Ex Parte Bennett et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10225179 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY MARK BENNETT and
WILLIAM GRANT GROVENBURG
____________

Appeal 2009-000737
Application 10/225,179
Technology Center 2400
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JEAN R. HOMERE, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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The Patent Examiner rejected claims 1-17. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as follows.
The present invention provides an apparatus including a
connecting unit to connect a communication line in which a
plurality of VoIP (Voice Over Internet Protocol) data streams
are transmitted. Each of the VoIP data streams is associated
with a VoIP phone call. The apparatus further includes an
isolating unit to isolate a respective VoIP data stream from the
plurality of VoIP data streams to monitor the respective VoIP
data stream.
(Spec. ¶ 0009.)

ILLUSTRATIVE CLAIM
1 A method comprising:
monitoring a communication line through which Voice
Over Internet Protocol (VoIP) data streams are transmitted
between a first VoIP gateway and a second VoIP gateway, the
first and second VoIP gateways each providing a VoIP phone
with access to the communication line, to identify and monitor
a respective data stream that is transmitted through the
communication line and which is associated with a respective
phone call.

REJECTION
Claims 1-17 stand rejected under 35 U.S.C. 103(a) as unpatentable
over U.S. Patent Application Publication No. 2003/0093563 A1, May 15,
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2003, filed Oct. 9, 2002 ("Young") and U.S. Patent Application Publication
No. 2002/0176404 A1, Nov. 28, 2002, filed Apr. 15, 2002 ("Girard").

ISSUE
Regarding independent claims 1 and 7, the Examiner makes the
following respective findings.
Young discloses . . . monitoring a communication line through
which VoIP (Voice Over Internet Protocol) data streams are
transmitted to . . . monitor (see capture packet stream and
analyze on page 4 section [0053]) a respective data stream
transmitted through the communication line and associated with
a respective phone call.
(Ans. 3.) "Young discloses . . . a monitoring device monitoring the filtered
data stream (see capture and analyze packet stream and VoIP calls on page 4
section [0053])." (Id. at 5-6.) Regarding independent claims 15 and 16, he
finds that "Young first discloses the filtering of the packets by capture
specific packet based on the data type and sends it to the MAND device
while letting normal data pass through (see section [0059])." (Ans. 11.)
Regarding independent claim 17, the Examiner similarly finds that "Young
first discloses the filtering of the packets by capture specific packet from the
data stream based on the data type and sends it to the MAND device while
letting other data pass through (see section [0059])." (Id.)

The Appellants argue "that provisional patent application
no. 60/328,217 does not properly support the subject matter that the
Examiner has relied upon to make the rejections of claims 1-17." (Appeal
Br. 11.) Therefore, the issue before us is whether the Examiner erred in
finding that Provisional Patent Application No. 60/328,217 ("Young '217")
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properly supports the subject matter of Young relied upon to reject the
claims.

FINDINGS OF FACT
The Appellants filed their patent application on August 22, 2002.
Young was filed on October 9, 2002, which is after the filing date of the
present application. Young claims priority to Young '217, which was filed
on October 10, 2001.

ANALYSIS
The 35 U.S.C. 102(e) critical reference date of . . . U.S.
application publications . . . entitled to the benefit of the filing
date of a provisional application under 35 U.S.C. 119(e) is the
filing date of the provisional application with certain exceptions
if the provisional application(s) properly supports the subject
matter relied upon to make the rejection in compliance with 35
U.S.C. 112, first paragraph.
MPEP § 2136.03.III.

A written "description must 'clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.'" Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir. 2010) (en banc)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). "In other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date." Id.

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Here, the part of Young that the Examiner relies on to teach the
monitoring limitation of claims 1 and 7 follows. "The MAND [i.e.,
Multimedia Access Network Device] can also be activated to capture packet
streams and VoIP calls to provide analysis of jitter, packet loss and reasons
for variable voice or other media quality." (¶ 0053.)
As support for this part of Young, the Examiner finds that Young '217
"teaches remote monitoring of the voice data traffic by looking at latency,
jitter, MOS scores and other QoS or data measurement (see page 11
section 4.1.15)." (Ans. 10.) For its part, Section 4.1.15 of Young '217
follows.
The MAND includes a traffic simulation client that allows
remote monitoring of the quality of service that can be
delivered to the customer premise. This client can be activated
and then controlled remotely by a test application. The test
application can initiate VOIP as well as other data sessions
between the test client in the MAND and test clients placed in
other parts of the network to simulate different traffic patterns.
The test application can then report a variety of test results
including latency, jitter, MOS scores and other QoS or data
measurements.
Comparing the aforementioned part of Young with Section 4.1.15 of Young
'217, we agree with the Appellants that "Young '217 does not disclose a
MAND that can capture packets for analysis, but rather only discloses a
MAND that can generate packets and transmit them elsewhere so that a
remote test application can perform some sort of remote analysis." (Reply
Br. 3.)
In an ex parte appeal, the Board of Patent Appeals and Interferences
"is basically a board of review — we review . . . rejections made by patent
examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
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"The review authorized by 35 U.S.C. Section 134 is not a process whereby
the examiner . . . invite[s] the [B]oard to examine the application and resolve
patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110,
1112 (BPAI 1999).
Here, the part of Young that the Examiner relies on to teach the
filtering and isolating limitation of claims 15-17 follows.
[T]he MAND 1000 can be configured as a VoIP ALG
(Application Layer Gateway) 500 and proxy only by turning off
all of the other features through the management interface . . . .
This allows all of the normal data traffic to continue to be
handled by the existing network devices, and only voice or
other multimedia communications traffic to be handled by the
MAND.
(¶ 0059.) We agree with the Appellants that "the Examiner has not indicated
where appellants' 'filtering' and 'isolating' steps are disclosed by Young
'217." (Reply Br. 4.) We decline to examine Young '217 in greater detail
than the Examiner to resolve whether it supports the subject matter of
Paragraph 59 of Young.
Based on the aforementioned facts and analysis, we conclude that the
Examiner erred in finding that the written description of Young '217
properly supports the subject matter of Young relied upon to reject the
claims.

DECISION
We reverse the rejection of claims 1-17.

REVERSED

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