Ex Parte Benco et al

Patent Trial and Appeal Board

Feb 5, 2015

12039126 (P.T.A.B. Feb. 5, 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.
12/039,126 02/28/2008 David S. Benco LUTZ 2 00578 6928
48116 7590 02/09/2015
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
ROBERTS, BRIAN S
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
02/09/2015 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 DAVID S. BENCO
and MARK A. RISTICH
____________

Appeal 2012-008501
Application 12/039,126
Technology Center 2400
____________

Before LEE E. BARRETT, CARLA M. KRIVAK, and
JOHNNY A. KUMAR Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4 and 9–18. Claims 5–8 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The Specification describes a method and apparatus to handle calls to
legacy non-IP (Internet Protocol) based phones (wired or wireless) within an
IPTV (Internet Protocol Television) network based system. An application
server acts as a bridge between the different networks by operating as an
SCP (Service Control Point) on the non-IP side while still performing as an
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application server on the IPTV network. See Fig. 1. Appellants refer to this
as the cross domain blending aspects of the application server.
Claim 1 is reproduced below.

1. A method of allowing a non-Internet Protocol (IP)-
based network to interact with an Internet Protocol Television
(IPTV)-based network, the method comprising:
receiving an indication at an IPTV Mediation Application
Server (IPTV Mediation AS) that a subscriber to IPTV service
is watching a television, wherein the television is connected to
an IPTV set-top box (IPTV STB) in a home viewing network
and the IPTV Mediation AS is connected to a service switching
point and acts as a service control point;
receiving a call from a caller directed to a circuit-
switched communication device of the subscriber;
suspending call processing and giving control of the call
to the IPTV Mediation AS, wherein the IPTV Mediation AS
mediates all circuit-specific interactions;
interacting with the home viewing network and sending
instructions to the IPTV STB regarding a pop-up message to be
played on the television;
receiving instructions for handling the call at the IPTV
Mediation AS; and
sending the instructions for handling the call to the
service switching point.

THE PRIOR ART
Branam et al. (Branam) US 2007/0209065 A1 Sept. 6, 2007
Walter et al. (Walter) US 2007/0250845 A1 Oct. 25, 2007
Koch et al. (Koch) US 6,668,049 B1 Dec. 23, 2003

THE REJECTION
Claims 1–4 and 9–18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Branam in view of Walter and Koch.
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ANALYSIS
Independent claims 1, 9, and 12
The arguments for independent system claim 9 and independent
non-transitory program storage medium claim 12 are essentially identical as
those for independent method claim 1. Accordingly, our discussion for
claim 1 applies equally to independent claims 9 and 12. The following
discussion supplements the Examiner’s thorough and well-reasoned
statement of the rejection and response to Appellants’ arguments in the Final
Office Action and the Examiner’s Answer, which we adopt as our own.
Appellants argue that the combination of Branam, Walter, and Koch
does not teach or suggest an “IPTV Mediation Application Server (IPTV
Mediation AS)” where “all service control data and logic resides within one
network element.” App. Br. 10–11; Reply Br. 3. It is argued that the
“combination would not be obvious to try as no suggestion of using only an
IPTV Mediation application server to receive and send instructions between
a phone and IMS network system exists in the prior art.” (Emphasis added.)
App. Br. 12. It is argued that the Examiner concedes that the combination of
Branam and Walter does not teach receiving instructions for handling the
call at the IPTV Mediation AS and sending the instructions for handling the
call to the service switching point (SSP) and relies on Koch for this teaching.
App. Br. 10. Appellants argue that “Koch does not disclose the cross
domain blending aspects of the application server or receiving instructions
for handling the call at the IPTV Mediation AS and sending the instructions
for handling the call to the service switching point, as recited in claim 1”
(App. Br. 10) because “[t]he cited portion of Koch (col. 10, lines 47-59)
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requires both an application server and a Service Control Point (SCP)
working in tandem to handle a call,” id. at 11, whereas claim 1 “recites a
single IPTV application server acting as an SCP server to receive and send
the instructions,” id.
The Examiner notes several times that the rejection does not rely on
Koch for the IPTV Mediation AS acting as an SCP. Final Act. 3, 8-10. The
Examiner points out that Branam, paragraph 88, is relied on to teach a single
controller 502 corresponding to the IPTV Mediation AS acting as an SCP
which interacts between a non-IP-based network and an IPTV-based
network. Final Act. 3, 8–10; Ans. 5, 11. The rejection concludes that it
would have been obvious to modify Branam to receive instructions at the
controller and send them to the SSP in view of Koch’s teaching of an
application server receiving instructions for handling the call from a
subscriber responding to a pop-up message played on the television and
sending the instructions to the SSP. Final Act. 2–4, 8–10; Ans. 5–7.1 Thus,
the rejection does not rely on the separate application server and SCP in the
one embodiment of Koch as the IPTV Mediation AS acting as an SCP.
Nevertheless, the Examiner also notes that Koch discloses structure
corresponding to an IPTV Mediation AS acting as an SCP at Fig. 2, col. 5,

1 Although the Specification discloses that “instructions for handling the
call” are sent by the user selecting an option in response to the pop-up
message (Spec. ¶¶ 29, 37), claim 1 only recites “receiving instructions for
handling the call at the IPTV Mediation AS,” which does not require
receiving instructions from a user selection at the set top box. Technically,
the instructions for handling the call could come from some other location
unrelated to the set top box, such as a subscriber database. Nevertheless,
Koch teaches receiving instructions from a user selection and sending the
instructions to a service switching point.
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lines 37–39, and col. 10, lines 47–54 (Final Act. 4; Ans. 5), and Fig. 7,
col. 11, lines 38–42 (Ans. 13). The Examiner also responds that claim 1
does not recite that “all service control data and logic resides within one
network element.” Ans. 12.
Initially, with regard to Appellants’ argument that the IPTV
Mediation AS is a “single network element,” we agree with the Examiner
that this is not recited in claim 1. More importantly, however, Appellants do
not explain what or why structural limitations are implied by a “single
network element.” The IPTV Mediation AS acting as an SCP is represented
as a single network element, block 18 in Fig. 1, and is recited as a single
claim element. However, it is often the case that a single block in a drawing
may consist of several elements. The disclosed and claimed IPTV
Mediation AS is simply a name for an element that performs various
functions, not a description of structure. There is nothing in the claim that
precludes the IPTV Mediation AS from consisting of a several discrete
network elements (SCP, server, network, etc.) or that requires that it must be
contained in a single enclosure or located at a single location. We see no
reason why an imaginary box drawn around a group of network elements in
the prior art that together perform the functions cannot be labeled an IPTV
Mediation AS. Nevertheless, as correctly found by the Examiner, Branam
(para. 88 and controller 502 in Fig. 12) and Koch (Fig. 2 and col. 5,
lines 37–39) both disclose structure corresponding to a single element IPTV
Mediation AS acting as an SCP.
Appellants’ sole response to the Examiner’s finding that Branam
teaches an IPTV Mediation AS at paragraph 88 is: “Branam, however, gives
an SCP and an application server as exemplary options of a controller
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system.” This fails to explain why the controller 502 in Fig. 12 of Branam
does not meet the claim limitations. Assuming that the IPTV Mediation AS
must be a single network element, the controller 502 in Branam is a single
network element that communicates with public switched telephone network
(PSTN) 206A, which may include service switching point (SSP)
functionality (Branam, ¶¶ 88-89), and communicates with set top box 216B
and device 214B to provide caller notification in an IPTC-based network
(Branam, ¶ 96). Branam’s statement that the controller system is “e.g.,
service control point (SCP) server or application server” (Branam, ¶ 88) says
that an SCP server can perform the described functions. The fact that the
controller 502 is not called an “IPTV Mediation AS” is not important. We
agree with the Examiner’s finding (Final Act. 3, 8–10; Ans. 5, 11) that
Branam discloses a single element IPTV Mediation AS acting as an SCP.
Nothing more is required in order to affirm the rejection. Nevertheless, we
discuss the additional teachings in Koch.
Koch describes that, with respect to the embodiments of Figs. 1 and 2,
the “SCP 42 includes application logic needed to complete the notification
and call processing transactions in telephone network 40” (Koch, col. 5,
lines 37-39). Koch describes that in some embodiments, as shown in Fig. 3,
“an application server may be used to provide at least a portion or all of the
application logic for notifying the subscriber and for receiving the
subscriber’s call processing instructions” (Koch, col. 6, lines 21-24). Thus,
Koch describes that the structure for interfacing between a non-IP-based
network and an IPTV-based network may be an SCP with application logic
or an SCP with a separate application server.
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Appellants argue with respect to Fig. 2 of Koch that “[t]he Office
Action seems to believe that a person having ordinary skill in the art would
see handling a call using an IPTV application server acting as an SCP as
obvious in light of a SCP having application logic that handles the entire
call.” App. Br. 11. To the extent Appellants imply that the SCP having
application logic that handles the call in Koch is not the same as an IPTV
application server acting as an SCP, Appellants fail to explain why there is a
difference in structure or function. In any case, Appellants’ argument about
Koch is not persuasive because the IPTV Mediation AS acting as an SCP in
the rejection corresponds to the controller in Branam. Koch is only relied on
for teaching receiving instructions from a user selection and sending the
instructions to a service switching point.
Appellants also argue with respect to Fig. 3 of Koch: “With regard to
the singular embodiment, combining the two elements into an application
server is not obvious to one having ordinary skill in the art. An SCP is not
the same as an application server, even if they are both capable of receiving
and sending instructions.” App. Br. 11-12. Koch expressly describes that
the structure for interfacing between a non-IP-based network and an
IPTV-based network may be a singular element SCP with application logic
as in Fig. 2 or an SCP with a separate application server as in Fig. 3. Thus,
no obviousness reasoning is required to combine two elements. Appellants
do not explain why there is any difference between an SCP that includes
application logic and an application server that acts as an SCP. In any case,
Appellants’ argument is not persuasive because the IPTV Mediation AS
acting as an SCP in the rejection corresponds to the controller in Branam.
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For the foregoing reasons, the rejection of independent claims 1, 9,
and 12 is affirmed.

Dependent claims 2–4, 10, 11, and 13–18
Appellants state: “Separate and individual consideration of the
dependent claims is respectfully requested.” App. Br. 12, 16, and 20. This
does not constitute and separately argue the patentability of the dependent
claims as required by 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, the
rejection of claims 2–4, 10, 11, and 13–18 stands or falls together with the
rejection of independent claims 1, 9, and 12. The rejection of claims 2–4,
10, 11, and 13–18 is affirmed.

CONCLUSION2
The rejection of claims 1–4 and 9–18 is affirmed.

2 In the event of further prosecution of the merits, the Examiner may want
to consider rejecting independent claims 9 and 12 as misdescriptive and/or
indefinite under 35 U.S.C. § 112, second paragraph.
Claim 9 recites, in part, that “the IPTV Mediation AS is operative to:
. . . receive a call from a caller directed to a circuit-switched communication
device of the subscriber; suspend call processing and give control of the call
to the IPTV Mediation AS.” These steps are performed by the Service
Switching Point (SSP), not the IPTV Mediation AS, as claimed.
The preamble of claim 12 recites “[a] non-transitory program storage
medium storing instructions that, when executed by a computer, cause the
computer to: . . . .” This implies that all the instructions are executed by the
same computer. The claim does not say where the computer is, but
assuming the computer is at the IPTV Mediation AS, instructions to “receive
a call from a caller” and “suspend call processing and giving control of the
call to the IPTV Mediation AS” are not performed by the IPTV Mediation
AS. Not every method can be directly transformed into a computer program
product by just changing the preamble to say that the steps are performed by
instructions executed by a computer.
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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
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