Ex Parte Gedo

Patent Trial and Appeal Board

Aug 29, 2016

12717381 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121717,381 03/04/2010 Nicolae Gedo
72623 7590 08/31/2016
MOSER TABOADA I VON AGE HOLDINGS CORP,
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
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.
V031 2676
EXAMINER
ELAHEE,MDS
ART UNIT PAPER NUMBER
2653
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAE GEDO
Appeal2015-002390
Application 12/717 ,3 81
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EVANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-18, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention generally relate[ s] to
Voice over Internet Protocol (VoIP) and, more particularly, to a method and
1 According to Appellant, the real party in interest is Vonage Network LLC.
App. Br. 3.
Appeal2015-002390
Application 12/717 ,3 81
apparatus for detecting unterminated phone wiring loops." Spec. i12,
Abstract. 2
The claims under consideration include independent claims 1 and 10
as well as dependent claims 2-9 (based on claim 1) and claims 11-18 (based
on claim 10). App. Br. 11-13 (Claims App.).
Representative Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows, with italics identifying the
limitation at issue:
1. A method for detecting unterminated phone lines, the
method comprising:
generating, by a pulse generator, a single voltage
differential pulse across a phone line loop, wherein the generated
voltage differential pulse is of a finite duration;
measuring a voltage differential across the phone line loop
after the voltage differential pulse is generated across the phone
line loop; and
determining if the phone line loop is properly terminated
based upon the measured differential.
App. Br. 11 (Claims App.).
2 This decision employs the following abbreviations: "Spec." for the
Specification, filed March 4, 2010; "02-2013 Resp." for the Response to
Final Office Action, filed February 20, 2013; "Non-Final Act." for the
Non-Final Office Action, mailed August 2, 2013; "11-2013 Resp." for the
Response to Office Action, filed November 1, 2013; "Final Act." for the
Final Office Action, mailed January 16, 2014; "App. Br." for the Appeal
Brief, filed July 14, 2014; "Ans." for the Examiner's Answer, mailed
October 14, 2014; and "Reply Br." for the Reply Brief, filed December 15,
2014.
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Appeal2015-002390
Application 12/717 ,3 81
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Macrander et al.
("Macrander")
Emory, Jr. et al.
("Emory")
Lin et al.
("Lin")
us 3,903,379
US 2003/0081735 Al
US 7,929,517 B2
The Rejections on Appeal
Sept. 2, 1975
May 1, 2003
Apr. 19, 2011
(filed Apr. 1, 2005)
Claims 1--4, 10-15, and 17-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Emory and Macrander. Final Act. 3---6; App.
Br. 4; Ans. 3---6.
Claims 5-9 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Emory, Macrander, and Lin. Final Act. 6-8; App. Br. 8;
Ans. 6-8.
ANALYSIS
We have reviewed the rejection of claims 1-18 in light of Appellant's
arguments that the Examiner erred. In doing so, we have evaluated only the
arguments that Appellant actually makes on appeal. Arguments that
Appellant could have made but declined to make are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2015-002390
Application 12/717 ,3 81
The Rejection of Claims 1-4, 10-15,
and 17-18 Under 35 US.C. § 103(a)
Independent Claims 1 and 10
Each independent claim requires generating a "voltage differential
pulse" with "a finite duration." App. Br. 11, 12 (Claims App.). The
Examiner finds that Emory teaches most of the limitations in each
independent claim, including generating a "voltage differential pulse." Final
Act. 4; Ans. 3--4. The Examiner states that Emory does not "specifically
teach" that the generated "voltage differential pulse" has "a finite duration."
Final Act. 4; Ans. 4. But the Examiner finds that Macrander discloses a
"voltage differential pulse" with "a finite duration." Final Act. 4; Ans. 4.
Appellant argues that "the combination of Emory and Macrander fails
to teach, suggest, or otherwise yield" a "voltage differential pulse" with "a
finite duration." App. Br. 4. Appellant acknowledges that Emory discloses
a circuit for generating a "line integrity pulse" but contends that "[t]he
Examiner admits that Emory fails to teach or suggest" a pulse with a finite
duration. Id. (citing Emory i-f 45 and Final Act.). In addition, Appellant
acknowledges that Macrander describes "marking pulses" with finite
durations but contends that Macrander does not "explicitly teach that the
marking pulses are voltage differential pulses" according to claims 1 and 10.
Id. at 5.
In response, the Examiner determines that "any pulse cannot be of
infinite duration" and that "any pulse is of a finite duration." Ans. 9. We
discern no error in the Examiner's interpretation of the term "pulse." At one
point during examination, Appellant provided the following definition:
A "pulse" is generally understood by those skilled in the art
of signal processing as "[a] rapid, transient change in the
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Appeal2015-002390
Application 12/717 ,3 81
amplitude of a signal from a baseline value to a higher or lower
value, followed by a rapid return to the baseline value.
[Emphasis added.]" (Pulse (signal processing),
http:// en. wikipedia. org/w /index. php ?title= Pulse_( signal_proces
sing)&oldid=525775899 (last visited Feb. 18, 2013).)
02-2013 Resp. 6.
Therefore, consistent with Appellant's definition of "pulse" and the
Examiner's interpretation that any "pulse" has a finite duration, we agree
with the Examiner that Emory and Macrander teach all of the limitations in
each independent claim. For instance, Emory's system: (a) applies voltage
to a "charging capacitor" linked to a telephone line; (b) activates an "enable
circuit" that allows the "charging capacitor" to discharge, thus causing the
voltage "to go low"; and ( c) detects after a predetermined delay whether the
voltage goes from "low" to "high" due to the telephone line's voltage. See
Ans. 4 (citing Emory i-fi-f 15, 45).
Appellant notes that the Examiner relied on a need to "locate a faulty
path more properly'; as a reason for combining Emory and Macrander. App.
Br. 5; Reply Br. 2. Appellant asserts that no evidence suggests that "a need
exists to provide the generated voltage differential pulse for a finite duration
in order locate a faulty path more properly" in Emory's system. App. Br. 5;
Reply Br. 2-3. Appellant also asserts that Emory's system "alone, without
any modification, ... detect[ ed] defective telephone lines" and "solved the
problem of locating a faulty path .... " Reply Br. 3.
The Examiner's reason for combining Emory and Macrander does not
rest necessarily on a problem that Emory failed to solve. Final Act. 4; see
Ans. 4. The Examiner's reason also encompasses improved performance.
"[T]he desire to enhance commercial opportunities by improving a product
or process is universal .... " DyStar Textilfarben GmbH v. CH Patrick
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Appeal2015-002390
Application 12/717 ,3 81
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Despite the absence of anything
in the references themselves, "an implicit motivation to combine" may result
from a desire to make a product or process "stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient." Id.
Appellant asserts that claim 10 recites "additional features" not
included in claim 1. App. Br. 6; Reply Br. 4. Appellant then urges that the
Examiner erred by (a) addressing claim 10 together with claim 1 and
(b) failing to identify where any reference discloses claim 10' s "additional
features." App. Br. 6; Reply Br. 4. Appellant does not, however, identify
the alleged error in the rejection. App. Br. 6; Reply Br. 4. The Federal
Circuit has recognized "the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... " In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte Frye, Appeal No.
2009-006013, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential)).
Moreover, the applicable rules require that the arguments in an appeal brief
"explain why the examiner erred as to each ground of rejection contested by
appellant." 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claims 1 and 10 for obviousness based on Emory
and Macrander. Thus, we sustain the rejection.
Dependent Claims 2, 4, 11-15, and 17-18
As with claim 10, Appellant argues that claims 4, 11, 13-15, and
17-18 recite "additional features" not included in claim 1 and that the
Examiner erred by addressing these dependent claims together with claim 1.
App. Br. 6; Reply Br. 4. But Appellant does not identify the alleged error in
the rejection. For claims 2 and 12, Appellant does not present any separate
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Appeal2015-002390
Application 12/717 ,3 81
patentability arguments. App. Br. 4--9; Reply Br. 2--4. Thus, we sustain the
rejection.
Dependent Claim 3
Claim 3 depends indirectly from claim 1 and specifies that "the power
level and duration [of the voltage differential pulse] are used to determine a
length of the phone line loop." App. Br. 11 (Claims App.). In rejecting
claim 3 for obviousness based on Emory and Macrander, the Examiner
"notes that the power level and duration are used to determine the length of
the phone line loop are well known in the art." Final Act. 5; Ans. 5.
Appellant contends that the Examiner "should provide an affidavit or
declaration" supporting the officially noticed fact because it is not "capable
of instant and unquestionable demonstration as being well-known." App.
Br. 7 (citing MPEP § 2144.03). In response, the Examiner points out that
Appellant "failed to traverse the examiner's assertion of official notice" and
that the officially noticed fact "is taken to be admitted prior art." Ans. 10
(citing MPEP § 2144.03).
We agree with the Examiner that Appellant tacitly admitted the
officially noticed fact by failing to traverse the Examiner's assertion of
official notice. MPEP § 2144.03 provides that "[t]o adequately traverse such
a finding, an applicant must specifically point out the supposed errors in the
examiner's action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art." MPEP
§ 2144.03(C).
When initially rejecting claim 3 for obviousness based on Emory and
Macrander, the Examiner "note[ d] that the power level and duration are used
to determine the length of the phone line loop are well known in the art."
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Appeal2015-002390
Application 12/717 ,3 81
Non-Final Act. 4. Although Appellant in its response addressed various
claims rejected based on Emory and Macrander, Appellant said nothing
about claim 3 or the officially noticed fact. 11-2013 Resp. 5-7. Thus,
Appellant failed to "specifically point out the supposed errors in the
examiner's action." If an applicant does not seasonably traverse the taking
of official notice during examination, the object of the official notice may be
taken as admitted. See In re Gunther, 125 F.2d 1020, 1023 (CCPA 1942);
see also Ex parte Anyan, Appeal No. 2013-007017, 2015 WL 4640369, at
*5 (PTAB July 31, 2015) (nonprecedential).
In addition, Appellant does not in its reply dispute the Examiner's
determination regarding admitted prior art. Reply Br. 2--4. Appellant
simply states, "Claim 3 is patentable for the reasons discussed in the Appeal
Brief." Id. at 4.
Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in rejecting claim 3 for obviousness based on Emory and
Macrander. Thus, we sustain the rejection.
The Rejection of Claims 5-9
and 16 Under 35 USC§ 103(a)
Dependent Claims 5-9
Claims 5-9 depend directly or indirectly from claim 1. App.
Br. 11-12 (Claims App.). For claims 5-9, Appellant argues that "the
combination of Emory, Macrander and Lin does not teach, suggest, or
render obvious" the invention recited in claim 1, and therefore the
combination "fails to teach, suggest, or render obvious" claims 5-9. App.
Br. 8. Because Appellant does not argue claims 5-9 separately, they stand
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Application 12/717 ,3 81
or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Thus, we sustain the
obviousness rejection of claims 5-9 based on Emory, Macrander, and Lin.
Dependent Claim 16
Claim 16 depends from claim 10. App. Br. 13 (Claims App.).
Appellant argues that "[ n ]owhere does the Examiner address where or how
Emory, Macrander and/or Lin teach or make obvious" the feature recited in
claim 16. App. Br. 8. The Examiner has mapped the recited elements of
claim 16, including the pulse detector, to the teachings of Emory,
Macrander, and Lin (see Final Act. 4, 6) and provided sufficient explanation
in response to Appellant's arguments (see Ans. 8-9). Appellant does not
argue nonobviousness with any particularity or describe any specific
differences between claim 16 and the references. Hence, we sustain the
obviousness rejection of claim 16 based on Emory, Macrander, and Lin.
DECISION
We affirm the rejections of claims 1-18 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7 C.F .R.
§ 1.136(a)(l )(iv).
AFFIRMED
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