Ex Parte Holder et al

Patent Trial and Appeal Board

Sep 21, 2016

12071005 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/071,005
John Baird
Suite 1000
7590
FILING DATE
02/14/2008
09/21/2016
505 9th Street, N.W.
Washington, DC 20004
FIRST NAMED INVENTOR
Louis Holder
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.
Y2108-00123 DIVl 7617
EXAMINER
JONES, PRENELL P
ART UNIT PAPER NUMBER
2467
MAILDATE DELIVERY MODE
09/21/2016 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 LOUIS HOLDER and JEFFREY CITRON
Appeal2015-006713
Application 12/071,005
Technology Center 2400
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006713
Application 12/071,005
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 8--46. Claims 1-7 have been cancelled. (See App. Br. 14.) We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention relates to Internet telephony that uses of Session
Initiated Protocol technology. (Spec. 4: 11-12.)
Claims 8 and 11 are exemplary, with disputed limitation in italics:
8. An internet telephony system configured to use Session
Initiation Protocol (SIP) signaling to setup a communication of
streaming packets, the internet telephony system comprising:
a relay configured to relay streaming packets of the
communication between a caller and a call destination;
a server configured to receive, process and transmit SIP
signaling messages to setup the communication between the caller and
the call destination and to select the relay to use for the
communication, the selection being based at least on the quality of the
communication.
11. The internet telephony system of claim 8, wherein the
server is configured to select the relay to decrease the latency of the
communication.
Claims 8-10, 12-14, 16-22, 24--26, 28-34, 36-38, and 40--43 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over O'Brien
(US 7,369,535 B2; May 6, 2008) and Kobayashi (US 2005/0246347 Al;
Nov. 3, 2005).
Claims 15, 27, and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over O'Brien, Kobayashi, and Sylvain (US 2004/0120498 Al;
June 24, 2004).
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Claims 11, 23, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over O'Brien, Kobayashi, and Mangal (US 6,865,398 B2;
Mar. 8, 2005).
Claims 44--46 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over O'Brien, Kobayashi, and to Kleyman (US 2004/0244010 Al; Dec. 2,
2004). 1
ANALYSIS
§ 103 Rejection----0 'Brien and Kobayashi
We are unpersuaded by Appellants' arguments (App. Br. 4--9; see also
Reply Br. 1--4) that the combination of O'Brien and Kobayashi would not
have rendered obvious independent claim 8, which includes the limitation
"the selection being based at least on the quality of the communication."
The Examiner found that the VoIP packets of O'Brien correspond to
the limitation "streaming packets." (Final Act. 4.) The Examiner further
found that the relay control section of Kobayashi corresponds to the
limitation "the selection being based at least on the quality of the
communication." (Id. at 5; see also Ans. 8.) In particular, the Examiner
found that "the lower the capacity/load gets, the worse the quality
(communication quality) gets." (Ans. 7.) The Examiner concluded that "it
would be obvious ... to implement selecting relays based on QoS as taught
by Kobayashi with ... O'Brien." (Id. at 10.) We agree with the Examiner.
1 Appellants do not present any separate arguments with respect to the
rejections of dependent claims 44--46 under 35 U.S.C. § 103(a). Thus, any
such arguments are deemed to be waived.
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0' Brien relates to voice-over-IP telephony. (Abstract.) 0 'Brien
explains that Voice over Internet Protocol (VoIP) Real Time Protocol (R TP)
includes "forcing packets carrying media in a VoIP call through network
elements." (Col. 1, 11. 28-31.) O'Brien explains that "[t]he quality of a
VoIP call is insured by controlling the path of the media stream to ensure
that these voice packets traverse a known ... IP network," such that "[t]he
path of the voice packets can avoid congested networks." (Col. 2, 11. 26-29.)
Kobayashi relates to "a cache server and a network system having
cache servers." (i-f 3.) Kobayashi explains that "a relay control section
selects a relay server that is necessary for setting a path suitable for carrying
out an automatic cache updating operation, a link prefetching operation, and
a cache server cooperating operation, based on QoS path information."
