Ex Parte Beck et al

Patent Trial and Appeal Board

Feb 28, 2014

11864349 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/864,349 09/28/2007 Andre Beck Beck 8-14-26
(LCNT/127651
3346
46363 7590 02/28/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
AHMED, MOHAMMED
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/28/2014 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
PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALCATEL-LUCENT1
(Application 11/864,349)
____________

Appeal 2012-000001
from Technology Center 2400
____________

Before RICHARD TORCZON, JOHN G. NEW and HUNG H. BUI,
Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The appellant (Lucent) seeks relief from the rejection of claims 1, 3-12 and
14-22. We AFFIRM.
OPINION
Lucent discloses "a calendar notification service, whereby a calendar
notification originating in an enterprise network is provided to a remote enterprise

1 Br. 3 (real party-in-interest). Assignment records indicate the assignee is Lucent
Technologies Inc. (reel 019980, frame 0096), with a security interest to Credit
Suisse AG (reel 030510, frame 0627).
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user via a non-enterprise network."2 Claim 1, one of four independent claims,
defines the invention as:3
A method for delivering an enterprise calendar notification to
an intended recipient, comprising:
receiving the enterprise calendar notification, wherein the
enterprise calendar notification is received at a server of a non-
enterprise network, wherein the enterprise calendar notification is
generated in an enterprise network;
identifying the intended recipient of the received enterprise
calendar notification; and
in response to a determination that a service of the non-
enterprise network is active for the intended recipient, propagating the
enterprise calendar notification toward the intended recipient via the
non-enterprise network.
The examiner rejected the claims for obviousness4 from the combined
disclosures in the published applications of Qiu5 and Wollmershauser.6
Lucent and the examiner do not agree on the meaning of "enterprise
network".7 Neither has pointed us to an explicit definition of this contested term in
Lucent's specification.

2 Spec. 44:11-13.
3 Br. 20. All claim language in this opinion comes from the claims appendix to the
appeal brief. See Ans. 3, item (7) ("no comment").
4 Office Action 3 (19 Jan. 2011) [2001 OA], citing 35 U.S.C. 103.
5 C. Qiu et al., Caller ID information to internet protocol television displays,
US 2007/0121584 A1.
6 S.M. Wollmershauser et al., Method and apparatus for event modification,
US 2007/0217585 A1.
7 E.g., Ans. 9.
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FACTS AND FINDINGS
Lucent's disclosure
[1] Lucent broadly discloses two embodiments: a notification service, with the
notification originating in an enterprise network, and an enterprise dialing plan
service, which allows a remote user to use an enterprise dialing plan.8
[2] The enterprise dialing plan service is said to enable remote users to call local
users connected to the enterprise network and to enable the local users on the
enterprise network to call the remote users.9
[3] Lucent reports that its "invention provides service-level interaction between
different service domains, thereby enabling users connected via one service
domain to utilize services typically only available when connected via another
service domain."10
[4] According to Lucent, "service domains may include networks such as
enterprise networks, carrier telephony networks, IP television (IPTV) networks,
cable television networks, cellular networks, and the like, as well as various
combinations thereof."11
[5] Lucent's disclosure resists sharp distinctions between the types of networks,
e.g., a "user device directly connected to the enterprise network. . . may include
a telephone, computer, or other user device located in the office of the user."12
[6] Non-enterprise network devices similarly "may include a telephone,
computer, television, or other user device located outside the office of the user

8 Spec. 1:26-2:10.
9 Id. at 2:4-10.
10 Id. at 3:16-19.
11 Id. at 3:21-24. "IP" means "Internet Protocol". Id. at 40:25-26.
12 Id. at 6:29-33.
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(e.g., at the user's home or any other location at which the user does not have
direct access to the enterprise network)."13
[7] Lucent summarizes its specific embodiments as "e.g., providing enterprise
calendar notification service, enterprise dialing plan service, and the like, as
well as various combinations thereof from an enterprise network to a remote
user via one or more non-enterprise networks".14
[8] Claim 6, which depends from claim 1, adds the following limitation:15
wherein the non-enterprise network comprises at least one of a carrier
telephony network, an Internet Protocol (IP) television (IPTV)
network, and a cable television network.
[9] The examiner explained his understanding of "enterprise network" to mean
simply "a network which supports messaging services."16
[10] The examiner explained his understanding of "non-enterprise network" to
include an IPTV network.17
The Qiu published application
[11] Qiu "describes network-based methods and systems for transferring caller
ID information from a telephony network to an IPTV network".18
[12] Qiu's network-based system provides additional "telephony services, such as
cellular call notifications, voice and email message previewing and waiting,
instant messaging, and so forth, to IP-based TV users."19

13 Id. at 6:33-7:5.
14 Id. at 8:1-6.
15 Br. 20.
16 Ans. 11.
17 Ans. 13.
18 Qiu, ¶0008.
19 Id. at ¶0024.
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[13] In one Qiu embodiment, a mediation data base maps the external account
information of the user receiving the notification "to its corresponding user
account ID for his/her IPTV service."20
[14] The examiner found that Qiu does not "explicitly teach a calendar
notification being delivered to an intended recipient[, but that] Wollmershauser
teaches this limitation".21
The Wollmershauser published application
[15] Wollmershauser discloses "notification techniques, and more specifically []
a method and apparatus for event notification."22
[16] Wollmershauser describes embodiments that provide a computer-based
system for:23
detecting a calendar reminder event with associated calendar event
data, transmitting to a presence services system (PSS) a request for
presence information associated with an end user having a plurality of
communication devices, and receiving from the PSS synthesized
presence information corresponding to the end user, selecting one of
the communication devices according to the synthesized presence
information, and transmitting to the selected communication device a
notice associated with the calendar reminder event.
[17] A person having ordinary skill in the art would know that the functions of
the calendar reminder system, the PSS and the communication devices may be
interchanged or merged without affecting the invention.24

20 Id. at ¶¶0041 & 0045.
21 2001 OA 3-4.
22 Wollmershauser, ¶0003.
23 Id. at ¶¶0011 & 15.
24 Id. at ¶0017.
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[18] The communications network supporting Wollmershauser's system may
include internet and traditional telephony services, including IPTV.25
[19] The system permits the remote communications device to respond to
calendar reminder events, for example, with an email response.26
[20] The examiner found that a person having ordinary skill in the art would have
known to add Wollmershauser's calendar notification function to Qiu's inter-
network messaging "to keep efficient business communication between a user's
business network and their home network."27
ANALYSIS
Lucent argues that Qiu fails to teach or suggest an enterprise network.28 The
examiner relies on Qiu to teach "notification from one network to another
network".29 The examiner's reasoning is based on his understanding of "enterprise
network" and "non-enterprise network" as being essentially notification originating
and receiving networks, respectively.
It is long established that a claim under examination must be given its
broadest reasonable interpretation consistent with the specification as understood
by one of ordinary skill in the art.30 It is also long established to be error to read
limitations into the claim from the disclosure.31 All of the limitations must be in

25 Id. at ¶0018.
26 Id. at ¶0031.
27 2001 OA 4.
28 Br. 9.
29 Ans. 10.
30 E.g., In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983); accord In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989) (reversing narrow interpretation); In re
Priest, 582 F.2d 33, 37 (CCPA 1978) (same); accord Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).
31 E.g., Zletz, 893 F.2d at 321-22; Priest, 582 F.2d at 37; accord Phillips, 415 F.3d
at 1319-20.
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the claim, with the disclosure providing the definitions and context by which the
limitations are to be understood.32 Hence, the examiner's interpretation would be
unreasonable if, for example, he ignored an express definition or disclaimer in the
specification, unnecessarily excluded preferred embodiments or otherwise
thwarted the inventor's unambiguously stated intent. Ambiguity in the disclosure,
however, falls short of the sort of clear expression of inventor intent required in the
case law.33
In the present case, Lucent has not pointed us to an express definition in the
specification for enterprise and non-enterprise networks. Instead, the disclosure is
at pains to emphasize the mixed and interchangeable nature of such networks.
This teaching is consistent with the teachings of the references, particularly
Wollmershauser, which noted the art's understanding that mixed networks could be
employed. While the detailed embodiments on which Lucent's argument relies are
arguably narrower than the examiner's interpretation, we cannot limit the claims to
those embodiments. The examiner's broad interpretation would include Lucent's
embodiments, specifically those involving telephony and IPTV. Given the broad
understanding in Lucent's disclosure and in the prior art, we cannot conclude that
the examiner's interpretation is unreasonable.34

32 Phillips, 415 F.3d at 1316.
33 E.g., Starhome GmbH v. AT&T Mobility LLC, App. No. 2012-1694, slip op. 13
(Fed. Cir. 2014); Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
1370 (Fed. Cir. 2005).
34 We note that even if "enterprise network" were too narrow in itself to include a
telephony network, the rejection is based on an obviousness theory. The art's
understanding that network-to-network notifications can span a variety of network
types would have made its application to an enterprise network at least obvious to
try.
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Lucent contends that the examiner has failed to show "enterprise calendar
notification" in Qiu because the examiner failed to show an enterprise network.35
As discussed above, Lucent's interpretation of its claim is narrower than its actual
language read in light of the specification. Moreover, the examiner found the
teaching regarding calendar notification in Wollmershauser, not Qiu.
Lucent contends that "the claimed non-enterprise network comprises an IP
Multimedia Subsystem (IMS) application server and an IPTV server. However,
the Examiner ignored those teachings of the specification in rejecting the claims."36
Lucent's argument would have us read in elements from a specific embodiment
that are not recited in the claim. As discussed above, our reading limitations from
the specification into the claim would be reversible error.
Lucent contends that Wollmershauser does not teach a "calendar
notification" that is propagated to an intended recipient.37 Wollmershauser
discloses a first network "transmitting to the selected communication device a
notice associated with the calendar reminder event."38 Lucent's contention is not
consistent with the evidence of record.
Lucent contends that the examiner has relied on hindsight to combine the
references.39 The examiner's finding that those in the art would have appreciated
the value of adding Wollmershauser's calendar notification to the inter-network
notifications that Qiu provides is credible on its face. Both Wollmershauser and
Qiu stress the possibility of adding functions (e.g., email message previewing and
instant messaging) beyond their base functions. Thus, the examiner's proposed

35 Br. 11-12.
36 Id. at 14.
37 Id.
38 See n. 23, supra.
39 Br. 15-16.
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modification is a natural, commonsensical combination of existing technologies
that would have been consistent with the goals of those technologies. We cannot
find that the examiner's finding lacked substantial evidence in the record.
For claims 11, 12 and 20, Lucent relies on its arguments for claim 1.40 For
claims 11 and 20, Lucent further notes means-for language in the claims.41 In
particular, Lucent contends that claim 20 requires "means for computing said
spanning tree using said network topology information."42 We are not able to
locate this limitation in claim 20.43
Regarding the other means-for limitations, Lucent is correct that those
limitations must be interpreted in the manner specified in 35 U.S.C. 112(6).44
Lucent argues that the "structures disclosed by the Appellant cannot be
disregarded. Claims 11 and 20 are not rendered obvious because Qiu alone or
combined does not teach or suggest all elements of claims 11 and 20." This
argument does not identify exactly which means-for limitations Lucent believes
were misinterpreted and exactly why Lucent believes the art did not render the
properly interpreted limitations obvious. The examiner explained how he
understood claim 20 to read on the prior art.45 We decline Lucent's implicit
invitation to discern for ourselves in the first instance what the defect in the

40 Br. 16.
41 Id. at 16-17.
42 Id. at 17.
43 See Br. 23 (claims appendix, claim 20). In this context, the reference to a
"Kaluve" reference (Br. 17 & Reply 2) also appears to be misplaced.
44 The version of the statute in effect at the time of the final rejection. Although
the statute has been internally renumbered and slightly revised since briefing of the
appeal was completed, no one has drawn our attention to a change that would
affect the decision in this case. We are not aware of such a change.
45 2011 OA 9, referring to analysis for claim 12 at 6-7. See In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011) (explaining the notice function of a rejection).
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examiner's analysis might have been because then we would not have the benefit of
the examiner's response to our analysis.46 Because Lucent's implied arguments
might well have merit, our decision should not be understood to bar Lucent from
actually making the arguments in any further prosecution.
Lucent argues that the examiner improperly grouped claims 1 and 20
together because the claims have different limitations.47 Claim differentiation
means that all claims that are grouped ordinarily should have different limitations.
The better (and more practical) distinction lies not in differences in the limitations
but rather in differences in how the claims are argued. As noted above, Lucent has
not actually provided distinct arguments for claims 1 and 20, except for a reference
to a means-for limitation that does not exist. Thus, as a matter of substance, there
does not appear to have been any practical defect in the claim grouping. Apart
from the substantive considerations treated above, to the extent that Lucent
contends "claim 20 has not been properly examined"48 because the examiner did
not follow proper examining procedure, that contention raises a supervisory matter
that must be addressed to the patent examining corps by petition. The board does
not supervise the examining corps.
Lucent's reply brief restates the arguments of its brief regarding claim 1 and
provides no further basis for reversal.

46 See, e.g., Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 n.2
(Fed. Cir. 2008) (explaining why skeletal argument does not preserve an issue); cf.
Ans. 15 (stating with an equal lack of detail that the examiner believes his
treatment of claims 11 and 20 was proper).
47 Br. 17. The examiner actually grouped claim 20 with claim 12. 2011 OA 9.
48 Br. 17.
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Lucent has not provided independent reasons for the separate patentability of
the remaining claims, which we accordingly treat as falling with their respective
independent claims.49
HOLDING
The examiner's rejection of claims 1, 3-12 and 14-22 is—
AFFIRMED

For the appellant: EAMON J. WALL, Wall & Tong, L.L.P., of Eatontown, New
Jersey.

sld

49 C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371, 1378 n.2 & 1381 n.4 (Fed. Cir.
2012).