Ex Parte Bakshi et al

Patent Trial and Appeal Board

Jun 8, 2015

12481179 (P.T.A.B. Jun. 8, 2015)

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.
12/481,179 06/09/2009 Yury Bakshi 2008-0022 (40147/12001) 4745
83719 7590 06/09/2015
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
EXAMINER
HUSSAIN, IMAD
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
06/09/2015 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
____________________

Ex parte YURY BAKSHI and DAVID A. HOEFLIN
____________________

Appeal 2013-002504
Application 12/481,179
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, LINZY T. McCARTNEY, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-002504
Application 12/481,179

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–9, 11–15, and 17–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
formatting added):
1. A method comprising:
[(A)] receiving, by a border element connected to a
communications network, a request to initiate a communications
session;
[(B)] determining whether the request is a high-priority
request;
[(C)] initiating a high-priority communication setup process
if the request is a high-priority request, the high-priority
communication setup process being a parallel communication setup
process; and;
[(D)] initiating a low-priority communication setup process
if the request is not a high-priority request, the low-priority
communication setup process being a sequential communication setup
process.

Rejections
The Examiner rejected claims 1, 3–9, 11–15, and 17–20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Batteram
(US 2007/0253412 A1, pub. Nov. 1, 2007) and Hill (US 2010/0046504 A1,
pub. Feb. 25. 2010).1

1 Separate patentability is not argued for claims 3–9, 11–15, and 17–20.
Rather, the arguments for claims 8 and 15 merely reference the arguments
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The Examiner rejected claims 1, 3–9, 11–15, and 17–20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Batteram
and Watanabe (US 6,304,571 B1, iss. Oct. 16, 2001).2
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) over Batteram and Hill because:
[N]owhere does Batteram disclose or suggest that the
“dedicated, high speed, highly reliable prioritizing SIP network
element” performs a setup process any different from that
performed by the “prioritizing SIP network elements having
lower speed, reliability, and like parameters.” (See id.,
¶¶ [0040], [0112]-[0119], passim.) Rather, the Assignee
respectfully submits that those of skill in the art would
understand the disclosure of Batteram, in differentiating the two
types of prioritizing SIP network elements as having different
speed and reliability, to be describing two types of elements
that are composed of physically different structures, such as
through the use of improved hardware in the high-priority
prioritizing SIP network elements. Therefore, the Assignee
respectfully maintains that Batteram does not disclose or
suggest the use of a different process for high-priority
messages than for low-priority messages, but, rather, merely
describes providing high-priority messages with preferential
treatment (whether preferential queuing or improved hardware)
within the same setup process.
App. Br. 5, emphasis added. Further:

for claim 1. App. Br. 6. Except for our ultimate decision, claims 3–9, 11–
15, and 17–20 are not discussed further herein.
2 Separate patentability is not argued for claims 3–9, 11–15, and 17–20.
Rather, the arguments for claims 8 and 15 merely reference the arguments
for claim 1. App. Br. 6. Except for our ultimate decision, claims 3–9, 11–
15, and 17–20 are not discussed further herein.
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One of skill in the art, interpreting the claims in light of the
Specification, would not consider the differences between low-
priority and high-priority call setup described by Batteram to
rise to the level of being two different processes (i.e., “a low-
priority communication setup process” and “a high-priority
communication setup process,” as recited in claim 1), but,
rather, a single process applied with differing parameters.
Reply Br. 5–6, emphasis added.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) over Batteram and Watanabe because:
The Assignee respectfully submits that Batteram does not
disclose or suggest “initiating a high-priority communication
setup process if the request is a high-priority request” and
“initiating a low-priority communication setup process if the
request is not a high-priority request,” as recited in claim 1, for
the reasons discussed above with reference to the rejection of
claim lover Batteram in view of Hill. The Assignee
respectfully submits that Watanabe fails to cure this deficiency.
App. Br. 7, emphasis added.

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments that the Examiner has erred. We disagree with
Appellants’ conclusions.
As to Appellants’ above contention 1, we disagree. It is our view that
Appellants’ argument ignores the actual reasoning of the Examiner’s
rejection. Instead Appellants attack Batteram singly for lacking a teaching
of a limitation when the Examiner relied on Batteram in combination with
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Hill to show the limitation was obvious. It is well established that one
cannot show nonobviousness by attacking references individually where the
rejection is based on a combination of references. See In re Keller, 642 F.2d
413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
The Examiner did not rely solely on Batteram to show there are two
setup processes where the low-priority process is sequential and the high-
priority process is parallel. Rather, the Examiner relied on Batteram to show
there are two setup processes where the low-priority process is sequential
and the high-priority process exists. Then the Examiner relied on Hill to
show that a high-priority process can be parallel. Final Act. 4. Contrary to
Appellants’ argument, the Examiner does not rely on Batteram alone to
show “two different communication setup processes for differently
prioritized messages.” App. Br. 4.
Further, even if we were to agree with Appellants that the Examiner
did rely on Batteram to show the argued “two different communication setup
processes,” we would find Appellants’ arguments unpersuasive. Appellants
use the phrase “different process” (and similar phrases) in their argument
repeatedly. We find no such phrase(s) in Appellants’ claim 1. Nor do we
find this phrase(s) used in the Examiner’s rejection. Appellants do not
dispute the Examiner’s finding that Batteram describes at least processing
high-priority and low-priority requests on “two types of prioritizing SIP
network elements . . . having different speed and reliability.” App. Br. 5.
Apparently, Appellants are arguing that while the two branches (high and
low priority) in Batteram differ, they are not different enough to be
considered different by an artisan. We disagree. Appellants’ own
Specification describes high and low priority processing branches that differ
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only in the timing of the process steps. Appellants’ sequential call setup
process is described as “one initial request is sent and, if necessary, followed
by retries” (Spec. 5) and Appellants’ parallel call setup process is described
as “the simultaneous transmission of multiple requests” (Spec. 7). The
requests in each branch are the same and the two processes differ only in the
timing of the same requests. In our view, an artisan would find the two
process branches of Batteram’s high/low priority processing more different
than the two process branches of Appellants’ high/low priority processing.
As to Appellants’ above contention 2, we disagree. Appellants
premise this contention on a deficiency in the Examiner’s rejection over
Batteram and Hill. As discussed above, we find no such deficiency.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3–9, 11–15,
and 17–20 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 3–9, 11–15, and 17–20 are not patentable.

DECISION
The Examiner’s rejections of claims 1, 3–9, 11–15, and 17–20 are
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls