Ex Parte Dodd

Patent Trial and Appeal Board

Aug 6, 2013

11553536 (P.T.A.B. Aug. 6, 2013)

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.
11/553,536 10/27/2006 Richard Dodd 3655/0320PUS1 3919
47827 7590 08/07/2013
Avaya by MUNCY, GEISSLER, OLDS & LOWE, PLLC
4000 LEGATO ROAD, SUITE 310
FAIRFAX, VA 22033
EXAMINER
HSIUNG, HAI-CHANG
ART UNIT PAPER NUMBER
2476
MAIL DATE DELIVERY MODE
08/07/2013 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 RICHARD DODD
____________________

Appeal 2010-011724
Application 11/553,536
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, ERIC B. CHEN, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1-26. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.2

1 Real Party in Interest is Avaya Technology LLC.
Appeal 2010-011724
Application 11/553,536

2

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to methods and apparatuses for
extracting data from a networked voice communication device (NVCD),
such as a Voice over Internet Protocol (VoIP) telephone that satisfies certain
criteria, for applications and management purposes, including: asset
management (i.e., network address, media access controller address, station
number, serial number and model number), alternative gatekeeper list
determination, connection status, and network utilization assessment (i.e.,
talk time, percentage of listen time, and/or bandwidth consumption). See
Appellants’ Spec. ¶¶[0001], [0005] and Abstract.
Claims on Appeal
Claims 1, 9, 17, and 26 are the independent claims on appeal. Claim 1
is representative of Appellants’ invention, and is reproduced below with
disputed limitations emphasized:

1. A method for extracting data from a networked
voice communication device (NVCD), comprising:

searching a network for a device functionally coupled to
the network;

determining whether the device is an NVCD satisfying at
least one predetermined criterion, wherein the at least one
predetermined criterion includes a manufacturer's name; and

extracting data from the NVCD.

2 Our decision refers to Appellants’ Appeal Brief filed March 16, 2010
(“App. Br.”); Examiner’s Answer mailed June 3, 2010 (“Ans.”); and the
original Specification filed October 27, 2006 (“Spec.”).
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Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rojahn US 2007/0070890 A1 Mar. 29, 2007
Berndt US 2006/0190727 A1 Aug. 24, 2006
Meyer US 7,024,468 B1 Apr. 4, 2006
Fangman US 6,687,245 B2 Feb. 3, 2004
Bearden US 2003/0097438 A1 May 22, 2003

Examiner’s Rejections
(1) Claims 1-5, 7, 9-13, 15, 17-22, 24, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bearden and Fangman. Ans.
4-12.
(2) Claims 6, 14, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bearden, Fangman, and Berndt. Ans. 12-13.
(3) Claims 8, 16, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bearden, Fangman, Meyer, and Rojahn. Ans. 13-
15.

Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-5, 7, 9-13, 15, 17-22, 24,
and 26 under 35 U.S.C. § 103(a) as being unpatentable over Bearden and
Fangman. In particular, the issue turns on whether the Examiner has
provided a proper reason for combining Bearden and Fangman (App. Br. 5-
12), and whether turning Bearden’s network-topology-discovery system into
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Application 11/553,536

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a system that initializes VoIP telephones impermissibly changes the
principle of operation of Bearden (App. Br. 6).

ANALYSIS
We have thoroughly reviewed the Examiner’s rejection and each of
Appellant’s arguments that the Examiner has erred. However, we are in full
agreement with the Examiner that the claimed subject matter is unpatentable
over the cited prior art. As such, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the detailed findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We further
highlight and address specific findings and arguments for emphasis as
follows.

§103 Rejection of Claims 1-5, 7, 9-13, 15, 17-22, 24 and 26
With respect to independent claim 1, Appellant does not contest the
Examiner’s factual findings regarding Bearden and Fangman; nor does
Appellant present any arguments to explain why the Examiner’s factual
findings are in error. Instead, Appellant contends that Bearden discloses a
system for discovery network topology, and is not a system for adding IP
telephones to a network, and “nothing in the record provides any reason for
using a topology discovery and network analysis system to start the
initialization of IP telephones.” App. Br. 5. As such, Appellant argues that
“the stated reason for modifying Bearden does not make sense and does not
constitute a proper reason for modifying Bearden as required by KSR
International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and discussed in
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MPEP 2143” and “turning Bearden’s network-topology-discovery system
into a system that initializes VoIP telephones impermissibly changes the
principle of operation of Bearden.” App. Br. 5-6.
However, we are not persuaded by Appellant’s arguments and
incorrect characterization of Bearden. First, and contrary to Appellant’s
arguments, the Examiner has provided a proper reason to modify Bearden.
In particular, the Examiner concludes that:
it would have been obvious to combine Bearden-Fangman for
the purpose of determining whether the device is an NVCD
satisfying at least one predetermined criterion, and “properly
start the initialization of an IP telephone” is a part of IP network
configuring and provisioning process.

Ans. 17; see also Ans. 5.
The Examiner’s stated reason for modifying Bearden for proper
initialization of a VoIP telephone as a part of an IP network configuration is
not unreasonable. Ans. 17 (citing Bearden, ¶¶[0060, [0112], and Fangman,
col. 3, ll. 9-14). Thus, the Examiner's obviousness rejection is supported by
“some articulated reasoning with some rational underpinning” to combine
known elements in the manner required by the claim. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
Moreover, the combination in Appellant’s claim 1 is a combination of
familiar elements (“searching a network for a device functionally coupled to
the network; determining whether the device is an NVCD [or a VoIP
telephone] satisfying at least one predetermined criterion … a
manufacturer’s name; and extracting data from the NVCD [for subsequent
assessment]”) according to known methods that does no more than yield
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predictable results, and therefore would have been obvious to an ordinarily
skilled artisan. See KSR, 550 U.S. at 417.
Second, modifying Bearden for proper initialization of a VoIP
telephone as a part of an IP network configuration does not change the
principle of operation of Bearden, as asserted by Appellant.
Appellant has not presented any persuasive argument or evidence that
combining the prior art elements in this way was “was uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); see also DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable of combining
the prior art references.”). Nor has Appellant has presented any evidence of
impermissible incorporation or argument to persuade us of reversible error
in the Examiner’s findings. Absent such evidence or persuasive arguments,
we do not find error in the Examiner’s position and, therefore, sustain the
Examiner’s obviousness rejection of independent claims 1 and similarly,
independent claims 9, 17, and 26.
With respect to dependent claims 2-5, 7, 10-13, 15, 18-22, and 24,
Appellant presents no separate arguments for patentability of these claims.
As such, these claims fall with independent claims 1, 9, 17 and 26. See 37
C.F.R. § 41.37 (c)(1)(vii).

§103 Rejection of Claims 6, 14, and 23
Appellant acknowledges that neither Bearden nor Fang discloses
gatekeeper lists or alternative gatekeeper lists, and that Berndt discloses
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using an alternate gatekeeper list. Nevertheless, Appellant argues that
nothing in the record provides any reason to add such an alternative
gatekeeper list to Bearden as Berndt is silent as to where alternate
gatekeeper lists are stored in a management information base (MIB). App.
Br. 9-10.
We disagree. A person of ordinary skill is also a person of ordinary
creativity, not an automaton. KSR, 550 U.S. at 421. Storing an alternative
gatekeeper list in a MIB requires nothing more than the use of ordinary skill
and common sense. As such, we agree with the Examiner’s conclusion that:
it would be obvious to modify the MIB contents of Bearden by
including an alternative gatekeeper list to support configuring
and provisioning IP networks for applications such as VoIP and
multimedia.

Ans. 24.
For these reasons, we do not find error in the Examiner’s position and,
therefore, sustain the Examiner’s obviousness rejection of dependent claims
6, 14, and 23.

§103 Rejection of Claims 8, 16, and 25
Appellant argues that (1) Meyer does not disclose the use of user
datagram protocol (UDP) packets, bandwidth consumed, talk-time,
percentage of talk/listen time and connection time, and (2) the Examiner has
not provided a proper reason to combine Bearden, Fangman, Meyer, and
Rojahn. App. Br. 10-11.
However, we are not persuaded by Appellant’s arguments. We see no
error in the Examiner’s findings regarding Meyer and the stated reason for
combining Bearden, Fangman, Meyer, and Rojahn. Ans. 25-26.
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CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-26 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 1-26
under 35 U.S.C. § 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)(1)(iv) (2011).

AFFIRMED

msc