Ex Parte 7937081 et alDownload PDFPatent Trial and Appeal BoardApr 25, 201495001899 (P.T.A.B. Apr. 25, 2014) Copy Citation 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. 95/001,899 02/17/2012 7937081 088245-2055 7874 23524 7590 04/25/2014 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER AHMED, SALMAN ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/25/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________ XILINX, INC., Third Party Requester, Appellant, and Cross-Respondent v. INTELLECTUAL VENTURES MANAGEMENT, OF WHICH INTELLECTUAL VENTURES I LLC IS AN AFFILATE, Patent Owner, Cross-Appellant, and Respondent ______________ Appeal 2014-001131 Reexamination Control No. 95/001,899 United States Patent 7,937,081 B2 1 Technology Center 3900 ______________ Before JOHN C. MARTIN, JOHN A. JEFFERY, and JENNIFER L. MCKEOWN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Patent 7,937,081 B2 (hereinafter “’081 patent”) was granted on May 3, 2011, based on Application 12/720,862, filed on March 10, 2010, as a divisional of Application 09/802,861, filed on March 12, 2001 (now patent (Continued on next page.) Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 2 Requester has appealed the Examiner’s decision to not make Requester’s proposed rejections of original claims 7-9, 13, 20-22, 26, 27, 30- 32, 37, and 38 of the ’081 patent. 2 Patent Owner has cross-appealed the Examiner’s rejections of claims 1, 5, 14, and 18. 3 We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315. We AFFIRM the Examiner’s rejections of claims 1, 5, 14, and 18. The Examiner’s decision not to make the proposed rejections is affirmed with respect to claims 30 and 31 and reversed with respect to of claims 7-9, 13, 20-22, 26, 27, 32, 37, and 38. I. STATEMENT OF THE CASE A. The Related Reexamination Proceeding Patent US 7,769,374 B2, which is the parent of the ’081 patent, is the subject of pending Reexamination Proceeding 95/002,004 (hereinafter “’004 reexamination proceeding”). Req. Appeal Br. 3(II)(B). 4 US 7,769,374 B2, issued August 3, 2010). 2 Third Party Requester’s Appeal Brief in Inter Partes Reexamination Pursuant to 37 C.F.R. § 41.67 (hereinafter “Req. Appeal Br.”), filed June 18, 2013, at 5(VI). As explained in greater detail below, these proposed rejections were entered in the April 20, 2012, Non-final Office action (hereinafter “Non-final Action”) and later withdrawn in the September 12, 2012, Action Closing Prosecution (“ACP”). 3 Appellant’s Brief in Inter Partes Reexamination (hereinafter “P.O. Appeal Br.), filed June 21, 2013, at 6-7. 4 The ’004 reexamination proceeding and this reexamination proceeding are (Continued on next page.) Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 3 B. This Inter Partes Reexamination Proceeding This inter partes reexamination proceeding was initiated by a “Request for Inter Partes Reexamination,” filed on February 17, 2012 (hereinafter “Request”). The Request includes proposed rejections (#1 to #6) of all the original patent claims (namely, claims 1-38) based on “Foti I” (also cited as “Foti”) 5 considered alone or in view of other references, including Gallant, 6 Gustafson, 7 and Foti III. 8 Request 14. The Request was accompanied by a claim chart (Ex. AA) (hereinafter “Request Ex. AA”) explaining the proposed rejections. The Examiner granted the Request with respect to claims 1, 5, 7-9, 13, 14, 18, 20-22, 26, 27, 30-32, 37, and 38. Reexamination Order 9 at 2. Patent Owner argues that “any rejections with respect to Claims 30 and 31 are assigned to the same Examiner. 5 Foti, et al., US 6,654,606 B1, issued November 25, 2003, based on Application 09/676,003, filed September 29, 2000. Req. Appeal Br. Ex. 2. Foti is incorrectly identified as “Foti et al. (US PAT 6243667)” throughout the Non-final Action (e.g., at 3 para. 5), the ACP (e.g., at 57 para. 7), and the Right of Appeal Notice (“RAN”), mailed March 23, 2013 (e.g. at 8 para. 7). 6 Gallant, et al., US 7,860,114 B1, which issued on December 28, 2010. Req. Appeal Br. Ex. 9. 7 Gustafson, et al., US 7,116,646 B1, which issued on October 3, 2006. Req. Appeal Br. Ex. 7. 8 Foti, US 6,839,323 B1, which issued on January 4, 2005. Req. Appeal Br. Ex. 5. 9 Order Granting/Denying Request for Inter Partes Reexamination, mailed on April 20, 2012. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 4 improper in view of the dependence of Claims 30 and 31 from Claim 29 (which is not subject to the present reexamination).” P.O. Appeal Br. 24 (Ground II, Group 2). Requester has not addressed the merits of this argument. It does not appear that the Examiner’s identification of claim 29 as a claim not under reexamination (Reexamination Order 18) is a typographical error. Claim 29 is similar to claim 3, also identified as a claim not under reexamination. Id. Claims 3 and 29 read as follows: 3. The method of claim 1, further comprising receiving an identity of the subscriber at the I-CSCF from the UMS. 29. The system of claim 27, wherein the I-CSCF is further configured to receive an identity of the subscriber from the UMS. ’081 patent cols. 6, 8. For the above reasons, we sustain the Examiner’s decision to withdraw the rejection of claims 30 and 31. In the Non-final Action, the Examiner rejected the claims under 35 U.S.C. § 103(a) as follows: (a) Claims 1 and 14 based on Foti. Non-final Action 3 para. 5; Request 14 (Proposed Rejection #1). (b) Claims 5 and 18 based on Foti in view of Gallant. Non-final Action 63 para. 8; Request 14 (Proposed Rejection #3). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 5 (c) Claims 7, 8, 13, 20, 21, 26, 27, 30-32, 37, and 38 based on Foti in view of Gallant and Gustafson. Non-final Action 20 para. 6; Request 14 (Proposed Rejection #4). 10 (d) Claims 9 and 22 based on Foti in view of Gallant, Gustafson, and Foti III. Non-final Action 61 para. 7; Request 14 (Proposed Rejection #5). One of the issues before us is whether Foti has been removed as a reference pursuant to 37 C.F.R. § 1.131. Patent Owner’s response 11 to the Non-final Action was accompanied by a 37 C.F.R. § 1.131 declaration by Loria B. Yeadon under 37 C.F.R. § 1.131 12 and a declaration by Dr. Eric Burger under 37 C.F.R. § 1.132. 13 Ms. Yeadon is not one of the inventors named in the ’081 patent. Instead, she is “an Authorized Person for Intellectual Ventures I LLC, the current Assignee and Owner of [the ’081 patent].” Yeadon Decl. para. 1. On July 19, 2012, Requester filed Comments by Third Party Requester Pursuant to 37 CFR 1.947 (hereinafter “July 2012 Comments”), 10 The Request instead groups claim 31 with claims 9 and 22 (Proposed Rejection #5). 11 Patent Owner Response to Office Action In Inter Partes Reexamination, filed on June 20, 2012 (hereinafter “June 2012 Response”). 12 Declaration Under 37 C.F.R. 1.131 (hereinafter “Yeadon Declaration”), including Exhibits A-Y. P.O. Appeal Br. Ex. 1. 13 Declaration Under 37 C.F.R. 1.132 (“Burger Declaration”), para. 10. Copy submitted with Respondent’s Brief In Inter Partes Reexamination, filed July 18, 2013 (“P.O. Resp’t Br.”). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 6 which were accompanied by a declaration by Steven Landauer under 37 C.F.R. § 1.132. 14 In the ACP, the Examiner: (i) expressly withdrew (at page 32) the rejection of claims 7, 8, 13, 20, 21, 26, 27, 30-32, 37, and 38 (based on Foti in view of Gallant and Gustafson), (ii) implicitly withdrew the rejection of claims 9 and 22 (based on Foti in view of Gallant, Gustafson, and Foti III), and (iii) maintained the following rejections: 15 (a) Claims 1 and 14 under 35 U.S.C. § 103(a) for obviousness over Foti. ACP 57 para. 7 (repeated at RAN 58 para. 7). (b) Claims 5 and 18 under 35 U.S.C. § 103(a) for obviousness over Foti in view of Gallant. ACP 74 para. 8 (repeated at RAN 76 para. 8). The “Response to Arguments” section of the ACP addresses (at pages 3-44) Patent Owner’s and Requester’s arguments regarding the teachings of the references and explains (at pages 44-56) that the Yeadon Declaration establishes conception prior to Foti’s September 29, 2000, effective date as a reference but fails to establish the requisite diligence. ACP 44. 14 Declaration of Steven W. Landauer (hereinafter “Landauer Declaration”). Req. Appeal Br. Ex. 12. 15 The rejected claims are identified in the ACP as claims 1, 5, 14, and 18. ACP Form PTOL-2065, Part II, l. 5. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 7 Patent Owner filed no comments (as authorized by 37 C.F.R. § 1.951(a)) in response to the ACP, and Requester therefore did not file any responsive comments under 37 C.F.R. § 1.951(b). On October 11 and 19, 2012, Patent Owner filed two Information Disclosure Statements (IDSs) listing and accompanied by copies of a 37 C.F.R. § 1.131 declaration by each of the following inventors: Son Phan- Anh, Auvo Hartikainen, Markku Verkama, Heikki Juhani Einola, and Stefano Faccin (hereinafter “Phan-Anh Declaration,” “Hartikainen Declaration,” etc.; collectively cited herein as “the inventors’ § 1.131 declarations”). P.O. Appeal Br. Exs. 3-7. 16 The captions of the inventors’ § 1.131 declarations indicate that they were filed in the ’004 reexamination proceeding (involving parent patent US 7,769,374 B2). 17 In the RAN, the Examiner explained that the “Response to Arguments” sections of the RAN and ACP are identical. See RAN 3 (“Since Patent Owner has not filed any response to the Action Closing Prosecution mailed 9/12/2012, Examiner has reproduced the ‘Response to Arguments’ 16 The record does not include a § 1.131 declaration by inventor Balint Benko. 17 These inventors’ § 1.131 declarations and a different declaration by Lori Yeadon (6 pages long) were filed in the ’004 reexamination proceeding on February 12 and 13, 2013, prior to the June 5, 2013, Action Closing Prosecution in that proceeding. In that paper, the Examiner (at page 39, sec. III) likewise found the evidence sufficient to establish conception but not diligence. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 8 section below from the said mailed ‘Action Closing Prosecution.’”) (emphasis omitted). As a result, the RAN’s discussion (at pages 45-57) of the evidence filed under 37 C.F.R. § 1.131 addresses the Yeadon Declaration but not the inventors’ § 1.131 declarations, which were filed subsequent to issuance of the ACP. Requester’s notice of appeal, 18 filed on April 19, 2013, was followed on April 24, 2013, by Patent Owner’s Notice of Cross-Appeal. The Examiner’s Answer, mailed August 20, 2013, incorporates the RAN by reference without adding any further comments or analysis. Rebuttal briefs were filed on September 19, 2013. 19 C. The Invention Described and Claimed in the ‘081 Patent The ’081 patent describes recovery techniques for use in mobile networks of the type described in a Technical Report entitled “3G TR 23.821 V1.0.1 (2000-07)” (hereinafter “Technical Report” or “TR”) (Req. Appeal Br. Ex. 3), which discloses the specifications of a 3G All-IP mobile network. ’081 patent 1:13-27. 20 18 Third Party Requester’s Notice of Appeal In Inter Partes Reexamination. 19 Patent Owner’s Rebuttal Brief in Inter Partes Reexamination (“P.O. Reb. Br.”); and Third Party Requester’s Rebuttal Brief in Inter Partes Reexamination Pursuant to 37 C.F.R. § 41.71 (“Req. Reb. Br.”). 20 Published July 2000 by the 3rd Generation Partnership Project (3GPP) and available on the Internet at http://www.3gpp.org. ’081 patent 1:23-27. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 9 This 3G All-IP mobile network employs a Call State Control Function (CSCF) consisting of two components: a Serving CSCF and an Interrogating CSCF (TR 13), respectively abbreviated “S-CSCF” and “I-CSCF” in the ’081 patent. 21 The S-CSCF is used for mobile originated communications and also to support mobile terminated communications. TR 13. The I- CSCF is used for mobile terminated communications and to determine how to route mobile terminated calls. Id. The I-CSCF interrogates the HSS (Home Subscriber Server), which is the master database for a given user, in order to obtain the information to enable the call to be directed to the S- CSCF. Id. at 13-14. The ‘081 patent explains that “[m]obile IPv6 [Internet Protocol Version 6 22 ] allows a subscriber to move from one link to another without changing its IP address” and that a subscriber is always addressable by its “home address,” which is “an IP address assigned to it within its home subnet prefix on its home link.” Id. at 3:4-7. When a subscriber is attached to a foreign link away from home (i.e., roaming), the subscriber is addressable by one or more “care-of” addresses in addition to the home address. Id. at 3:23-25. That is, when away from home, the subscriber registers one of its care-of addresses with a router on its home link and requests this router to function as the subscriber’s “home agent.” Id. at 3:42- 44. 21 ’081 patent 1:49, 67. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 10 The S-CSCF that the subscriber is currently registered to and the TA (i.e., care-of address) of the roaming subscriber, which the subscriber provides to the network during Application Level (AL) registration, must be known to and maintained by the network. Id. at 2:56-60. Keeping (i.e., protecting) the address of the S-CSCF ensures that a call to a subscriber can be routed to the destination node, i.e., the S-CSCF. Id. at 3:59-61. Keeping (i.e., protecting) the current TA of the subscriber ensures that a call intended for the subscriber that is received by the S-CSCF can finally reach the subscriber. Id. at 3:61-63. As explained below, in normal operation of the 3G All-IP mobile network described in the Technical Report, the address of the current S- CSCF is stored in the HSS, and the subscriber’s transport address TA (i.e., care-of address) is stored in the S-CSCF. Figure 3 of the ’081 patent is reproduced below. 22 ’081 patent 4:23-24. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 11 Figure 3 is a block diagram illustrating the failure to reach a called party due to the loss of TA information in a 3G All-IP mobile network. Id. at 2:29-30. The subscriber’s TA (i.e., care-of address), which was stored in the S-CSCF during normal operation (id. at 4:35-36), was lost when the S-CSCF crashed. In response to a new call request, the I-CSCF in step 1 obtains the location (i.e., address) of the S-CSCF from the HSS and in step 2 the I-CSCF sends a setup message to the S-CSCF. Id. at 4:10-11. However, because the S- CSCF no longer stores the subscriber’s TA, the called party is not reachable (step 3). Id. at 4:11-13. Thus, the “information” (i.e., address) of the S- CSCF, which is stored in the HSS, is not sufficient to allow completion of the call. Id. at 4:6-10. The ’081 patent describes three different options for protecting the TA of a subscriber. The claims at issue in this reexamination proceeding are directed to the last of these three options, which are described as follows: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 12 [O]ne option in which the TA is forwarded to the HSS and another option in which there is a security backup of the TA within the CSCF. The TA of the subscriber should be forwarded to the HSS at registration and downloaded from the HSS to the S-CSCF during recovery. Still another option is to have a permanent IPv6 (Internet Protocol Version 6) address allocated to the subscriber and to have the subscriber update its current Care-of Address (part of the TA) to the Home Agent upon obtaining the current TA. Id. at 4:17-26 (emphasis added). For background purposes, we will address the first and second options. The first option, which is to forward the TA to the HSS, is illustrated by Figures 4A and 4B. 23 We begin with Figure 4B, reproduced below. 23 In the “Brief Description of the Drawings” at column 2, lines 31-35, (Continued on next page.) Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 13 Figure 4B illustrates a registration process in which the registering subscriber sends (at step 1) an AL (Application Level) registration request including the subscriber’s TA to the S-CSCF. Id. at 2:31-32; 4:45-47. In step 2 (in accordance with the first option), an AL Location Update that includes the TA and the S-CSCF address is forwarded from the S-CSCF to the HSS. Id. at 4:47-48. Thus, in step 3 the HSS stores the updated TA and S-CSCF address in a non-volatile memory. Id. at 4:48-50. The updated copy of the TA stored in the HSS is referred to as a “safe copy.” Id. at 4:30. Figure 4A is reproduced below. Figure 4A illustrates an example of relying on the TA information stored in the HSS (per Figure 4B) in order to reach a called party after the TA stored “FIG. 4A” should read “FIG. 4B,” and “FIG. 4B” should read “FIG. 4A.” Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 14 in the S-CSCF has been lost due to a crash. Id. at 2:33-35; 4:30-44. An incoming call from an REP (Remote End-Point) is received by the S-CSCF in step 1. Id. at 4:36-38. In step 2, the S-CSCF looks (in the S-CSCF) for the subscriber’s TA (i.e., care-of address) so as to route the call but is unable to find it. Id. at 4:38-39. In step 3, the S-CSCF initiates restoration of the subscriber’s TA (and possibly other data) from the HSS to the S-CSCF. Id. at 4:39-41. In step 4, the restored TA permits the call to be routed from the S-CSCF to the called subscriber. Id. at 4:43-44. The second option mentioned above, which is not illustrated by a figure, is to provide the S-CSCF with a hard disk or other non-volatile memory for backing up the subscriber’s TA (i.e., care-of address). Id. at 4:56-60. Figure 5, reproduced below, illustrates the third option (id. at 5:1-24), which is the subject of the claims before us. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 15 Figure 5 illustrates the signal flow that occurs in the situation where (as indicated at 1 in the dashed-line box) the S-CSCF has crashed and restarted without retaining any memory of (i) the mobile stations (MSs) that were previously registered with the S-CSCF or (ii) the care-of addresses of these mobile stations. Id. at 5:18-24. Prior to the signal flow depicted in Figure 5, the UMS (User Mobility Server 24 ), during registration of a mobile station, has stored the address of the S-CSCF and the home address of the mobile station. Id. at 5:29-33, 44-45. Figure 5 shows how to use the called 24 ’081 patent 2:1. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 16 subscriber’s home agent, which stores the subscriber’s current care-of address, to complete a call following a crash of the S-CSCF. Before addressing the signal flow depicted in Figure 5, we note that the ’081 patent does not define the term “User Mobility Server,” which also appears in the independent claims. Nor is a definition provided by Patent Owner’s briefs. The Request contends that “[t]he UMS in the [’]081 patent is just part of the HSS [Home Subscriber Server] as taught by the TR.” Request Ex. AA 4-5, limitation 1.2 (citing Figure 5.2 of Technical Report and Figure 7 of Basu 25 ). Figure 5.2 of the Technical Report is annotated as follows in the Request: 25 Kalyan Basu & Hee Lee, Challenge of Universal Mobility & Wireless Internet, IEEE Wireless Communication and Networking Conf. (Sept. 2000). Req. Appeal Br. Ex. 10. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 17 Request Ex. AA 4. Patent Owner does not deny that the claim language “User Mobility Server” reads on an HSS. 26 Turning now to the signal flow depicted in Figure 5, in response to receiving an incoming call (at step 2), the I-CSCF queries (at 3) the UMS based on the alias dialed by the calling party (i.e., queries the UMS that corresponds to the called mobile station). Id. at 5:25-28. 27 From this point on, either of two different signaling scenarios is possible, depending on whether or not the S-CSCF information (i.e., address) stored in the UMS is valid. Id. at 5:33-36, 61-62. 28 If the S-CSCF address stored therein is valid, the UMS returns (at 4) the S-CSCF address and the Subscriber Identity to the I-CSCF, which then 26 Requester’s interpretation of “User Mobility Server” is consistent with Patent Owner’s evidence under 37 C.F.R. § 1.131. In an email relied on to show diligence, Nokia Patent Engineer Norbert Szalai explains: 5) HSS performs a number of functions, one of them being the UMS (User Mobility Server) function for Mobile IP. In order to make the text more uniform I propose to replace UMS by HSS. The inventor of NC17166, Stefano Faccin agreed on this. Yeadon Decl. Ex. L, 5th email (in time) “Sent: 1/18/01 7:15 PM,” para. 5. 27 The term “alias” refers to the called mobile subscriber’s telephone number. See claim 2 (“2. The method of claim 1, wherein said sending a route request comprises querying the UMS based on an alias of the subscriber which was dialed by a party that sent the call.”). 28 The Request in discussing claim 5 interprets “valid” as “operative.” See Request Ex. AA 14 (“[C]laim 5 limits the routing to the S-CSCF to occur only if the S-CSCF is operative (and thus ‘valid’ as denoted in claim 5”). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 18 forwards (at 5) the call setup message to the S-CSCF. Id. at 5:35-38. The S- CSCF, in response, “queries [at] 6 the UMS based on the Subscriber Identity optionally indicating that a restart took place in order to trigger a [service] profile download.” Id. at 5:39-43. The UMS responds by returning (at 7) the home address of the mobile station to the S-CSCF, which uses the home address to forward (at 8) the signaling (i.e., call setup packets) to the home agent. Id. at 5:44-47. 29 The home agent receives the packets (at 9) and forwards them (at 10) to the mobile station using its care-of address (known to the home agent). Id. at 5:48-52. The mobile station responds to receipt of the first packet by sending (at 11) a message to the S-CSCF requesting it to update its stored address information to include the current care-of address (the usual procedure in Mobile IP). Id. at 5:53-57. Following this update, the S-CSCF sends (at 12) the call control signaling to the mobile station at this care-of address (id. at 5:57-58), i.e., the S-CSCF no longer sends signaling packets to the home agent. A different sequence of steps occurs if it is determined (at 3) that the S-CSCF address stored in the UMS is not valid. In such a case, the UMS responds to a route request (at 3) by returning (at 4) the home address of the called mobile subscriber to the I-CSCF (id. at 5:61-62) rather than sending (at 7) the home address to the S-CSCF. Using the home address, the I-CSCF forwards the signaling packets to the home agent, which forwards the 29 As noted, above, the home agent may be a router. ’081 patent 3:42-44. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 19 packets to the called mobile subscriber at the care-of address (known to the home agent). Id. at 5:64-67. These steps that are performed when the stored S-CSCF address is not valid are the subject of claim 6, which is not under reexamination in this proceeding. 30 D. The Claims on Appeal The claims that are the subject of Patent Owner’s appeal include independent claims 1 and 14, of which claim 1 reads as follows: 1. (Original Patent Claim) A method comprising: receiving a call for a subscriber at an Interrogating-Call State Control Function (I-CSCF); sending a route request from the I-CSCF to a User Mobility Server (UMS); receiving an address of a Server-Call State Control Function (S-CSCF) at the I-CSCF from the UMS; and sending a call setup request from the I-CSCF to the S- CSCF. 30 Claim 6 reads as follows: 6. The method of claim 5, further comprising, in response to the information about the S-CSCF stored in the UMS being invalid, receiving a home address of the subscriber at the I- CSCF from the UMS and sending the home address to a home agent corresponding to the home address of the subscriber. ’081 patent col. 6 (emphasis added). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 20 Claims App. (P.O. Appeal Br. 26). The claims that are the subject of Requester’s appeal include independent claims 7, 20, and 27, of which claim 7 reads as follows: 7. (Original Patent Claim) A method comprising: receiving a call setup request for a subscriber at a Serving-Call State Control Function (S-CSCF); sending a route request from the S-CSCF to a User Mobility Server (UMS); receiving a home address of the subscriber at the S-CSCF from the UMS; and sending the call setup request from the S-CSCF to a home agent at the home address of the subscriber. Id. Patent Owner reads claim 1 on steps 2-5 of Figure 5 and reads claim 7 on steps 5-8 of that figure. P.O. Appeal Br. 3. C. The Entered Rejections That Are the Subject of Patent Owner’s Appeal The rejections appealed by Patent Owner are: 1. Claims 1 and 14 under 35 U.S.C. § 103(a) for obviousness over Foti. RAN 58 para. 7. 2. Claims 5 and 18 under 35 U.S.C. § 103(a) for obviousness over Foti in view of Gallant. Id. at 76 para. 8. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 21 Patent Owner treats the rejection of claims 5 and 18 as standing or falling with the rejection of claims 1 and 14. P.O. Appeal Br. 25 (Ground IV). Patent Owner’s sole argument against these rejections is that Foti has been removed as a reference by the evidence submitted under 37 C.F.R. § 1.131. Id. at 7 (Ground I). D. The Proposed Rejections That Are the Subject of Requester’s Appeal The proposed rejections that are the subject of Requester’s appeal are: 1. Claims 7, 8, 13, 20, 21, 26, 27, 30, 32, 37, and 38 under 35 U.S.C. § 103(a) for obviousness over Foti in view of Gallant and Gustafson. Req. Appeal Br. 5, sec. VI (1). 2. Claims 9, 22, and 31 under 35 U.S.C. § 103(a) for obviousness over Foti in view of Gallant, Gustafson, and Foti III. Id. Requester treats the proposed rejections of the above claims as standing or falling with the rejection of claim 7. Req. Appeal Br. 9-10. Regarding the proposed rejections, Patent Owner, in addition to denying that Foti is available as a reference (P.O. Appeal Br. 7, Grounds II, III), denies that the claimed subject matter would have been obvious from the subject matter relied on in the references. P.O. Resp’t Br. 3-11. II. WHETHER FOTI HAS BEEN ANTEDATED PURSUANT TO 37 C.F.R. § 1.131 Patent Owner contends that the evidence establishes (i) conception of Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 22 the claimed invention prior to the September 29, 2000, effective date of Foti coupled with (ii) diligence (toward a constructive reduction to practice) from prior to September 29, 2000, to the March 12, 2001, filing date of Application 09/802,861 (hereinafter “parent application”), which issued as parent Patent 7,769,374. P.O. Appeal Br. 8-9. 31 “The issue of conception is a question of law based on underlying factual findings.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1356 (Fed. Cir. 2010). “The question of reasonable diligence is one of fact.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). A. Conception Requester does not challenge the Examiner’s conclusion that the Yeadon Declaration is sufficient to establish conception of the claimed invention prior to Foti’s September 29, 2000, effective date. ACP 44. The Examiner based this finding on pages 37-44 of Patent Owner’s June 2012 Response. Id. These pages comprise a chart reading the language of the claims on the following two documents, which have redacted dates that the 31 37 C.F.R. § 1.131 (2102) reads in relevant part: (b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to (Continued on next page.) Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 23 Yeadon Declaration asserts (at paragraphs 5 and 11) are prior to September 29, 2000: 1. A Nokia Invention Report entitled “Mobile Terminated Call Handling for CSCF [C]rashes,” which names Stefano Faccin as the inventor. Yeadon Decl. Ex. B; Faccin Decl. Ex. A. This Invention Report is referred to in the Yeadon Declaration as the “second Nokia Invention report.” Yeadon Decl. para. 5. The figure that appears in the last page of this invention report closely resembles Figure 5 of the ’081 patent, on which the claims read. As explained below in the discussion of diligence, there was a long delay in obtaining comments from Mr. Faccin during preparation of the parent application. 2. An annotated draft of a patent application entitled “Recovery Techniques in All-IP Mobile Network.” Yeadon Decl. Ex. I; Verkama Decl. Ex. A; Einola Decl. Ex. A. This annotated draft patent application includes revisions by inventors Phan-Anh, Verkama, and Einola. Yeadon Decl. para. 11; Verkama Decl. para. 4; Einola Decl. para. 4. B. Diligence Diligence can be shown by evidence of activity aimed at reducing the invention to practice, either actually or constructively, and/or by legally adequate excuses for inactivity. Griffith v. Kanamaru, 816 F.2d 624, 626 practice or to the filing of the application. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 24 (Fed. Cir. 1987). It is necessary to account for the entire period for which diligence must be shown, id., and to provide evidence that is specific as to facts and dates. Gould v. Schawlow, 363 F.2d 908, 920 (CCPA 1966); Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). The evidence offered to prove diligence consists of the Yeadon Declaration and the inventors’ § 1.131 declarations. Regarding diligence, each of the inventors’ § 1.131 declarations merely asserts (in paragraph 3) “due diligence from prior to said effective date of the reference to a subsequent reduction to practice or to the filing of the application” and (in paragraph 5) that “[d]uring the time just before September 29, 2000, through March 12, 2001 (the filing date of the [’]374 patent), I was continually working on projects related to Nokia’s 3G All-IP Mobile Network, including the technology of the [’]374 patent.” 32 We begin our analysis with the Yeadon Declaration, which in discussing diligence relies on two categories of documents: 1. Emails discussing preparation of the parent application. 2. Documents offered to show work by the inventors on “various closely-related patent applications” and on the “overall product of which the invention is an integral part.” P.O. Appeal Br. 10. 1. The Email Evidence (Work on the Parent Application) 32 Referring to parent patent 7,769,374. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 25 The email evidence consists of Yeadon Declaration Exhibits C-E, G, H, and J-L. Yeadon Decl. paras. 6-10, 12, 17. Regarding the dates of Exhibits C-E, G, H, and, J, which have been redacted, this declaration gives the dates of these emails as “before September 29, 2000.” Yeadon Decl. paras. 6-10. These exhibits therefore do not describe any efforts toward diligence occurring after that date, which is Foti’s effective date as a reference. The emails in Exhibits K and L, discussed in detail below, are the only evidence that specifically addresses efforts to prepare the parent application, which was filed on March 12, 2001. The Examiner provided the following diagram showing that these emails reveal lapses in activity that range in length from three days to forty-two days between Foti’s September 29, 2000, effective date and March 2, 2001 (ten days prior to the parent application’s filing date): Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 26 ACP 47. Before addressing these gaps, we will address the Examiner’s further finding the email evidence fails to show any work on the parent application just prior to Foti’s September 29, 2000, effective date, as is necessary to show diligence. ACP 56. Specifically, the Examiner (id.) agrees with Requester that “PO’s Evidence Does Not Apply to the Correct Time Period” and adopted the following reasons stated at pages 18 and 19 of Requester’s July 2012 Comments: “The critical period for diligence is ‘just prior to the entry in the field of the party who was first to reduce to practice and continues until the first conceiver reduces to practice.’ MPEP 2138.06, Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 27 citing Hull v. Davenport, 90 F.2d 103, 105. . . (CCPA 1937) (emphasis added).” We do not agree that the email evidence fails to show any work on the parent application just prior to September 29, 2000. Exhibit K consists of six emails between Mr. Szalai (Patent Engineer for Nokia) and Mr. Zykorie (outside counsel), which are dated from September 29, 2000, to October 24, 2000. The first three emails were sent on September 29. The first email (in time) (“Sent: 29. September 2000 9:18”), which is from Mr. Norbert, states: I’m almost done with my review of the text, please wait for my comments to be sent later today. I am in my new office already, so that I can finish this job here. In the second email (“Sent: Friday, September 29, 2000 12:09 PM”), Mr. Szalai informs Mr. Zykorie that he (a) has made revisions to Mr. Zykorie’s “original third draft,” (b) has requested comments from inventor Stefano Faccin, and (c) will send the revised draft (in encrypted form) to Mr. Zykorie on the following Monday (October 2), when he expects to have Mr. Faccin’s comments. Mr. Szalai also proposed a new filing deadline for the application of the “3 rd of October 3 (next Tuesday).” Id. These first two emails are sufficient to establish that work on the draft application occurred just prior to Foti’s September 29, 2000, effective date. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 28 However, as explained below, the email evidence fails to show sufficient activity (or acceptable excuses for inactivity) between September 29, 2000, and the March 12, 2001, filing date of the parent application. We next address the gaps after September 29, 2000. In the third email (“Sent: 29. September 2000 18:23”), Mr. Zykorie explains: The Tuesday deadline may or may not be suitable, depending on the extent of the changes and the amount of additional work that will be required. Accordingly, I would prefer to let you know when the final version of the application papers will be completed upon receiving your proposed revisions. In the fourth email (“Sent: Monday, October 02, 2000 11:17 AM”) and fifth email (“Sent: “02. October 2000 20:30”) in Exhibit K, Mr. Szalai stated that he had not received the requested comments from Mr. Faccin. Twenty-one days passed before Mr. Szalai sent the sixth and final email in Exhibit K (“Sent: Tuesday, October 24, 2000 6:34AM”), stating that he still was waiting for Mr. Faccin’s comments: In my previous email dated 2nd of October, I promised to deliver you my comments and also the inventor’s, but unfortunately, Mr[.] [Stefano] Faccin has not responded to my request so far. Since I was away during the previous weeks, it was only today that I could remind him on this matter. Once again, I asked for his comments on the Mobile IP part which is not my competency, thus Stefano’s notes will be needed before wording the final version. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 29 (Emphasis added.) Forty-two days pass until the next email, which is the first email in Exhibit L, which consists of seven emails between Mr. Szalai and Mr. Zykorie, dated from December 6, 2000, to March 2, 2001. The first three emails in this chain are dated (Wednesday) December 6. The first email (“Sent: 06. December 2000 16:36”) is from Mr. Zykorie and states: I have not received any response from you since your October 24, 2000 e-mail. What in the status on this application? Are you awaiting comments by Stefano Faccin? Mr. Szalai’s response (“Sent: 06. December 2000 17:10”) begins as follows: Sorry for not responding lately, but Stefano was on holiday for three weeks, and therefore he had more urgent things in his buffer to take care of. Actually, I have received his comments a few days ago, and I read them only yesterday. Assuming for the sake of argument that “a few days ago” refers to (Friday) December 1, Mr. Szalai waited nine weeks for the comments he had requested from Mr. Faccin on or before September 29, 2000. Although the requirement for diligence does not preclude an inventor from taking a three- week vacation, 33 this leaves six weeks of delay by Mr. Faccin that are not 33 See Reed v. Tornqvist, 436 F.2d 501, 504-05 (CCPA 1971) (not unreasonable for inventor to delay completing a patent application until after returning from a three-week vacation in Sweden, which was extended by another week by the unexpected illness of the inventor’s father). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 30 adequately explained by the emails. In the absence of an adequate explanation, this amount of delay is sufficient, in and of itself, to defeat Patent Owner’s claim of diligence. See Ireland v. Smith, 97 F.2d 95, 99-100 (CCPA 1938) (party held not diligent for failing to account for three and one-half weeks of inactivity); D’Amico v. Koike, 347 F.2d 867, 871 (CCPA 1965) (“[I]t is certainly possible that all of D’Amico’s activity took place during the period prior to October 29, whereupon the application lay idle for nearly one month awaiting execution by the inventor. Be that as it may, that month is the critical month and the record contains no evidence, even of the weakest sort, whether in it anything occurred.”). Furthermore, the remaining emails in Exhibit L show other significant delays in communications between Mr. Szalai and Mr. Zykorie regarding work on the parent application. In the second email in Exhibit L (“Sent: 06. December 2000 17:10”), Mr. Szalai raised a number of questions requiring consultation with the inventors: One important issue came up, and actually it was mentioned by one of our experts before even deciding to file a patent application. It seems that however we have some recovery mechanisms for the TA of the subscriber, but in case we lose this TA, probably we would lose a number of other information too, which would result in an inability to contact the HSS for the subscriber due to lack of info about the HSS address. I will think about it tomorrow, but my first thought is that we should indicate more clearly that the invention is not applicable to [a] CSCF restart or crash situation. Or, alternatively, I can ask the Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 31 inventors to think about how to provide sufficient protection in case of such bigger problems (what else should be protected, how, etc[.]). I attach Stefano’s reply for you, so that you can start working on the new sets of claims. I will come back to this case tomorrow, as I am going home within half an hour. Please call me if you have questions or I can send you additional comments tomorrow/later this week. Do you think that filing this application before the end of the year is possible? Later that day, Mr. Szalai sent another (third) email (“Sent: 12/6/00 6:36 PM”), providing additional comments about the draft application and concluding as follows: Attached you can find the changes I made to the original third draft before sending it to Stefano Faccin for reviewing. You can see all my changes highlighted, which were missing from Stefano’s reply. Sorry for being a bit superficial, I really have to go home now. I won’t forget about this case. However, nineteen days passed before Mr. Zykorie sent the next (fourth) email (“Sent: 26 December 2000 22:00”), which begins as follows: I was re-reading your two earlier emails of December 6, 2000 and realized that I was no longer sure that you were going to send additional comments. I had thought from the last paragraph of your first December 6, 2000 e-mail that you were going to send additional comments. Is that true or are you waiting for my comments? Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 32 Mr. Szalai responded twenty-three days later with a (fifth) email (“Sent: 1/18/01 7:15 PM”) that begins as follows: Thank you for your email of December 26, 2000. You are right, I was about to send you a follow-up email but the end of last year was too busy for me. Sorry for the confusion. . . . After identifying seven items that “need[] further elaboration before filing,” Mr. Szalai concludes: I’m sorry for delaying this application that much, but it was hard to have it checked by everyone in time. I believe this is almost ready for filing and we don’t have to contact the inventors anymore. Please check the items listed above and send me the final draft when you’re ready. I will inform you if I have a publication date for these ideas (No such plans yet). Id. The above description of the delay between December 26 and January 18 lacks the specificity as to facts and dates required to establish diligence. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993. See also Walker v. Bailey, 245 F.2d 486, 490 (CCPA 1957) (“Considering the facts that it was necessary to obtain a check from the treasurer of the Plax Corporation for the filing fee, that the Labor Day week-end intervened, and that Willard was on vacation from August 21 through September 4, 1950, the delay of two weeks in filing the application after it was executed does not appear to be unreasonable.”). On February 6, 2001, Mr. Zykorie sent the next (sixth) email (“Sent: 06. February 2001 15:01”), which was accompanied by a revised draft of the application. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 33 Mr. Szalai waited more than three weeks to respond with a (seventh and last) email (“Sent: 3/2/01 2:07 PM”) stating: Sorry for not replying before, but this case had lower priority than others. I have reviewed the draft mailed February 6, 2001. The description is OK, but the numbering of claims need[s] some minor modifications as follows: . . . (Emphasis added.) This description of the delay as due to the fact that “this case had lower priority than others” is inconsistent with diligence. See Griffith, 816 F.2d at 629 (diligence held lacking because the delays encountered in the project relied as proof of diligence were due to the fact that the project was given the “second and often third priority in laboratory research as well as the solicitation of funds”). The other evidence, discussed below, also fails to provide a legally sufficient justification for the above-noted delays in preparing the parent application. 2. The Inventors’ Work on Related Applications and on the Overall Product Patent Owner argues: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 34 “[A]ll the surrounding circumstances must be viewed and considered in determining whether there was sufficient diligence.” See Monsanto Co. v. Mycogen Plant Science, Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001) (citing Jones [v. Evans], 46 F.2d [197,] 203 [(CCPA 1931)]) (emphasis added). The Patent Owner therefore submits that in viewing the “surrounding circumstances” of the present case, work on an overall product and work on related applications must be considered. P.O. Reb. Br. 4. As support for the argument that diligence can be shown by work on “closely-related patent applications,” “work directed to an overall product of which the invention is an integral part,” and “work on closely related inventions” (P.O. Appeal Br. 10), Patent Owner cites the following decisions: Keizer v. Bradley, 270 F.2d 396 (CCPA 1959); Bey v. Kollonitsch, 806 F.2d 1024 (Fed. Cir. 1986); Rey-Bellet v. Engelhardt, 493 F.2d 1380 (C.C.P.A. 1974); Ginos v. Nedelec, 220 USPQ 831, 836 (BPAI 1983); and Ex parte Ovshinsky, 10 USPQ2d 1075 (BPAI 1989). Id. at 10-11. The related applications are identified in a table in paragraph 16 of the Yeadon Declaration, which lists thirty-three other patent applications that were filed in the United States from June 2, 2000, through May 30, 2001, and name at least one of Phan-Anh, Verkama, Einola, and Faccin as an inventor, with Mr. Faccin being credited with eighteen of these applications. Yeadon Decl. para. 16. Copies of nine of the eighteen applications (or resulting patents) credited to Mr. Faccin were provided with the Yeadon Declaration as Exhibits M-U. Yeadon Decl. paras. 18, 22-29. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 35 As evidence of work on related inventions and the overall project, Patent Owner relies on the inventors’ § 1.131 declarations, each of which when discussing diligence states: “During the time just before September 29, 2000, through March 12, 2001 (the filing date of the [’]374 patent), I was continually working on projects related to Nokia’s 3G All-IP Mobile Network, including the technology of the [’]374 patent.” See, e.g., Phan- Anh Decl. (P.O. Appeal Br. Ex. 3) para. 5. Patent Owner also relies on copies of the following four “draft standards” that Mr. Faccin submitted on February 23, 2001, to the Internet Engineering Task Force: “Challenge- Response Authentication Request”; “Key Distribution Mechanisms for Mobile IPv6”; “Temporary Shared Key Function for Secure Delegation of Security to the Local Network”; and “Dynamic Diffie Hellman Based Key Distribution for Mobile IPv6.” Yeadon Decl. para. 30 and Exs. V-Y. For the following reasons, we are not persuaded that these other applications and projects (discussed in greater detail below) had the type of close relationship to the parent application that is required to permit work on these other applications and projects to count toward diligence in achieving a reduction to practice of the claimed invention. “It is well settled that, to satisfy the “reasonable diligence” requirement of 35 U.S.C. § 102(g), the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” Naber v. Cricchi, 567 F.2d 382, 385 (CCPA 1977). Thus, Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 36 work in preparation for filing related patent applications may suffice (e. g., Rey-Bellet v. Englehardt, 493 F.2d 1380, 181 USPQ 453 (Cust. & Pat. App. 1974)), as may work required to develop a first invention in order to develop or reduce to practice a second invention (e. g., Keizer v. Bradley, 270 F.2d 396, 47 CCPA 709, 123 USPQ 215 (1959); Thompson v. Dunn, 166 F.2d 443, 35 CCPA 957, 77 USPQ 49 (1948)). Id. The subject matter at issue in Rey-Bellet was the chemical compound NTL (notriptyline), which was developed at Merck, Sharp and Dohme Research Laboratories (Merck). 493 F.2d at 1382. Mr. Engelhardt, an attorney in Merck’s patent department, requested that Dr. Cutler, technical advisor to the patent department, assist him in the preparation of this application. Id. at 1387. Dr. Cutler was putting the finishing touches on a preliminary draft for the NTL invention on May 12, 1961. Id. at 1388. Although Dr. Cutler during the preceding twenty-one days had worked on a different patent application, the court found that this work counted toward diligence because its subject matter was closely related to the NTP invention: During the contested time period, it appears that Dr. Cutler, in addition to other duties, was also working on at least one other patent application related to that relied upon by Engelhardt for priority purposes. This application was directed to a process for preparing amitriptyline and closely related compounds including NTL. He testified that he worked on this application concurrently with Engelhardt’s application because both were similar in scope and required the same starting materials. The record establishes that Dr. Cutler was working on the process application at least as late as April 27, 1961. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 37 Work on related applications can be relied upon to show reasonable diligence. Rines v. Morgan, 250 F.2d 365, 45 CCPA 743 (1957). In view of Cutler’s activity on the related process case and his testimony that he was working on the draft of Engelhardt’s application prior to May 12, 1961, it is our view that there was reasonable diligence during the contest period, a time span of but 21 days. Id. In Rines, cited in Rey-Bellet, the court held: [T]he Rines’ application involved in this interference is closely related to his case 2 and incorporates much of the matter of that case. Accordingly, the work done on case 2 during November and December of 1943 contributed substantially to the ultimate preparation of the involved application. Such work, therefore, may properly be regarded as showing diligence in the preparation and filing of the instant application, even though case 2 did not include a disclosure of all the features of the invention here in issue. 250 F.2d at 749. In Bey, the court noted that “[f]requently, an inventor or group of inventors may file more than one patent application involving closely related subject matter” and that in this type of situation, the exact lines of demarcation between the cases may not be clear in all respects at the start. 806 F.2d at 1028 (citing Rines, 250 F.2d at 369). The court specifically addressed the question of “under what circumstances may work on a related case be credited as diligence with respect to the instant application” and provided the following answer: “We hold that work on the related case is to be credited toward reasonable diligence if the work on the related case Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 38 ‘contribute[s] substantially to the ultimate preparation of the involved application.’” Id. (quoting Rines, 250 F.2d at 369) (alteration by the court). The court found that the record contained ample evidence that the work performed by Bey’s patent attorney (Ruth Hattan) on other applications during contested time period contributed substantially to the ultimate preparation of the involved application. The court began by noting: “Hattan’s unrebutted testimony, as corroborated by documentary evidence and by her supervisor’s testimony, clearly shows that she took up the applications simultaneously as a group, well before the start of the critical period, and that the applications were filed within a few days of each other.” Id. at 1029. The court also relied on her following description of the relationships between the applications: They’re related in their basic mechanism of action. The whole enzyme inhibitor area is based on irreversible inhibition of various enzymes, and the utility form in various of these cases is the same. The chemistry involved in preparing many of these cases is the same across the board, with just a change of starting material. The inventorship is not the same on every case but there are common inventors involved on all of these cases, but the chemistry and utility are very closely interrelated in these cases. Id. at 1029. The court further noted that she described these relationships in even greater detail and quoted five paragraphs of her testimony, of which the third paragraph, for example, states: Within any one group of amino acids the cases are further related insofar as utility is concerned that, for example, Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 39 many of the cases have the same utility, the difference between cases having the same utility being generally the nature of the substituent at the alpha position, which also involves different chemical procedure for obtaining those compounds as the nature of the substituent at the alpha position varies within any one group of compounds involving the same amino acid, the only difference being within that series of compounds the nature of the substituent at the alpha position. Id. at 1029-30. Furthermore, the court quoted her following testimony that the applications contain a common set of information: The package was worked on as a group. All of these cases were treated as a group and worked on at the same time because there was such a common set of information that could be transferred from one case to another; and the reason they were worked on together as a package was to expedite the filing of the cases. By transferring information from case to case, it made the preparation much faster and the filing. Id. at 1030. The decisions of the Board in Ginos and Ovshinsky, also cited by Patent Owner, are consistent with Rey-Bellet and Bey. The claimed invention in Ginos was the compound PPhD (N-propyl-N-phenethyl-(3,4- dihydroxyphenyl) ethylamine) and its salt, PPhD-HCl, for use as dopaminergic agents. 220 USPQ at 833. The Board concluded that during the period for which diligence was required, “Mr. Doroski was continuously working on the preparation of other compounds which were considered by Ginos to be part of the same invention as PPhD-HCl, all of which were Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 40 eventually included in his grandparent application.” Id. at 835. The Board further concluded: [U]nder some circumstances an inventor should also be able to rely on work on closely related inventions as support for diligence toward the reduction to practice of an invention in issue. Those circumstances are present in this case where the period in question is less than 2 months, during which Ginos was working on a generic invention including compounds which were structurally closely related to PPhD-HCl, were expected to exhibit the same utility and were included in his patent application. Id. at 836 (emphasis added). 34 In Ovshinsky, the Board based a finding of diligence in part on work on other applications related to the application at issue in the manner described in Rines: [A]ttorney Winburn documents by way of time records over 70 days from before May 2, 1980 through November 12, 1980 when he worked on a series of closely related patent applications: This series includes parent application Serial No. 206,580, filed November 13, 1980. . . . Here, as in Rines v. Morgan, 116 USPQ 145 (CCPA 1957), the record reflects that the inventors and their attorney worked diligently during the 34 Regarding Ginos, the Bey court stated: “In Ginos, the several compounds originally were claimed in one ‘grandparent’ application, which was subsequently divided into several applications claiming individual compounds. Presumably, the same finding of diligence would obtain if Ginos had originally filed a separate application for each compound, instead of one grandparent application.” 806 F.2d at 1028. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 41 relative time period on a series of closely related patent applications including the one in issue. 10 USPQ2d at 1077 (emphasis added). The evidence of record fails to establish that any of the thirty-three other applications identified in the Yeadon Declaration are closely related to the parent application in a way that permits work on these other applications to excuse delays in preparing the parent application. The only characteristic of these other applications that is relied on in paragraph 16 of the Yeadon Declaration is overlapping inventorship: 16. During the time before and after September 29, 2000, several of the named inventors - Son Phan-Anh, Markku Verkama, Heikki Juhani Einola, and Stefano Faccin - assisted in the preparation of one or more patent applications. The chart below details the patent application numbers and filing dates for the patent applications for which these inventors are listed as inventors. The chart shows that there are a total of 22 patent applications filed between June 2000 and March 12, 2001 (the filing date of the patent under reexamination) and 11 additional patent applications from March 12, 2001, to May 30, 2001, for which at least one of the inventors of the present patent is listed as an inventor. Accordingly, in a year’s time (June 2000 to May 2001), there were 33 different patent applications developed, reviewed, and filed by these inventors. Yeadon Decl. para. 16. This declaration also provides similar inventorship information about nine of the eighteen applications (or resulting patents) that are credited to Mr. Faccin. Id. at paras. 18, 22-29 (discussing Exs. M-U). For example, this declaration states: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 42 18. Attached to this Declaration is a true and exact copy of U.S. Patent Application 09/709,716 (the [’]716 application) filed on November 13, 2000. See, Exhibit M. The [’]716 application lists inventor Stefano Faccin as an inventor. The [’]716 application was a continuation-in-part application of U.S. Applications 09/546,208 and 09/546,207 and required inventor Stefano Faccin’s review prior to its filing. As a continuation-in-part application, the [’]716 application included subject matter not included in the earlier-filed applications. Id. at para. 18. Patent Owner has not cited, and we are unaware of, any authority holding that common or overlapping inventorship is a sufficient basis for allowing work on other applications to count toward diligence. The facts provided in the Yeadon Declaration therefore fail to establish that any of the thirty-three other applications had the type of close relationship with the parent application that was present in Rey-Bellet, Bey, Rines, or Ginos. This deficiency is not remedied by the additional information about some of these other applications that was provided as a “brief review” in Patent Owner’s Rebuttal Brief, which states: On page 4 of the Respondent Brief, the TPR argued that the “Patent Owner provides no showing ... regarding the relationship of the various patent applications.” The Patent Owner respectfully disagrees. . . . A brief review of these 33 applications in combination with the statements made by the inventors in their respective declarations demonstrates not only the close relationship of these applications to one another and to the [’]081 Patent, but also that these applications and the [’]081 Patent are directed to Nokia’s 3G All-IP Mobile Network. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 43 P.O. Reb. Br. 5-6. The “brief review” consists of brief descriptions of six U.S. patents: 7,123,020 (based on Application 09/546,209); 7,181,211 (Application 10/398,414); 7,277,702 (German Application DE 10116768); 6,980,512 (Application 09/840,410); 7,623,447 (Application 09/709,716); and 7,849,190 (Application 09/792,499). Id. at 6-8. The description of Patent 7,623,447 (Yeadon Decl. Ex. M), for example, reads as follows: U.S. Patent No. 7,623,447 (which granted from Application No. 09/709,716) is directed to an “emergency telephone call [that] is supported and routed to a Public Safety Answering Point (PSAP) in an IP based packet switched wireless communications network.” (Abstract.) Again, the [’]447 patent discloses advancements with respect to a 3G All- IP mobile network. (See, e.g., column 3, lines 35-41; column 7, lines 42-50.) Id. at 7. Assuming for the sake of argument that Nokia’s 3G All-IP Network includes the subject matter of the parent application and the subject matter of the thirty-three other applications, it does not necessarily follow that these other applications have a close relationship to the parent application like the close relationships described in Rey-Bellet, Bey, Rines, and Ginos. Nor is the existence of such a relationship established by the inventors’ § 1.131 declarations. As noted above, each of these declarations when addressing diligence merely states that “[d]uring the time just before September 29, 2000, through March 12, 2001 . . . , I was continually working on projects related to Nokia’s 3G All-IP Mobile Network, including Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 44 the technology of the [’]374 [parent] patent.” See, e.g., Phan-Anh Decl. (P.O. Appeal Br. Ex. 3) para. 5. These declarations fail to provide any details about these “projects related to Nokia’s 3G All-IP Mobile Network” and thus lack the required specificity as to facts and dates. See Gould, 363 F.2d at 920; see also Kendall, 173 F.2d at 993. These declarations do not even mention work on other applications, let alone explain why the inventors believed that work on such other applications justified the above- noted delays in preparing and filing the parent application. Requester, who characterizes this deficiency in the evidence as a lack of “first-hand knowledge of the inventors’ activities” (Req. Resp’t Br. 35 13), is therefore correct to argue: “[T]he inventors provide no testimony whatsoever regarding their various lapses: for example, Faccin does not explain why he neglects to respond to Szalai’s various requests for comments.” Id. To the extent the phrase “working on projects related to Nokia’s 3G All-IP Mobile Network” in the inventors’ § 1.131 declarations should be understood to refer to what Patent Owner describes as “work directed to an overall product of which the invention is an integral part” and “work on closely related inventions” (P.O. Appeal Br. 10), we are unpersuaded that such work counts toward diligence. Patent Owner has not cited, and we are unaware of, any authority for the proposition that delays in preparing and 35 Third Party Requester’s Respondent Brief in Inter Partes Reexamination Pursuant To 37 C.F.R. § 41.68, filed July 19, 2013. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 45 filing a patent application can be excused while such work is being performed. The question addressed in Keizer (cited at P.O. Appeal Br. 10- 11) was whether to excuse a delay achieving an actual reduction to practice of the invention at issue, which was an automatic chroma control circuit for a new color television receiver, until completion of a receiver in which it could be incorporated and tested. 270 F.2d at 398-99. Specifically, the court, after noting that this was in the early period of development of a highly complex art and that “[a] great deal was unknown and there were many difficulties which could not be anticipated,” stated that these circumstances justified Bradley . . . in postponing the building and testing of his automatic chroma control until completion of a color television receiver in which it could be incorporated and tested. And since the record tends strongly to show that there was no other way to get such a receiver and that the work on the receiver was carried on with diligence, that work can be relied on as showing diligence in reducing the invention to practice over the ten and a half month period here involved. Id. For the reasons given above, we are also unpersuaded by Patent Owner’s reliance on the four “draft standards” submitted by Mr. Faccin on February 23, 2001, to the Internet Engineering Task Force. Yeadon Decl. para. 30 and Exs. V-Y. C. Conclusion Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 46 Patent Owner has failed to antedate Foti under 37 C.F.R. § 1.131 with respect to any of the rejected claims or any of the claims that are the subject of Requester’s appeal. III. THE EXAMINER’S REJECTIONS (CLAIMS 1, 5, 14, AND 18) Patent Owner’s sole argument against the Examiner’s rejections of claims 1, 5, 14, and 18 is the above, unpersuasive argument that Foti has been antedated under 37 C.F.R. § 1.131. We therefore sustain the Examiner’s rejection of claims 1 and 14 for obviousness over Foti and rejection of claims 5 and 18 for obviousness over Foti in view of Gallant. IV. REQUESTER’S UNADOPTED PROPOSED REJECTIONS (CLAIMS 7-9, 13, 20-22, 26, 27, 30-32, 37, AND 38) Patent Owner’s argument that Foti has been antedated with respect to these claims under 37 C.F.R. § 1.131 is unpersuasive for the reasons given above. As explained above, we sustain the Examiner’s decision not to maintain the rejection of claims 30 and 31 because they depend from a claim (i.e., claim 29) not under reexamination. In discussing the merits of the proposed rejections of claims 7-9, 13, 20-22, 26, 27, 32, 37, and 38, Requester and Patent Owner limit their Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 47 arguments to claim 7. Req. Appeal Br. 6-10; P.O. Resp’t Br. 3-8. We therefore limit our analysis to claim 7. As explained in greater detail below, the Examiner initially rejected claim 7 for obviousness under 35 U.S.C. § 103(a) over Foti in view of Gallant and Gustafson but later withdrew the rejection because Foti’s transport address 49 is not a home address, as recited in claim 7’s third step (“receiving a home address of the subscriber at the S-CSCF from the UMS”). Foti’s invention relates to call processing by a Call State Control Function (CSCF) in a third generation Internet Protocol (3G.IP) network. Foti 1:7-10. Foti’s invention addresses the following problem in such networks: [C]all setup messages such as the Fast Setup message and the Location Request (LRQ) message for H.323, and the INVITE message for the Session Initiation Protocol (SIP), do not have properties that indicate to a CSCF receiving them what call processing functions should be performed. Therefore, call processing cannot continue until the CSCF determines what call processing functions it should perform. The present invention provides a CSCF and method by which any CSCF receiving a call setup message can determine what call processing functions it should perform. Id. at 1:38-50 (emphasis added). The arguments regarding Foti concern the relationship between Figures 1 and 2. Figure 1 is reproduced below. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 48 Figure 1 is a flow chart illustrating the steps of Foti’s “preferred embodiment of the relationship function utilized in each CSCF in a 3G.IP network.” Id. at 3:4-6 (emphasis added). Thus, as explained below, the “relationship function” of Figure 1 is performed by each CSCF that is involved in setting up a particular call. At step 11, an incoming call setup message is received by a CSCF in the 3G.IP network. Id. at 3:6-7. The call setup message, which may be, for Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 49 example, a Fast Setup message or an LRQ message for H.323, or an INVITE message for SIP, includes the destination alias and H.245 address of the called subscriber. Id. at 3:7-11. At step 12 (IS CSCF HOME CSCF FOR CALLED SUBSCRIBER?), the CSCF determines whether or not it happens to be the Home CSCF of the called subscriber. Id. at 3:11-13. If the answer at step 12 is NO, processing proceeds to step 13 (IS CSCF SERVING CSCF FOR CALLED SUBSCRIBER?). If the answer at step 13 is YES, processing proceeds to step 15 (OBTAIN CALLED SUBSCRIBER’S TRANSPORT ADDRESS AND SET UP CALL). If the answer at step 13 instead is NO, processing proceeds to step 14 (SEND QUERY MESSAGE TO DNS FOR NEXT HOP ADDRESS). If the answer at step 12 instead is YES, processing moves to step 16 (IS CALLED SUBSCRIBER IN HOME AREA?). In step 16, the CSCF checks its internal database to determine whether or not the called subscriber is located in the home area. Id. at 3:24-26. “If so, the process moves to step [15] where the CSCF obtains the called subscriber’s transport address and proceeds to set up the call.” Id. at 3:26-28. As shown in Figure 1, if the answer at step 16 is NO, processing proceeds to step 17 (OBTAIN LOCATION INFORMATION FROM HSS), which is followed by step 18 (FORWARD CALL SETUP MESSAGE TO VISITED CSCF). The Request in discussing the proposed rejection of claim 7 relies primarily on Figure 2 (consisting of Figures 2A and 2B), reproduced below, which is a signaling diagram illustrating the message flow between nodes in Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 50 a 3G.IP network when call processing is performed in accordance with Foti’s invention. Id. at 3:36-39. Specifically, Figure 2 shows an example of the signaling that occurs under the following conditions: (1) the first CSCF that receives the call setup message is neither the Home CSCF nor the Serving CSCF for the called mobile subscriber; and (2) the called mobile subscriber is roaming (i.e., not located in the home area of the called mobile subscriber’s Home CSCF). In Figure 1, these conditions correspond to a YES at step 12 and a NO at step 16, thereby leading to steps 17 (OBTAIN LOCATION INFORMATION FROM HSS) and 18 (FORWARD CALL SETUP MESSAGE TO VISITED CSCF). However, as explained below, the Request when discussing claim 7’s third step (“receiving a home address of the subscriber at the S-CSCF from the UMS”) (emphasis added) relies on the non-roaming embodiment represented by a YES at step 16, a condition not represented by the Figure 2 signaling. Foti’s Figure 2A is reproduced below. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 51 Figure 2A shows an example of call setup between (a) Originating Mobile Equipment (ME) 21, which may include an MS (mobile station); and (b) Terminating ME 22 (id. at 3:39-43), which presumably also may include an MS. As explained in greater detail below, the Request reads claims 7’s first step (“receiving a call setup request for a subscriber at a Serving-Call State Control Function (S-CSCF)” on Fast Setup message 46, which is received by Visited CSCF 32. As already noted, the signaling represented in Figures 2A and 2B occurs because: (i) the first CSCF that receives the call setup message is Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 52 neither the Home CSCF nor the Serving CSCF for the called mobile subscriber; and (ii) the called mobile subscriber is roaming. Completion of a call under these circumstances requires three CSCFs located in three different networks: (i) a GK (Gatekeeper) CSCF 24 in Origination Network 23; (ii) a Home CSCF 28 in Home Network 26; and (iii) a Visited CSCF 32 in Serving Network 31. Id. at 3:43-49. Visited CSCF 32 is also identified in step 47 of Figure 2B (reproduced below) as a “Serving” CSCF (i.e., “S- CSCF”). As explained below, each of these three CSCFs runs the relationship function of Figure 1. Originating ME 21 initiates a call by sending an Admission Request (ARQ) message 34 to GK CSCF 24 in Origination Network 23. Id. at 3:50-51. The GK CSCF responds by returning an Admission Confirm (ACF) message 35 to the originating subscriber. Id. at 3:51-53. The Originating ME then sends to the GK CSCF a Fast Setup message 36 that includes an identifier (Destination Alias) and a destination media address (e.g., H.245 Address) for Terminating ME 22. Id. at 3:53-57. Upon receipt of Fast Setup message 36, the GK CSCF (at step 37) performs the relationship function of Figure 1 in order to determine its relationship to the called mobile subscriber (i.e., terminating ME 22). Id. at 3:57-60. Foti explains: In the current situation, the GK CSCF 24 is neither the Home CSCF nor the Serving CSCF for the called mobile subscriber. Therefore, referring briefly to FIG. 1, it can be seen that the process proceeds from step 11 where the Fast Setup Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 53 message is received, to steps 12, 13, and 14 where it is determined that a query message should be sent to the DNS 25 to obtain a next hop address for the Fast Setup message. Therefore, referring once again to FIG. 2, the GK CSCF sends a Query message 38 for the Destination Alias to the DNS 25 in the Originating Network. This Query results in a Response to the GK CSCF at 39 which indicates the IP address of the Home CSCF 28. Id. at 3:61-4:5 (emphasis added). Next, the GK CSCF sends a Location Request (LRQ) message 41 to the Home CSCF, which performs (at step 42) the relationship function of Figure 1 and determines (i) that it is the Home CSCF for the called mobile subscriber and (ii) that the called mobile subscriber is not currently located in the home area (i.e., is roaming). Id. at 4:6-17. Thus, referring to Figure 1, the process proceeds from step 11, where the LRQ message is received, to step 12 (YES) and then step 16, where the Home CSCF checks its internal database and determines that the called mobile subscriber is not currently located in the home area. Id. at 4:13-17. The process then moves to steps 17 and 18, where it is indicated that the Home CSCF obtains location information (which identifies the Serving CSCF) from the HSS and then forwards the LRQ message to the Visited CSCF. Id. at 4:17-20. Thus, returning to Figure 2A, the Home CSCF sends a Query 43 to HSS 27 to obtain the location information for the called (terminating) mobile subscriber. Id. at 4:21-23. The HSS responds (at step 44) with the IP address of the Visited CSCF. Id. at 4:24-26. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 54 The Home CSCF then (at 45) sends the IP address of the Visited CSCF to the GK CSCF, which responds by sending a Fast Setup message 46 to the Visited CSCF (id. at 4:26-29), which is identified as a “VISITED (SERVING) CSCF” at step 47 in Figure 2B (reproduced below). This Fast Setup message includes the Destination Alias and the H.245 Address for the Terminating ME 22. Id. at 4:30-31. Before addressing the remaining steps and the proposed rejection of claim 7, we note that the last step of claim 1 (“sending a call setup request from the I-CSCF to the S-CSCF”) is similar to the first step of claim 7 (“receiving a call setup request for a subscriber at a Serving-Call State Control Function (S- CSCF)”). The Request reads the “I-CSCF” of claim 1 on the Figure 1 embodiment in which the first CSCF that receives the call setup message (Fig. 1, step 11) happens to be the Home CSCF for the called mobile subscribe (YES at step 12). This embodiment is identified in Requester’s following annotated version of Foti’s Figure 1: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 55 Request Ex. AA 8. Referring to Figure 2A, the Request explains that “the GK CSCF and Home CSCF (which is an I-CSCF . . .) comprise a single CSCF should the home network and the originating network be the same” and refers to this single CSCF as an “I-CSCF” in stating: “Given this GK CSCF = I-CSCF teaching of Foti I, the transmission of a call setup from the I-CSCF to the S-CSCF is shown by the call setup request as element 46 in his Figure 2A from the GK CSCF to the Visited CSCF. . . .” Id. The Request in discussing claim 1 accordingly annotated Figure 2A as follows: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 56 Id. at 9. Requester’s expert witness explained how to modify Figure 2 to show the signaling that will occur if the first CSCF that receives the call setup message happens to be the Home CSCF for the called mobile subscriber. Landauer Decl. para. 24. 36 In Figure 2 thus modified, GK 36 Specifically, Mr. Landauer testified: [T]he process of Fig. 1 of Foti would follow the YES branch at decision block 12, and therefore steps 13 and 14 would not be performed. A person of ordinary skill in the art would also have understood that steps 34, 35, and 36 of Fig. 2A would occur at the home network rather than at a different originating network, whereas steps 38, 39, 41, and 45 would be omitted. The fast setup request of step 46 would be sent from the CSCF of the home network, rather than from a different originating network. But despite these differences, the call would be received (steps 34, 35, 35) and would be setup (step 46) with (Continued on next page.) Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 57 CSCF 24 (in Origination Network 23) would not be involved in any signaling. Turning now to claim 7, the Request reads the first step (i.e., “receiving a call setup request for a subscriber at a Serving-Call State Control Function (S- CSCF)” on receipt of “Fast Set up” message 46 by the Visited CSCF. Request Ex. AA 18-19, limitation 7.1. This is shown by the following differently annotated version of Figure 2A: Id. at 19. The Examiner’s rejection (later withdrawn) of claim 7 likewise read claim 7’s first step on element 46: “Foti I shows his Visited CSCF/S- CSCF (element 32) receiving a call setup request as element 46 in the subscriber, even though the steps would be slightly different than those shown in the example of Fig. 2A. Landauer Decl. para. 24 Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 58 Figure 2A[.]” Non-final Action 21 (reproducing the above, annotated version of Figure 2A from Request Ex. AA 19). The Request when addressing the remaining steps of claim 7 relies on Figure 2B, reproduced below. Upon receipt of Fast Setup message 46 (Fig. 4A), the Visited CSCF (which corresponds to the claimed “S-CSCF”) performs (at step 47) the relationship function of Figure 1 and determines that the Visited CSCF is functioning as the Serving CSCF for the called mobile subscriber. Id. at 4:31-37. Referring to Figure 1, this corresponds to a NO at step 12 and a YES at step Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 59 13, thereby leading to step 15, in which the Visited CSCF obtains the called subscriber’s transport address and sets up the call. Id. at 4:37-42. Thus, referring to Figure 2B, the Visited CSCF sends a “Routing (Destination)” message 48 to Location Server 23 in Serving Network 31. The Request reads the second claimed step of “sending a route request from the S-CSCF to a User Mobility Server (UMS)” on this “Routing (Destination)” message 48 in the following annotated version of Figure 2B: Request Ex. AA 20, limitation 7.2. The Request next provides the following discussion of claim 7’s third step (“receiving a home address of the subscriber at the S-CSCF from the UMS”) (emphasis added): Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 60 Request Ex. AA 20, limitation 7.3. Although transport address 49 is labeled “Return of the home address” in this annotated figure, it is not actually a home address. Instead, as pointed out by the Examiner and Patent Owner, transport address 49 is a care-of address. See P.O. Resp’t Br. 4-5 (“[T]he ‘transport address’ referred to in column 4, lines 42-47 of Foti is . . . a ‘care- of-address’ of the ‘Terminating ME 22’ within the ‘Serving Network’ and not a ‘home address.’ (Burger Declaration; paragraph 24.)”); ACP 24 (“PO’s argument that ‘Transport Address’ is not the ‘Home Address’ is persuasive. . . . [I]n Foti, the transport address is the actual current IP Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 61 address of the mobile station, i.e., Foti’s transport address is the care-of address.”). Requester does not deny that transport address 49 in Figure 2 is a care-of address. See Req. Reb. Br. 4 (“It certainly could be, as the Examiner found, that the transport address in element 49 in Foti’s Figure 2B is a care- of-address.”). Instead, the Request, as stated in the text below annotated Figure 2B at page 20 of Request Exhibit AA, relies on the discussion of claim 6 for an embodiment in Foti “in which the TA is a home address.” The Request in discussing claim 6 relies on the non-roaming embodiment represented by steps 12, 15, and 16 of Foti’s Figure 1, which is annotated as follows in the discussion of claim 6: Request Ex. AA 16. In discussing claim 6, the Request further explains: As seen in the figure above, a Foti I CSCF that is receiving a call setup message for a called subscriber may be a home CSCF Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 62 (a YES response to inquiry 12). In turn, the called subscriber may be located in the home network (a YES response to inquiry 16). That location of the called party in its home network means that the called party is not roaming. Thus, the retrieved transport address is a home address in such a scenario. Id. (emphasis added). However, it is apparent from the Request’s discussion of claim 7’s fourth step (addressed below) that the proposed rejection does not require reliance on the non-roaming embodiment in Foti’s Figure 1 for a teaching of claim 7’s third step (“receiving a home address of the subscriber at the S- CSCF from the UMS”). The Request in discussing the fourth step also relies on Gallant and Gustafson for such a teaching. Claim 7’s fourth step recites: “sending the call setup request from the S-CSCF to a home agent at the home address of the subscriber.” For such a teaching, the Request relies on Gallant and Gustafson. Regarding Gallant, the Request when discussing claim 7 states: “[A]s discussed with regard to claim 6, it is obvious to modify a CSCF of Foti I in view of Gallant to use an alternative routing.” Id. at 21. 37 In discussing claim 5, on which claim 6 depends, the Request more particularly explains: Gallant (Ex. I) teaches that routing of SIP INVITE call setup messages can be dynamic. In other words, Gallant changes his 37 The Request when discussing claim 6 (Request Ex. AA 18) additionally relies on Borella (Borella, et al., US 6,816,912 B1, issued on November 9, 2004). Req. Appeal Br. Ex. 8. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 63 SIP routing if an intervening SIP server is not functional. In that regard, Gallant is directed to the routing of a SIP INVITE message to begin a call setup. See. e.g., the SIP INVITE message sent to a SIP Proxy Server (SPS) in Gallant’s Figure 1 shown as element 1: Request Ex. AA 14-15. The Request in discussing claim 7’s fourth step relies on Gallant and Gustafson as follows: As discussed further with regard to claim 6, it is known for a CSCF/SIP server to send a call setup request to a home agent at the home address of the called party. With regard to this known mobile IP background, Gustafson is also teaching the routing of calls through an [sic] CSCF to a home agent. This is plainly suggested by Gustafson’s Figure 8: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 64 It would thus be obvious to modify Foti I in view of Gallant to use an alternative routing such as the routing taught by Gustafson and to thus have the S-CSCF of Foti I route to a home agent according to the home address of the called subscriber. Id. at 20-21 (emphasis added). We understand the above-quoted discussion of claim 7’s fourth step to mean that the proposed rejection does not require any reliance on Foti’s non-roaming embodiment for claim 7’s third step (“receiving a home address of the subscriber at the S-CSCF from the UMS”) or fourth step (“sending the call setup request from the S-CSCF to a home agent at the home address of the subscriber”). See also Req. Reb. Br. 3 (“With regard to the alternative routing taught by Gallant, Gustafson shows that one potential routing is from a CSCF to a home agent. To direct a call setup request to a called party’s home agent, a CSCF would naturally want Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 65 the home address of the called party.”). When viewed in this light, the Request can be understood to be relying on Foti’s non-roaming embodiment merely to establish that Foti’s Home Network stores the called subscriber’s home address. Consequently, we understand the Request to be asserting that it would have been obvious in view of Gallant and Gustafson to modify Foti to enable the Visited CSCF (corresponding to the claimed S-CSCF) to route a call request to the called subscriber’s home agent (which knows the care-of address) in the event a crash prevents the Visited CSCF from obtaining the care-of address (i.e., transport address 49) from Location Server 33 (in Serving Network 31). More particularly, we understand the Request to be asserting that it would have been obvious to accomplish this result by having the Visited CSCF (i.e., S-CSCF): (i) obtain the called mobile subscriber’s home address from HSS 27 (corresponding to the claimed “UMS”) in Home Network 23 and then (ii) use the home address to send a call setup message to the subscriber’s home agent for forwarding to the subscriber at the care-of address (known to the home agent). 38 38 The subscriber’s home address cannot be obtained from Location Server 33 in Serving (i.e., visited) Network 31. See Burger Decl. para. 26 (“The visited network’s location server does not know the home address of the mobile station, and as such cannot return the home address of the mobile station to the visiting CSCF.”). Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 66 Turning now to the Non-final Action, the Examiner’s analysis of claim 7’s third step reads in its entirety as follows: Non-final Action 24 (reproducing annotated Fig. 2B from Request Ex. AA 20, limitation 7.3). Regarding the fourth step, the Examiner agreed with the reasoning set forth in the Request and thus concluded: “It would . . . be obvious to modify Foti in view of Gallant to use an alternative routing such as the routing taught by Gustafson and to thus have the S-CSCF of Foti route to a home agent according to the home address of the called subscriber.” Id. at 27. Patent Owner’s June 2012 Response, accompanied by the Burger Declaration, responded to the rejection of claim 7 by stating: Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 67 The “transport address” [49] of the “Terminating ME 22” of Foti is not a “home address of the subscriber,” as claimed. Rather the “transport address” referred to in column 4, lines 42- 47 of Foti appears to instead be a “care-of-address” and not a “home address.” (Burger Declaration; paragraph 24.) As discussed throughout the present patent and as one of skill in the art would readily recognize, a home address is different from a transport address. (See Burger Declaration; paragraphs 21-28.) June 2012 Resp. 19. This June 2012 Response (at pages 20-29) also challenged the Examiner’s reliance on Gallant and Gustafson for claim 7’s fourth step. Non-final Action 27. Requester responded with the July 2012 Comments, which do not mention Foti’s non-roaming embodiment. Instead, Requester relied on Gallant and Gustafson for a teaching of sending a call setup message to the called subscriber’s home agent using the subscriber’s home address: 1. PO asserts that the transport address sent to the S- CSCF of Foti at step 49 of Fig. 2B is not a home address of the subscriber, as claimed. But this line of reasoning discounts the combination with Gallant and Gustafson. Without conceding that PO is correct about the transport address, it is noted that the combination of Foti with Gallant and Gustafson (including the knowledge of a person of ordinary skill in the art regarding the operation of a Home Agent as evidenced by Xu and Borella) includes the S-CSCF routing a call setup message to the home agent; therefore, the address received from the UMS would include the home address. Whether or not the home address is explicitly taught in step 49 of Fig. 2B of Foti, the concept of retrieving the home address from a UMS is included in the combination as a whole. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 68 July 2012 Comments 10-11 (emphasis added). 39 We understand this argument to mean that the rejection of claim 7 does not require any reliance on the non-roaming embodiment depicted in Foti’s Figure 1. In the ACP, the Examiner addressed Patent Owner’s and Requester’s above-quoted positions regarding claim 7’s third step as follows: PO’s argument that “Transport Address” is not the “Home Address” is persuasive. . . . The Third Party states that the concept of retrieving home address from a UMS is included in the combination as a whole; however, Third Party Requester does not cite any particular columns, paragraphs or lines that teach[] the explicit steps of “receiving a home address of the subscriber at the S-CSCF from the UMS”. Examiner submits that in Foti, the transport address [49] is the actual current IP address of the mobile station, i.e., Foti’s transport address is the care-of address. ACP 24 (emphasis altered). However, regarding the fourth step, the Examiner concluded that “when Gallant and Gustafson are viewed in light of the knowledge of a person of ordinary skill in the art regarding the functions of a Home Agent, the rejection shows sending a call setup request from the S-CSCF to a home agent at the home address.” Id. at 31 (emphasis added). Then, citing the fact that Foti’s transport address 49 is a care-of address rather than a home address, the Examiner withdrew the rejections of claims 7, 8, 13, 20, 21, 26, 27, 30-32, 37, and 38, stating: 39 Xu is Xu, US 6,963,582 B1, issued on November 8, 2005. Req. Appeal Br. Ex. 6. Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 69 Examiner agrees with the PO and respectfully disagrees with the Third Party Requester’s comment regarding “Transport Address” not being “Home Address”. PO’s argument that “Transport Address” is not the “Home Address” is persuasive. Examiner has withdrawn the rejections of claims 7, 8, 13, 20, 21, 26, 27, 30, 31, 32, 37, and 38. Id. at 32. We disagree with the Examiner’s decision to withdraw the rejection. The proposed rejection does not require reliance on the non-roaming embodiment in Foti’s Figure 1 for claim 7’s third step. Instead, the proposed rejection relies on Foti in view of Gallant and Gustafson for the claimed third and fourth steps. The Examiner has not adequately explained why Requester’s reliance on Foti in view of Gallant and Gustafson for a teaching of the third and fourth steps is incorrect. Nor has such an explanation been provided by Patent Owner, who instead appears to assume (incorrectly) that the rejection requires that the third step be described or suggested by Foti without consideration of Gallant and Gustafson. The following argument, for example, fails to take into account Requester’s reliance on Gallant and Gustafson for the third step: There would be no reason nor would it have been obvious to one of skill in the art for the “Visited CSCF” to receive a “home address” of the “Terminating ME 22.” The “home address” would not have assisted in the call setup since the “Terminating ME 22” is not in the home network. Moreover, it would not have been possible for the “Visited CSCF” to receive the “home address” in “element 49” of Fig. 2B, since the “visited network’s location server does not know the home address” of Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 70 “Terminating ME 22.” (Burger Declaration, paragraph 26.) Accordingly, Patent Owner respectfully submits that it is incorrect and improper to assert that it would have been obvious to substitute a “home address” for the “transport address” referred to in “element 49” of Fig. 2B of Foti. P.O. Resp’t Br. 7. For the above reasons, we reverse the Examiner’s decision to withdraw the following rejections: 1. Claims 7, 8, 13, 20, 21, 26, 27, 32, 37, and 38 under 35U.S.C. § 103(a) for obviousness over Foti in view of Gallant and Gustafson. 2. Claims 9 and 22 under 35 U.S.C. § 103(a) for obviousness over Foti in view of Gallant, Gustafson, and Foti III. Pursuant to 37 C.F.R. § 41.77(b), these grounds of rejection are hereby designated as NEW GROUNDS OF REJECTION. As noted above, we sustain the Examiner’s decision to withdraw the rejection of claims 30 and 31 because these claims depend from a claim (i.e., claim 29) that is not under reexamination. V. DECISION The Examiner’s decision that claims 1, 5, 14, and 18 are unpatentable over the prior art is affirmed. The Examiner’s decision not to make Requester’s proposed rejections of claims 7-9, 13, 20-22, 26, 27, 30-32, 37, and 38 is affirmed-in-part (i.e., Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 71 (affirmed with respect to claims 30 and 31 and reversed with respect to claims 7-9, 13, 20-22, 26, 27, 32, 37, and 38). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate. However, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. . . . Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 72 Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board’s opinion reflecting its decision to reject the claims and the patent owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Board’s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board’s rejection is maintained or has been overcome. The Appeal 2014-001131 Reexamination Control 95/001,899 Patent 7,937,081 B2 73 proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Patent Owner’s Appeal: AFFIRMED Requester’s Appeal: AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b) For Patent Owner: FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON DC 20007-5109 For Third Party Requester: HAYNES AND BOONE, LLP IP SECTION 2323 VICTORY AVENUE, SUITE 700 DALLAS, TEXAS 75219 lb Copy with citationCopy as parenthetical citation