devices in an off-line mode. See Ans. 5–6; Mukherjee
¶¶ 40–41, 48, 53. An ordinarily skilled artisan would have recognized the
technical benefit because a “person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007).
SUMMARY FOR CLAIM 77
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 77 for obviousness
based on Pabla, Bradley, and Mukherjee. Thus, we sustain the § 103(a)
rejection of claim 77.
INDEPENDENT CLAIMS 87 AND 96 AND
DEPENDENT CLAIMS 78, 79, 81–84, 86, 88–90, AND 92–95
Appellant does not argue patentability separately for independent
claims 87 and 96 or dependent claims 78, 79, 81–84, 86, 88–90, and 92–95.
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See Appeal Br. 7–11; Reply Br. 2–5. Thus, we sustain the § 103(a) rejection
of these claims for the same reasons as claim 77. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The § 103(a) Rejections of Claims 80, 85, and 91
Appellant does not argue patentability separately for dependent
claims 80, 85, and 91. See Appeal Br. 7–11; Reply Br. 2–5. Thus, we
sustain the § 103(a) rejections of these claims for the same reasons as
claim 77. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 77–96.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
77–79,
81–84,
86–90,
92–96
103(a) Pabla, Bradley, Mukherjee
77–79,
81–84,
86–90,
92–96

80 103(a)
Pabla, Bradley,
Mukherjee,
Emerson
80
85, 91 103(a) Pabla, Bradley, Mukherjee, O’Neill 85, 91
Overall
Outcome 77–96
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TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED