Alan Edward. Baratz et al.

Patent Trials and Appeals Board

Oct 16, 2019

13381270 - (D) (P.T.A.B. Oct. 16, 2019)

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.
13/381,270 12/28/2011 Alan Edward Baratz 648.0005 9577
93379 7590 10/16/2019
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
10/16/2019 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):
pair_avaya@firsttofile.com
sarah@setterroche.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ALAN EDWARD BARATZ, JOHN F. BUFORD,
ANTHONY FRANK BARTOLO, JAYESH GOVINDARAJAN,
ANWAR A. SIDDIQUI, and VYANKATESH BALAJI DESHPANDE

Appeal 2018-006112
Application 13/381,270
Technology Center 2400

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 13–16, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Avaya,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for using profile information
identifying a session participant to select another participant on a different
node of a peer-to-peer network. App. Br. 3. Claim 1 is illustrative:
1. A method, comprising:
receiving identification information identifying a second
session participant operating a second node on a peer-to-peer
network;
gathering profile information descriptive of the second
session participant using the identification information;
employing the profile information descriptive of the
second session participant to select a first session participant
operating a first node of a plurality of nodes on the peer-to-peer
network from among at least two potential participants
associated with an entity and to determine a communication
connection to be employed during a communication session
between the first node and the second node; and
initiating the communication session.
Independent claims 16 and 19 recite a system and computer-readable
storage medium, respectively, having limitations commensurate in scope
with claim 1. Dependent claims 2–10, 13–15, 18, and 20 each incorporate
the limitations of their respective independent claims. Claims 11, 12, and 17
have been cancelled. App. Br. 12–13 (Claims App’x).

REFERENCE
Name Reference Date
Chaturvedi et al.
(Chaturvedi)
US 8,725,895 B2 Issued May 13, 2014,
filed Feb. 15, 2010

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REJECTION
Claims 1–10, 13–16, and 18–20 are rejected under pre-AIA 35 U.S.C.
§ 102(e) as being anticipated by Chaturvedi. Regarding the limitation in
representative claim 1 of “receiving identification information identifying a
second session participant; gathering profile information descriptive of the
second session participant operating a second node on a peer-to-peer
network; gathering profile information descriptive of the second session
participant using the identification information,” the Examiner determines
that Chaturvedi discloses storing and receiving a profile information for a
user in the form of a “buddy list” that identifies other users that have
previously agreed to communicate with the user. Final Act. 2–3 (citing
Chaturvedi 3:45–62).2
The Examiner further determines that Chaturvedi discloses an access
server’s use of the buddy list and an online-status indicating session table to
select profile information for the user at endpoint 104 and to make a
connection. Id. at 3 (citing Chaturvedi 7:46–59). The Examiner determines
this to disclose the claimed employing of the profile information of the
second session participant to select a first session participant, and initiating
the communication session. Id. The Examiner further identifies
Chaturvedi’s endpoints 104 and 106 as first node and second node, and the
management layer 260 as disclosing the step of determining the
communication connection as being online. Id. at 7; Ans. 4–5.
Appellant contends that Chaturvedi does not disclose the invention of
claim 1 because Chaturvedi does not use profile information that is

2 All references to “Final Act.” refer to the Final Action of May 12, 2017.
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descriptive of the second participant. App. Br. 7. Appellant contends that
Chaturvedi instead discloses profile information that is descriptive of the
first participant; i.e., whether the first participant is online. Id. Accordingly,
Appellant contends that the Examiner has not shown that Chaturvedi
discloses the limitation of “employing the profile information descriptive of
the second session participant to select a first session participant.” Id.
Anticipation of a claim may be found “only if each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The issue presented by the
Appellant is whether the Examiner has shown that Chaturvedi expressly or
inherently describes the limitation of “employing the profile information
descriptive of the second session participant to select a first session
participant.”
Chaturvedi’s access server relies upon two pieces of information, (1)
which names are on the user’s buddy list, and (2) which of those names are
currently online. Chaturvedi 7:48–52. Appellant’s arguments are based on
the second piece of information, arguing that the online status of an endpoint
(e.g., a buddy) is information relating to the endpoint, not to the user.
However, the Examiner’s rejection is based on the first piece of
information, not the second. The Examiner determines that “gathering
profile information descriptive of the second session participant using the
identification information” is disclosed by Chaturvedi at column 3, lines 45–
62. At that section, Chaturvedi discloses “profile information” as including
the “buddy list.” The “buddy list” is disclosed as the other users that have
previously agreed to communicate with the user, whether those users are
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online or not. Id. The user will only be shown the entire list of “buddies,”
with indicia indicating which are online. Ans. 6 (citing Chaturvedi 8:33–
53). Accordingly, the profile information in the entire “buddy list” describes
information about the user in the form of the user’s prior contacts, and is not
limited to information concerning the buddies themselves. Id.
Consequently, the Examiner rejects the later-occurring limitation of
“employing the profile information descriptive of the second session
participant to select a first session participant” over Chaturvedi’s employing
of a user’s buddy list to select another buddy for communication connection.
Final Act. 3; Chaturvedi 7:46–56.
Although Appellant has focused on Chaturvedi’s notification of the
online status of the first participant as not being descriptive of the second
participant, Appellant has not persuaded us that Chaturvedi’s use of the
“buddy list” does not disclose profile information that is descriptive of the
second participant and employed to select a first session participant from
potential participants. Accordingly, we are not persuaded of error in the
Examiner’s rejection of claim 1. Since the Examiner’s rejection of claims 2,
5, 6, 8, 10, 13–16, and 18–20 rely on the same grounds, and since Appellant
has not argued those claims separately from claim 1, we are not persuaded of
error in the Examiner’s rejection of those claims.
Appellant argues that dependent claim 3 is not anticipated by
Chaturvedi, for the reasons expressed for the rejection of claim 1, and
additionally because Chaturvedi does not disclose the profile information
comprising demographic information of the second participant. The
Examiner cites to Chaturvedi’s disclosure of the profile information
comprising information (IP address, port, NAT type) about the buddies.
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Final Act. 3 (citing Chaturvedi 8:23–29); Ans. 5 (citing Chaturvedi 4). The
Examiner has not explained how that information is “demographic”
information. The Examiner has not provided further explanation except for
bare quotations of sections of Chaturvedi, none of which explicitly recites
demographic information. Furthermore, even if that information were
considered demographic information, that is information describing the first
participants (“buddies”), not the second participant. Accordingly, based on
the record, we are persuaded that the Examiner has not shown Chaturvedi to
disclose demographic information describing the second participant, and
therefore, we are persuaded of error the Examiner’s rejection of claim 3.
Appellant argues that dependent claim 4 is not anticipated by
Chaturvedi, for the reasons expressed for the rejection of claim 1, and
additionally because Chaturvedi does not disclose the profile information
comprising previous interaction information of the second participant.
However, since the “buddy list” of Chaturvedi is based upon actions of prior
agreement to communicate with the second participant, we are not persuaded
of error in the Examiner’s rejection of claim 4.
Appellant argues that dependent claims 7 and 9 are not anticipated by
Chaturvedi, for the reasons expressed for the rejection of claim 1, and
additionally because Chaturvedi does not disclose determining the identity
of a webpage (claim 7) or determining whether the second session
participant is logged into a networking website (claim 9). App. Br. 8–9.
Appellant argues that Chaturvedi, while disclosing “online” connections, is
concerned with peer-to-peer operations, and does not address a webpage or
website. Id. The Examiner has not provided further explanation except for
bare quotations of sections of Chaturvedi, none of which explicitly recites a
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webpage or a website. Final Act. 4 (citing Chaturvedi 10:41–54); Ans. 6–7
(citing Chaturvedi 10:41–54) Accordingly, based on the record, we are
persuaded that the Examiner has not shown Chaturvedi to disclose
demographic information describing the second participant, and therefore,
we are persuaded of error the Examiner’s rejection of claims 7 and 9.

DECISION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 1, 2, 4–6, 8, 10, 13–16, and 18–20, as being anticipated under
35 U.S.C. § 102(e), and we reverse the Examiner’s rejection of claims 3, 7,
and 9 under that same statutory section. Because less than all claims have
been affirmed, we affirm-in-part.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–10, 13–16,
18–20
102(e) Anticipation 1, 2, 4–6, 8, 10,
13–16, 18–20
3, 7, 9

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART