Ex Parte Clark et al

Patent Trial and Appeal Board

Feb 3, 2017

11993748 (P.T.A.B. Feb. 3, 2017)

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.
11/993,748 05/07/2010 David William Clark 08929083US 9520
21028 7590 02/07/2017
Cowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTAWA, ON KIP 1C3
CANADA
EXAMINER
ANSARI, NAJEEBUDDIN
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
02/07/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patprosec @ gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM CLARK, JONATHAN ALLAN
ARSENAULT, JEFFREY WILLIAM DAWSON, and ERIC JOHN WOLF
Appeal 2016-002976
Application 11/993,748
Technology Center 2400
Before ST. JOHN COURTENAY III, ERIC FRAHM, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—86, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal 2016-002976
Application 11/993,748
Invention
The disclosed and claimed invention on appeal “relates generally to
communications over a data network and, more particularly, to a method and
system for managing communications for a group of communication clients
sharing a common customer identifier.” (Spec. 1,11. 8—10).
Representative Claim
1. A method of implementing a virtual private branch
exchange (PBX) feature for a customer associated with a
plurality of endpoints, comprising:
receiving information regarding a call;
determining from the information regarding the call if the call is
an external inbound call or an internal call from one of the
endpoints that identifies a different particular one of the
endpoints;
responsive to determining that the call is an external inbound
call, causing the call to be routed to the plurality of endpoints
associated with the customer without being passed through a
PBX or key system;
responsive to determining that the call is an internal call from
one of the endpoints that identifies a different particular one of
the endpoints, causing the call to be routed to the particular
one of the endpoints without being passed through a PBX or
key system.
(Contested limitation emphasized, hereinafter referred to as the “internal
call” limitation.)
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Rejections
A. Claims 1—6, 12—16, 27—33, 36—39, 46—54, 61, 63—68, and 75—86 are
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
the combination of Forte (US 2006/0245569 Al; Nov. 2, 2006) in
further view of Hakusui (US 2007/0047534 Al; Mar. 1, 2997)
hereinafter “Forte” and “Hakusui”, respectively.
B. Claims 8-11, 17, 19-26, 34, 35, 40-A5, 55-60, 62, and 69-74 are
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
the combination of Forte, Hakusui, in view of Mansfield (US
2003/0035523 Al; Feb. 20, 2003) hereinafter “Mansfield”.
C. Claims 7 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Forte, Hakusui, in view of
Dolan et al. (US 2006/0227957 Al; Oct. 12, 2006) hereinafter
“Dolan”.
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. We
address rejections B and C separately, infra. To the extent Appellants have
not advanced separate, substantive arguments for particular rejected claims
or issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We find Appellants’ arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action from which this appeal
is taken, and (2) the findings, legal conclusions, and explanations set forth in
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Application 11/993,748
the Answer in response to Appellant’s arguments (Ans. 3—8). We highlight
and address specific findings and arguments for emphasis in our analysis
below.
Rejection A of Representative Claim 1
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Forte and Hakusui would have taught or suggested the
contested “internal call” limitation:
responsive to determining that the call is an internal call from
one of the endpoints that identifies a different particular one of
the endpoints, causing the call to be routed to the particular
one of the endpoints without being passed through a PBX or
key system[,]
within the meaning of representative claim 1 (emphasis added)? 1
Appellants contend, inter alia, that Forte does not teach or suggest the
negative limitation because:
Forte’s solution presumes the use of a PBX, both in case of a
direct extension call from one internal telephone device to
another internal device (see paragraph 0029 and FIG. 3, step
104) and the case of an inbound DID [(Direct Inward Dial 117)]
call (see paragraph 0037 and FIG. 4, steps 210 and 214). Thus,
the teachings of Forte are contrary to those recited in claim 1,
and it is difficult to see how Forte could be reasonably
interpreted as teaching the feature of “responsive to determining
that the call is an internal call from one of the endpoints that
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf Spec. 28,11. 2A-27: “While specific
embodiments of the present invention have been described and illustrated, it
will be apparent to those skilled in the art that further modifications and
variations can be made without departing from the scope of the invention as
defined in the appended claims.” See also Spec. 5,1. 22: “DETAIFED
DESCRIPTION OF NON-FIMITING EMBODIMENTS.”
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Application 11/993,748
identifies a different particular one of the endpoints, causing
the call to be routed to the particular one of the endpoints
without being passed through a PBX or key system” (emphasis
added) as recited in claim 1.
Appeal Br. 12—13.
Claim Construction
At the outset, we note the negative limitation “without being passed
through a PBX or key system’'’ (claim 1) (emphasis added) was added by
amendment during prosecution. Appellants point to written description
support (i.e., a reason to exclude) for the negative limitation on page 27 of
the Specification, lines 21—23: “In addition, it is noted that customer 101A
does not need to purchase or lease any PBX or key system hardware in
order to benefit from the present solution.” 2 (See Appeal Br. 5) (emphasis
added).
We note the Examiner relies on Hakusui, not Forte, for teaching or
suggesting the contested negative limitation. (Final Act. 4—5; Ans. 5),
although in the “Response to Arguments” (Ans. 4), the “Examiner questions
[Appellants’] argument that the wireless connect unit of Forte cannot be
considered an endpoint within the enterprise network when the present
application itself discloses similar features.”3 * 5(emphasis added).
2 See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”).
3 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.).
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“Virtual Private Branch Exchange ” versus “PBX”
We additionally note the distinction between the preamble term
“virtual private branch exchange (PBX)” and the similar term “PBX” that is
twice recited within the body of claim 1 (i.e., within each negative limitation
—“without being passed through a PBX or key system”).4 In considering
claim 1 as a whole, and in light of the Specification (1,11. 29-33), we
conclude the term “PBX” refers to any non-virtual PBX system, under a
broad but reasonable interpretation.5
Turning to the Specification for context, we note a “virtual private
branch exchange service” is expressly disclosed on page 12, line 33 of
Appellants’ Specification (using the acronym VPBX instead of PBX). We
find the “Detailed Description Of Non-Limiting Embodiments” section of
the Specification (beginning on page 5) is focused on descriptions of the
virtual private branch exchange (VPBX) service, as distinguished from the
prior art (non-virtual) “PBX” described in the “Background” section of the
Specification (1): “A private branch exchange (PBX) or key system is
4 “[T]he use of [two similar but different] terms in close proximity in the
same claim gives rise to an inference that a different meaning should be
assigned to each . . . That inference, however, is not conclusive; it is not
unknown for different words to be used to express similar concepts, even
though it may be poor drafting practice.” Bancorp Services, L.L.C. v.
Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (citing Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir.
1996) (stating that “[i]f the terms ‘pusher assembly’ and ‘pusher bar’
described a single element, one would expect the claim to consistently refer
to this element as either a ‘pusher bar’ or a ‘pusher assembly, ’ but not both,
especially not within the same clause. Therefore, in our view, the plain
meaning of the claim will not bear a reading that ‘pusher assembly’ and
‘pusher bar’ are synonyms.”)).
5 See Morris, YU F.3d at 1054.
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another solution for allowing members of the small business or household to
communicate with one another by dialing ‘extensions.’”
Further, we conclude claim 1 fails to precisely define the claim term
“external inbound call,” thus raising the question of what specific element
in claim 1 the “external inbound call” is “external” to. Therefore, we
broadly but reasonably construe this claim term as a term of degree.6 7
Turning to the Specification for context, we find a description of a non­
limiting embodiment where the external inbound call is from the perspective
of a customer. (Spec., 18,11. 33—34; 19,11. 6—8). Therefore, consistent with
the Specification {id.), we broadly but reasonably construe the claim term
“external inbound call” as having a scope at least covering the perspective of
any customer who makes a call from any endpoint “without being passed
through a PBX or key system” (claim 1), and that is not an “internal call” as
distinguished infra. 1 As recited in claim 1, if the method determines a call
to be an external inbound call, such call is “routed to the plurality of
endpoints associated with the customer without being passed through a PBX
or key system,” i.e., a one-to-many mapping from a caller (customer) to a
plurality of endpoints (e.g., plural telephones at a business).
6 See Claim 1: We parse and construe the “determining” step of claim 1 in
accordance with the alternative “or” claim language: determining from the
information regarding the call if the call is {an external inbound call} or {an
internal call from one of the endpoints that identifies a different particular
one of the endpoints.} (emphasis added).
7 “Claim language employing terms of degree has long been found definite
where it provided enough certainty to one of skill in the art when read in the
context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1370 (Fed. Cir. 2014)(citing Eibel Process Co. v. Minn. & Ont. Paper
Co., 261 U.S. 45, 65-66 (1923)).
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In accordance with the alternative “or” claim language, we broadly
but reasonably construe the recited “internal call” as any “call from one of
the endpoints that identifies a different particular one of the endpoints,” as
expressly defined within claim 1. (emphasis added). See n.6, supra. In
contrast to the “external inbound calf discussed above, if the method of
claim 1 determines a call to be an “internal call,” such call is “routed to the
particular one of the endpoints without being passed through a PBX or key
system,” i.e., a one-to-one mapping from a single caller to a single endpoint
(e.g., a single telephone endpoint).
We additionally conclude that “endpoints” are not defined in claim 1.
Nor have Appellants pointed in the Briefs to a definition for the claim term
“endpoints” in the Specification. However, in the Reply Brief (2),
Appellants refer to a non-limiting example of an endpoint: “The claimed
subject matter provides a method for implementing a virtual private branch
exchange for a number of endpoints, which for the sake of simplicity of the
discussion may be considered as telephones.” 8 (emphasis added).
Therefore, we broadly but reasonably construe the recited “endpoints” as
encompassing any telecommunications endpoint (i.e., a point of connection
between any telephony elements, including, but not limited to, telephones).8 9
8 See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir.
2014) (The “court. . . observes that the PTO is under no obligation to accept
a claim construction proffered as a prosecution history disclaimer, which
generally only binds the patent owner.”).
9 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Given our claim construction, on this record, we are not persuaded the
Examiner erred in finding that the contested “internal call” limitation is
taught or suggested by Forte, in combination with Hakusui, as follows:
Forte teaches the WC 30 allows a remote device such as
wireless telephone 70 to act as an office PBX telephone for
outbound telephone calls such that a user will be able to use its
wireless telephone or any remote device to make station-to-
station calls as if he were using an office telephone directly
connected to the office PBX 14 (Forte: paragraph 0041; see
also paragraphs 0031, 0036 & 0046). If the user decides to
place a station-to station call, for example, the call would
appear to be an internally dialed call at the destination office
telephone (Forte: paragraph 0046). [The] Examiner notes since
the call is placed internally from any remote device to another
station or destination office telephone, the wireless connect unit
still acts as another station internal of the private enterprise
network regardless of the device being wireless or not. Thus
Examiner has considered the wireless device as another station
of the enterprise network that may place internal calls to other
stations similarly teaching endpoints making internal calls from
another endpoint as in the present application.
(Ans. 4—5) (emphasis added).
As pointed out by the Examiner {id.), a preferred embodiment in Forte
(141) bypasses PBX 14 (Fig. 1) and uses the wireless connection unit (WC
30) as an endpoint:
In accordance with a preferred embodiment, WC 30 allows a
remote device such as a wireless telephone 70 to act as an office
PBX telephone for outbound telephone calls following call
processing flow 300 illustrated in FIG. 5. That is, a user will be
able to use its wireless telephone (or any remote device) to
make station-to-station calls as if he were using an office
telephone directly connected to the office PBX 14.
(Forte 141).
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As noted above, the Examiner relies on Hakusui, and not Forte, for
teaching or suggesting the recited negative limitation. (Final Act. 4—5).
Appellants acknowledge “Hakusui discloses a virtual PBX (VPBX) system”
(App. Br. 15); however, we find Appellants attack Hakusui in isolation
without considering the collective teachings and suggestions of Forte and
Hakusui. (See App. Br. 15—16). Moreover, Appellants do not substantively
contest the Examiner’s proffered combinability of the references under
§103. (Final Act. 5).
Because we broadly but reasonably construe the recited “endpoints”
as encompassing any telecommunications endpoint (i.e., any point of
connection between telephony elements, including wireless telephones or
wireless connection units), we find Appellants’ contention unpersuasive that
“[t]he remote device [in Forte] does not place an internal call but rather
places an inbound call to the wireless connect unit as alleged.” (Reply Br. 3,
last sentence). See n.6, n.9 supra.
Moreover, our reviewing court guides, “the question under 35 U.S.C.
§ 103 is not merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention
was made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804,
807—808 (Fed. Cir. 1989) (citation omitted); see also MPEP § 2123.
This reasoning is applicable here. For essentially the same reasons
articulated by the Examiner in the Answer (3—8), we find the combined
teachings of Forte and Hakusui teach or at least suggest all that is contested
by Appellants. Therefore, on this record, and given the evidence relied on
by the Examiner (Final Act. 2—5; Ans. 3—8), as further discussed above, we
find Appellants’ arguments unavailing regarding the contested “internal
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call” limitation. Accordingly, we sustain rejection A of representative
claim 1. The associated grouped claims fall with claim 1. See “Grouping of
Claims’ '' supra.
Rejections B and C of Remaining Claims
Appellants do not separately argue the patentability of the remaining
claims on appeal. Instead, Appellants rely on arguments previously
advanced for independent claim 1, and urge the respective additional cited
secondary references fail to overcome the purported deficiencies of the base
combination of Forte and Hakusui. (App. Br. 17—18).
However, for the same reasons discussed above regarding claim 1, we
find these arguments unpersuasive. Accordingly, we sustain the Examiner’s
rejections B and C of the remaining claims on appeal, over the respective
combinations of prior art.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred. We find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for all contested claims on appeal.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—86 under
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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