(i-f 37.) In reference to Figure 9, Kobayashi provides an example in which
relay control section 110 uses "relay servers M301 and M302 ... to check
whether it is possible or not to set a path from the Web server Sl to the QoS
path reference relay control cache server C301 without passing through the
congestion section [link L 1]." (i-f 131.) Because Kobayashi explains that
path selection is based on the avoidance of congestion, Kobayashi teaches or
suggests the limitation "the selection being based at least on the quality of
the communication."
A person of ordinary skill in the art would have recognized that
incorporating the relay control section of Kobayashi with the VoIP of
O'Brien would improve O'Brien by providing a suitable uncongested path
based on QoS. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
("[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
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Application 12/071,005
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill."). Thus, we agree with the Examiner
(Ans. 10) that modifying O'Brien to incorporate the relay control section of
Kobayashi would have been obvious.
Appellants argue that "the QoS path information [of Kobayashi] is not
the same nor equivalent to the 'Quality of Communication' as claimed,
specifically the QoS path information is described in Kobayashi as simply
available bandwidth/link load." (App. Br. 4; see also Reply Br. 1-2.)
However, O'Brien expressly states that "quality of a VoIP call is insured by
controlling the path of the media stream to ensure that these voice packets
traverse a known ... IP network" and "[t]he path of the voice packets can
avoid congested networks." (Col. 2, 11. 26-29.) Thus, the VoIP call quality
of O'Brien is directly correlated to the QoS path information of Kobayashi
for avoiding congested paths.
Appellants further argue that "[c]ache servers (as used in Kobayashi)
for data by their very nature are an anathema to Voice" because "[a] cache
server on the other hand CACHES information packets until they are ready
to transport." (App. Br. 6 (emphasis omitted).) Accordingly, Appellants
argue, "one of ordinary skill in the art of VoIP communication would not
sacrifice quality of communication for a reduction of congestion which
would render the VoIP communication of 0' Brien unsatisfactory, and thus
the Office's motivation to combine Kobayashi and O'Brien is without
merit." (App. Br. 9 (emphasis omitted); see also Reply Br. 3--4.) However,
the Examiner cited Kobayashi for the general teaching of using a relay
control to select a suitable path based on QoS is well known, rather than
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bodily incorporating the cache server of Kobayashi into the VoIP of
O'Brien. (See Ans. 8.)
Thus, we agree with the Examiner that the combination of 0 'Brien
and Kobayashi would have rendered obvious independent claim 8, which
includes the limitation "the selection being based at least on the quality of
the communication."
Accordingly, we sustain the rejection of independent claim 8 under 35
U.S.C. § 103(a). Claims 9, 10, 12-14, and 16-19 depend from claim 8, and
Appellants have not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 9, 10,
12-14, and 16-19 under 35 U.S.C. § 103(a), for the same reasons discussed
with respect to independent claim 8.
Independent claims 20 and 32 recite limitations similar to those
discussed with respect to independent claim 8, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 20 and 32, as well as dependent
claims 21, 22, 24--26, 28-31, 33, 34, 36-38, and 40-43, for the same reasons
discussed with respect to claim 8.
§ 103 Rejection----0 'Brien, Kobayashi, and Sylvain
We are unpersuaded by Appellants' arguments (App. Br. 9-11; see
also Reply Br. 4--5) that the combination of 0 'Brien, Kobayashi, and
Sylvain would not have rendered obvious dependent claim 15, which
includes the limitation "wherein the server is configured to select the relay
based on a SIP Invite message."
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The Examiner found that the SIP INVITE message of Sylvain
corresponds to the limitation "wherein the server is configured to select the
relay based on a SIP Invite message." (Ans. 12-13; see also Final Act. 7.)
The Examiner concluded that "it would have been obvious ... to implement
select[ing] the relay to decrease the latency of the communication as taught
by Sylvain with the combined teachings of and O'Brien, Jr. and Kobayashi
for the purpose further managing the routing of streaming media between
users." (Final Act. 7 (emphasis omitted).) We agree with the Examiner.
Sylvain relates to "associating multimedia services with traditional
telephony services in an efficient manner." (i-f l.) In one embodiment,
Sylvain explains that "SIP call servers 26 ... facilitate VoP communications
via the packet network 22," utilizing the known Session Initiation Protocol
(SIP). (i-f 23.) Figure 5 of Sylvain illustrates an embodiment in which single
service node 28 supports multimedia clients A and B. (i-f 42.) Sylvain
explains "[a]ssuming that user A wishes to initiate a video session with
user B, sufficient action is taken to trigger multimedia client A (14) to send a
SIP INVITE message to multimedia client B (14)." (i-f 46.) Because Sylvain
explains that SIP call servers 26 facilitate VoP communications and user A
sends user Ba SIP INVITE, Sylvain teaches or suggests the limitation
"wherein the server is configured to select the relay based on a SIP Invite
message."
A person of ordinary skill in the art would have recognized that
incorporating the SIP INVITE message of Sylvain with the VoP of O'Brien,
as modified by Kobayashi, would improve 0 'Brien by providing the ability
to facilitate communications via Session Initiation Protocol (SIP). See KSR,
550 U.S. at 417. Thus, we agree with the Examiner (Final Act. 7) that
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modifying O'Brien and Kobayashi to incorporate the SIP INVITE message
of Sylvain would have been obvious.
Appellants argue that "Sylvain does not disclose the use of the
telephone switch to relay streaming packets" but instead, "[t]he telephony
switch of Sylvain is a conventional switch used to communicate over the
PSTN (Public Switched Telephone Network)." (App. Br. 10-11; see also
Reply Br. 4--5.) However, the Examiner cited to O'Brien, rather than
Sylvain for teaching the limitation "streaming packets." (Final Act. 4.)
Appellants further argue that "the motivation relied upon by the
Office is related to reduction of latency which is in no manner linked to the
proposed modification." (App. Br. 11.) However, the Examiner also
provides the rationale the combination of O'Brien, Kobayashi, and Sylvain
provides the advantage of "managing the routing of streaming media
between users." (Final Act. 7.) In other words, the combination of O'Brien,
Kobayashi, and Sylvain is the improvement of a similar device in the same
way as in the prior art.
Thus, we agree with the Examiner that the combination of 0 'Brien,
Kobayashi, and Sylvain would have rendered obvious dependent claim 15,
which includes the limitation "wherein the server is configured to select the
relay based on a SIP Invite message."
Dependent claims 27 and 39 recite limitations similar to those
discussed with respect to dependent claim 15, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 27 and 39 for the same reasons discussed
with respect to claim 15.
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§ 103 Rejection----0 'Brien, Jr., Kobayashi, and Mangal
We are persuaded by Appellants' arguments (Reply Br. 6) that the
combination of O'Brien, Kobayashi, and Mangal would not have rendered
obvious dependent claim 11, which includes the limitation "wherein the
server is configured to select the relay to decrease the latency of the
communication."
Claim 8 recites "a server configured to receive, process and transmit
SIP signaling messages to setup the communication between the caller and
the call destination" (emphasis added). Dependent claim 11 further recites
"wherein the server is configured to select the relay to decrease the latency
of the communication" (emphasis added). Accordingly, the limitation "setup
the communication" is distinguishable over the limitation "the
communication."
The Examiner found that the reduction in latency setup for the
wireless communication system of Mangal corresponds to the limitation
"wherein the server is configured to select the relay to decrease the latency
of the communication." (Ans. 13; see also Final Act. 8.) We do not agree.
Mangal relates to initiating real-time media sessions, in particular, "to
reduce latency in the initiation of 'instant connect' or 'push to talk' (PTT)
sessions between data-capable mobile stations." (Col. 1, 11. 11-14.) Mangal
explains that in one embodiment, "one way to reduce call setup latency is to
buffer an initial media transmission until a link exists to transmit the media
further" and "that call setup latency will normally be unnoticeable to the
terminating end, as long as the terminating end ultimately receives the initial
media transmission." (Col. 4, 11. 45-51.)
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Although the Examiner cited to the buffering of the initial media
transmission of Mangal to reduced call setup latency (Ans. 13), the
Examiner has not provided sufficient evidence to support a finding that
Mangal teaches the limitation "wherein the server is configured to select the
relay to decrease the latency of the communication." In particular, Mangal
explains that "one way to reduce call setup latency is to buffer an initial
media transmission" (col. 4, 11. 45--4 7), rather than decreasing "the latency of
the communication," as claimed. On this record, the Examiner has not
demonstrated that Mangal teaches the limitation "wherein the server is
configured to select the relay to decrease the latency of the communication."
Accordingly, we are persuaded by Appellants' argument that
"[ c ]laim 11 requires the decrease of latency of the communication, not
latency of the set up of the communication" and "Mangal is silent with
respect to the communication." (Reply Br. 6.)
Therefore, we do not sustain the rejection of dependent claim 11
under 35 U.S.C. § 103(a).
Dependent claims 23 and 35 recite limitations similar to those
discussed with respect to dependent claim 11. We do not sustain the
rejection of claims 23 and 35 for the same reasons discussed with respect to
claim 11.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Dependent claim 11 is rejected under 35 U.S.C. § 103(a) as
unpatentable over 0 'Brien and Kobayashi.
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Claim 11 recites "wherein the server is configured to select the relay
to decrease the latency of the communication" (emphasis added). One
relevant plain meaning of "latency" is "[ t ]he time required for a signal to
travel from one point on a network to another." MICROSOFT® COMPUTER
DICTIONARY 306 (5th ed. 2002). This definition of "latency" is consistent
with Appellants' Specification, which states that "[t]he pre-proxy server 75
can allocate the closest RTP [Real Time Transport Protocol] relay between
the two calling parties" and "[t]hat allocation enables the ability to decrease
latency and travel time of the RTP stream." (Spec. 6:13-15.) Accordingly,
under the broadest reasonable interpretation consistent with Appellants'
Specification, we interpret "latency" as the time required for a signal to
travel from one point on a network to another.
As discussed previously, O'Brien explains that "[t]he quality of a
VoIP call is insured by controlling the path of the media stream to ensure
that these voice packets traverse a known ... IP network" such that "[t]he
path of the voice packets can avoid congested networks." (Col. 2, 11. 26-29.)
Also discussed previously, Kobayashi provides an example in which relay
control section 110 uses "relay servers M301 and M302 ... to check
whether it is possible or not to set a path from the Web server Sl to the QoS
path reference relay control cache server C301 without passing through the
congestion section [link L 1]." (i-f 131.)
Thus, both O'Brien and Kobayashi explain that congested paths (i.e.,
paths with heavy network traffic) should be avoided, which would result in a
decrease in latency for a signal to traveling from one point on the network to
another. Accordingly, the combination of O'Brien and Kobayashi teaches
the limitation "wherein the server is configured to select the relay to
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decrease the latency of the communication," as recited in dependent
claim 11.
Dependent claims 23 and 35 recite limitations similar to those
discussed with respect to dependent claim 11.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
dependent claims 11, 23, and 35 as unpatentable over O'Brien and
Kobayashi under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
DECISION
The Examiner's decision rejecting claims 8-10, 12-22, 24--34, and
3 6-46 is affirmed.
The Examiner's decision rejecting claims 11, 23, and 35 is reversed.
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A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b) for claims 11, 23, and 35, rejected under 35 U.S.C. § 103(a) as
unpatentable over O'Brien and Kobayashi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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