11842720 (P.T.A.B. Jan. 30, 2018)

Ex Parte Jackson

Patent Trial and Appeal BoardJan 30, 2018

11842720 (P.T.A.B. Jan. 30, 2018)

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. 11/842,720 08/21/2007 James Jackson 20103/2006-2088 3863 83417 7590 01/30/2018 AT&T Legal Department - HFZ ATTN. Patent Docketing One AT&T Way Room 2A-207 Bedminster, NJ 07921 EXAMINER HARLEY, JASON A ART UNIT PAPER NUMBER 2468 MAIL DATE DELIVERY MODE 01/30/2018 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 JAMES JACKSON ____________________ Appeal 2017-0060061 Application 11/842,720 Technology Center 2400 ____________________ Before: CARL W. WHITEHEAD JR., ERIC B. CHEN, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on Appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3–15, 17, 18, 21–25, and 27–31, which are all of the pending claims. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 AT&T Intellectual Property I, L.P. (formerly known as AT&T Knowledge Ventures, L.P.) is identified as the real party in interest. App. Br. 2. Appeal 2017-006006 Application 11/842,720 2 STATEMENT OF THE CASE Introduction The Application is directed to methods and apparatuses to select a voice over internet protocol (VoIP) border element. Spec., Title. Claims 1, 17, and 25 are independent. Claim 1 is reproduced below for reference (emphasis and formatting added): 1. A method comprising: sending a first session initiation protocol message from a first voice over Internet protocol device at a first time, the first session initiation protocol message including an Internet protocol address shared by at least two border elements; and receiving a second session initiation protocol message at the first voice over Internet protocol device from a first one of the at least two border elements at a second time, the first border element being selected based on the shared Internet protocol address at the first time, the second session initiation protocol message including a unique address for the first border element in place of the shared address when the second session initiation protocol message occurs during a first threshold period after the first time, and the second session initiation protocol message including the shared address when the second session initiation protocol message occurs after the first threshold period. References and Rejections Claims 1, 3–7, 9, 10, 12, 14, 17, 21, 22, 25, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Terpstra (US 2006/0013147 A1; Jan. 19, 2006), Swinton (US 2008/0313350 A1; Dec. 18, 2008), and Suzukawa (US 2006/0133356 A1; June 22, 2006). Final Act. 2. Appeal 2017-006006 Application 11/842,720 3 Claims 8, 10, 11, 13, 15, 18, 23, 24, 27, 28, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Terpstra, Swinton, Suzukawa, and other prior art references. Final Act. 8–14. ANALYSIS Appellant argues the Examiner erred in rejecting independent claim 1: there are at least two elements set forth in claim 1 that are missing from the Terpstra/Swinton/Suzukawa combination: (1) the second session initiation protocol message including a unique address for the first border element in place of the shared address when the second session initiation protocol message occurs during a first threshold period after the first time; and (2) the second session initiation protocol message including the shared address when the second session initiation protocol message occurs after the first threshold period. App. Br. 9 (emphasis omitted). We are persuaded by Appellant’s arguments. The Examiner first finds “Terpstra fail[s] to show” the limitations discussed above, and relies on Swinton’s disclosure of “Anycast [which] provides a network addressing and routing scheme [and] assigns the same IP address to multiple caches” for teaching the recited message addresses and threshold period timing. Final Act. 3–4 (citing Swinton ¶ 19). We agree with Appellant that the Examiner’s “reliance on Swinton is in error,” because “Swinton fails to teach or suggest . . . a particular type of address (i.e., a unique address versus a shared address) based on the time at which the message occurs.” App. Br. 10–11. That is, Swinton teaches both unique and shared addresses, but is silent with respect to a message time threshold period, as claimed. See, e.g., Swinton Fig. 2. Appeal 2017-006006 Application 11/842,720 4 In response to the Appeal Brief, the Examiner newly finds the combination of Terpstra and Swinton teaches the disputed limitations. See Ans. 3–6. In the Answer, the Examiner relies on Swinton only for teaching “a message comprising a unique address and a shared address.” Ans. 5 (citing Swinton ¶ 19, Fig. 2). For the remainder of the disputed limitations, the Examiner finds “Terpstra shows . . . ‘when the second session initiation protocol message occurs during a first threshold period after the first time[,]’ and ‘when the second initiation protocol message occurs after the first threshold period,’” because “[t]he applicant’s claim does not specify or define first threshold period after the first time.” Ans. 4–5 (citing Terpstra ¶¶ 45, 67; Swinton ¶ 19) (emphasis omitted). We disagree with the Examiner’s claim construction. Independent claim 1 recites two alternative, conditional steps: (1) when the second session initiation protocol message occurs during a first threshold period after the first message; or (2) when the second session initiation protocol message occurs after the first threshold period. Claim 1 is a method claim, such that the prior art need only teach one of the two recited alternative, conditional steps;2 however, both alternative steps recite the “first threshold period.” We agree with Appellant that Terpstra does not teach or suggest all claim limitations, because Terpstra does not teach or suggest any threshold period between the occurrence of the first message and the second message. See Reply Br. 4 (“Terpstra fails to provide any teaching or suggestion that 2 See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (discussing construction of conditional limitations in method claims). Appeal 2017-006006 Application 11/842,720 5 th[e disclosed] ‘set period’ has any relation whatsoever to the time at which Terpstra's initial SIP Register message is sent.”); see also Terpstra Fig. 2.3 Thus, we agree with Appellant that Terpstra and Swinton do not teach or suggest the limitation “first threshold period” as required by claim 1. The Examiner does not rely on Suzukawa for teaching the first threshold period. See Final Act. 4–5. As such, we are persuaded the Examiner erred in finding the cited references teach or suggest the limitations of claim 1, and the limitations similarly recited by independent claims 17 and 25. We do not sustain the Examiner’s obviousness rejection of these claims, or the claims dependent thereon. DECISION The Examiner’s decision rejecting claims 1, 3–15, 17, 18, 21–25, and 27–31 is reversed. REVERSED 3 Further, we note the Examiner’s claim construction impermissibly reads the same term, “occurs,” as having a different meaning when recited in each step (i.e., during the threshold period, occurs means modifying a message, whereas after the threshold period, occurs means sending the message). See Ans. 5; cf. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”).