Ex Parte Deng et al

Patent Trial and Appeal Board

Jul 22, 2016

12811076 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/811,076 10/11/2010 Hui Deng
32566 7590 07/26/2016
PA TENT LAW GROUP LLP
465 Fairchild Drive
Suite 125
Mountain View, CA 94043
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ARC-Pl72 1308
EXAMINER
LAEKEMARIAM, YOSEF K
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
sandy@patentlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUI DENG, JIANMING TU, and DONGREN CHEN
Appeal2015-001084
Application 12/811,076
Technology Center 2600
Before JESSICA C. KAISER, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is ArcSoft, Inc. (App.
Br. 2.)
Appeal2015-001084
Application 12/811,076
EXEMPLARY CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for an authentication server to verify a
telephone number of a Voice over Internet Protocol (VoIP)
device, comprising:
receiving over a computer network a request from the
VoIP device to verify its telephone number, the request including
the telephone number, the VoIP device being coupled to the
computer network and a telephone network;
searching for verified VoIP devices that have verified their
telephone numbers, the verified VoIP devices being coupled to
the computer network and the telephone network, the verified
VoIP devices having caller ID service;
sending over the computer network the telephone numbers
of the verified VoIP devices to the VoIP device, wherein the
VoIP device calls the verified VoIP devices and the verified
VoIP devices use the caller ID service to detect telephone
numbers of the VoIP device;
receiving over the computer network the detected
telephone numbers of the VoIP device from the verified VoIP
devices; and
determining if the detected telephone numbers match the
telephone number provided by the VoIP device in the request,
wherein the telephone number provided by the VoIP device is
verified if a substantial number of the detected telephone
numbers match the telephone number provided by the VoIP
device.
REJECTIONS
The Examiner has rejected claims 1--4 and 8-11 under 35 U.S.C.
§ 103 (a) as being unpatentable over Tighe (US 2007 /003 6319 A 1; published
Feb. 15, 2007) and Kennedy (US 5,857,011; issued Jan. 5, 1999). (Final
Act. 2-8.)
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Appeal2015-001084
Application 12/811,076
The Examiner has rejected claims 5-7 under 35 U.S.C. § 103(a) as
being unpatentable over Tighe, Kennedy, and DuPertuis (US 2012/0069774
Al; published Mar. 22, 2012). (Final Act. 8-9.)
DISPOSITIVE ISSUE
Did the Examiner err in finding Tighe teaches or suggests "verified
VoIP devices" as recited in independent claims 1 and 8?
ANALYSIS
Appellants argue the Examiner errs in finding that Tighe teaches
"searching for verified VoIP devices that have verified their telephone
numbers," as recited in claim 1. (App. Br. 4.) In particular, Appellants
argue Tighe's ID servers do not teach "verified VoIP devices." (Id. at 4--5.)
We are persuaded by Appellants' argument.
Tighe teaches a method for a gateway to automatically discover the
telephone number associated with each of the gateway's public switched
telephone network (PSTN) ports. (See Tighe Fig. 3.) In one embodiment,
Tighe's gateway, through one of its ports, calls an ID server, which the
Examiner maps as a "verified VoIP device." (Id. at Fig. 3, i-fi-132-33; Final
Act. 2.) The ID server, using caller ID, determines the telephone number of
the gateway port, and informs the gateway of the captured telephone
number. (Tighe Fig. 3, i-fi-133-34.) After confirming the captured number of
the gateway port, the gateway maps the received telephone number to the
port. (Id. at Fig. 3, i-fi-134--36.)
In finding that Tighe's ID servers teach "verified VoIP devices," the
Examiner relies on paragraph 32 of Tighe. (Final Act. 2.) That paragraph
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Appeal2015-001084
Application 12/811,076
teaches that the gateway "may be preprogrammed" with the telephone
numbers of the servers, or the gateway may obtain the number from a user or
from an information provider. (Tighe i-f 32.) The Examiner has not
adequately explained how a preprogrammed number or a number received
from a user or information provider teaches or suggests that the ID servers
"have verified their telephone numbers," as recited in claim 1. Accordingly,
we are constrained by the record to reverse the Examiner's decision to reject
independent claim 1.
For the reasons discussed above, we do not sustain the Examiner's
decision to reject independent claim 1, independent claim 8 which also
recites "verified VoIP devices," and dependent claims 2--4 and 9-11.
Claims 5-7 depend directly or indirectly from claim 1, and the additional
reference as applied by the Examiner in the rejection of claims 5-7 does not
cure the deficiency in the Examiner's rejection of claim 1 as discussed
above. Accordingly, we do not sustain the Examiner's decision to reject
claims 5-7.
DECISION
We reverse the Examiner's decision to reject claims 1-11 under 35
U.S.C. § 103(a).
REVERSED
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