Ex Parte Jrad et al

Patent Trial and Appeal Board

Jan 13, 2014

11838349 (P.T.A.B. Jan. 13, 2014)

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.
11/838,349 08/14/2007 Ahmad M. Jrad LCNT/128547 6583
46363 7590 01/13/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
MAPA, MICHAEL Y
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
01/13/2014 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 AHMAD M. JRAD, GERARD P. O'REILLY,
HIMANSHU PANT, and STEVEN H. RICHMAN
____________________

Appeal 2011-006241
Application 11/838,349
Technology Center 2600
____________________

Before ALLEN R. MACDONALD, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006241
Application 11/838,349

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION

The claims are directed to a method and apparatus for signaling a call
from a caller terminal to a callee terminal. Spec. 1. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method for establishing a call from a caller to a callee,
comprising the steps of:
monitoring call establishment signaling associated with a
request by a caller to establish a call from a first terminal of the
caller to a first terminal of the callee;
in response to at least one condition in the network,
determining a location of each of the at least one condition in
the network; and
routing the call establishment signaling to at least one of
a second terminal of the caller and a second terminal of the
callee based on the location of each of the at least one condition
in the network.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huomo
Pence
US 2003/0022671 A1
US 2005/0152526 A1
Jan. 30, 2003
July 14, 2005
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Application 11/838,349

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REJECTIONS
1

The Examiner made the following rejections:
Claims 1, 4, 8, 11, 15, 16, 21, and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Huomo. Ans. 3-9.
Claims 2, 6, 7, 9, 13, 14, 18-20, and 24-29 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Huomo. Ans. 10-19.
Claims 3, 5, 10, 12, 17, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Huomo and Pence. Ans. 19-22.

APPELLANTS’ CONTENTIONS
1. Huomo’s system monitors and salvages by reconnecting an existing
connection that has been broken rather than providing initial call
establishment (App. Br. 8-11) and thereby fails to disclose
“monitoring call establishment signaling associated with a request by
a caller to establish a call from a first terminal of the caller to a first
terminal of the callee” (App. Br. 8.)

1
Appellants argue the rejection of claims 1-29 on the basis of claim 1 with
an additional contention of error made in connection with method claims 8
and 21. Separate arguments that the prior art fails to disclose specific
limitations are not made for claims 2-29. “A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence).
Further, merely restating with respect to a second claim an argument,
previously presented with respect to a first claim, is not an argument for
separate patentability of the two claims. Therefore, based on Appellants’
arguments, we will decide the appeal of claims 1-29 based on claim 1 alone
and address contentions concerning “means” claims 8 and 21 collectively.

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2. Huomo’s system for reconnecting an existing call fails to disclose
“monitoring call establishment signaling associated with a request by
a caller to establish a call from a first terminal of the caller to a first
terminal of the callee.” App. Br. 11-12.
3. The Examiner’s rejections runs afoul of 37 C.F.R. § 1.104 for failure
to “establish that the claimed subject matter is disclosed in the
reference with ‘sufficient specificity to constitute an anticipation
under the statute.’” App. Br. 12 citing MPEP § 2131.03 (II).
4. The Examiner has disregarded structure corresponding to the
disclosed “means for” limitations of claims 8 and 21 in finding that
the corresponding limitations are disclosed by Huomo. App. Br. 13-
15.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 8-17)
and Reply Brief (Reply Br. 2-8), the issues presented on appeal are:
(i) Whether the Examiner erred in finding Huomo discloses the disputed
limitations of claim 1.
(ii) Whether, under 35 U.S.C. § 112, sixth paragraph, the Examiner
improperly disregarded the structure corresponding to the “means for”
limitations of claims 8 and 21.

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ANALYSIS
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered, and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
In the Appeal Brief, Appellants only present substantive arguments
against the rejection of independent claim 1, particularly against Huomo,
and do not separately argue failure of the prior art to disclose, teach, or
suggest the limitations of independent claims 8, 15, 21 or 27 or dependent
claims 2-7, 9-14, 16-20, 22-26, 28, and 29. See App. Br. 8-17. We therefore
find independent claim 1 to be representative of the claims on appeal.
On the record before us, we find the preponderance of the evidence
supports the Examiner’s conclusion that Huomo discloses the subject matter
of representative claim 1. Ans. 3-22. Specifically, the Examiner has
provided a comprehensive response, see Ans. 22-34, to Appellants’
arguments, see App. Br. 13-17. We have reviewed the Examiner’s response,
and the Examiner’s findings. Final Rej. 2-24; Ans. 3-34. We find that both
the response and findings are supported by ample evidence. Accordingly, 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 reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We highlight the following for emphasis.
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Claim 1
In connection with contention 1 (App. Br. 8), we agree with the
Examiner’s interpretation of “call establishment signaling” (Ans. 3-4, 22-
26). Appellants provide insufficient evidence that the Examiner’s
interpretation is contrary to the ordinary and customary meaning of the
phrase or is otherwise inconsistent with the Specification which describes
“[t]he call establishment signaling may include any other signaling which
may be required in order to establish a connection between a caller terminal
and a callee terminal, as described herein.”
2
Spec. 12, ll. 12-15. We agree
with the Examiner that call establishment signaling is not limited to initial
establishment signaling (Ans. 22). Furthermore, Appellants’ argument that
the claims should be construed “to provide automatic call establishment in
response to any initial call establishment request” (App. Br. 10-11) is not
persuasive of error for the reasons set forth by the Examiner. See, e.g., Ans.
27. Reading a claim in light of the specification, to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
reading limitations of the specification into a claim, to thereby narrow the

2
Where no explicit definition for a term is given in the specification, the
term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368
(Fed. Cir. 2003). The ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1319 (Fed. Cir. 2005) (en banc). Applicants are entitled to be their own
lexicographer and may rebut the presumption that claim terms are to be
given their ordinary and customary meaning by clearly setting forth a
definition of the term that is different from its ordinary and customary
meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05, (CCPA
1969). Absent express language limiting the disputed language to initial call
establishment, it would be improper and we decline to import such a
limitation from the Specification into claim 1. Therefore, on the record
before us, we find the Examiner did not err in finding Huomo’s monitoring
an attempt to reconnect discloses the disputed monitoring call establishment
signaling. Ans. 23.
In connection with contention 2 (App. Br. 11-12), we further agree
with the Examiner that Huomo’s monitoring call establishment signaling is
associated with a request by a caller. Ans. 28. Huomo’s method includes an
initial call associated with a request by a caller to establish a call and
therefore the subsequent remedial action of reconnecting a broken
connection is also “associated with” the request by a caller to establish (and
thereby reestablish) the call.
In connection with Appellants’ contention 3 arguing the Examiner has
failed to comply with 37 C.F.R. § 1.104
3
(App. Br. 12), we disagree that the

3
Examination “shall be complete with respect . . . to the patentability of the
invention as claimed.” 37 C.F.R. § 1.104(a)(1) (Emphasis Added). “The
reasons for any adverse action . . . will be stated in an Office action and such
information or references will be given as may be useful in aiding the
applicant . . . to judge the propriety of continuing the prosecution” 37 C.F.R.
§ 1.104(a)(2). “In rejecting claims for want of novelty or for obviousness,
the examiner must cite the best references at his or her command. When a
reference is complex . . ., the particular part relied on must be designated as
nearly as practicable. The pertinence of each reference, if not apparent, must
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Examiner has been insufficiently specific to support the anticipation
rejection. We find it is clear from the record how the Huomo disclosure is
being applied by the Examiner to reject the currently pending claims. “[A]ll
that is required of the [Patent] [O]ffice to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011). We find the Examiner has met this
burden. The Examiner explains how the cited portions of Huomo disclose
the disputed limitations. See Ans. 3-4, 22-32. Appellants have not provided
persuasive evidence or argument to rebut the Examiner’s prima facie case.
See Jung, 637 F.3d at 1365-66 (citing Ex Parte Frye, 94 USPQ2d 1072
(BPAI 2010) (precedential)).
Accordingly, on the record before us, we sustain the Examiner’s
rejection of this claim and, for the same reasons, independent claims 15 and
27, as well as dependent claims 2-7, 16-20, 28, and 29 for the reasons set
forth in the Answer, which we incorporate herein by reference. Ans. 1 et seq.
Rejection of Claim 8 Pursuant 35 U.S.C. § 112, 6
th
Paragraph
Appellants contend the Examiner has disregarded structure
corresponding to the disclosed “means for” limitations of claims 8 and 21 in
finding that the corresponding limitations are disclosed by Huomo. App. Br.
13-15. We agree with Appellants that, in determining the broadest

be clearly explained and each rejected claim specified.” 37 C.F.R.
§ 1.104(c)(2).
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reasonable interpretation, the Examiner is obligated to construe claims 8 and
21 in accordance with 35 U.S.C. § 112, sixth paragraph. In re Donaldson
Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994). However, Appellants have
adduced no persuasive evidence that the Examiner has not done so. That the
Examiner has not articulated a claim construction on the record is not
probative because “[t]here has never been a requirement for an examiner to
make an on-the-record claim construction of every term in every rejected
claim,” See Jung, 637 F.3d at 1363; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990). Furthermore, other than in connection with
contentions 1-3 supra, Appellants allege no specific failure of Huomo to
disclose structure corresponding to the disputed “means for” limitations. In
the absence of sufficient evidence or argument explaining why Huomo fails
to disclose the limitations of claims 8 and 21, we find the Examiner’s
rationale and conclusions (Ans. 5-6, 8-9, and 33) to be reasonable.
Accordingly, contention 4 is unpersuasive of reversible Examiner error and
we sustain the rejection of independent claim 8 and, for the same reason, the
rejection of independent claim 21 as well as their respective dependent
claims 9-14 and 22-26.
CONCLUSION
We find:
i) The Examiner did not err in finding Huomo discloses the disputed
limitations.
ii) The Examiner did not disregard the structure corresponding to the
“means for” limitations of claims 8 and 21.
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iii) The Examiner did not err in rejecting
a) Claims 1, 4, 8, 11, 15, 16, 21, and 22 under 35 U.S.C. § 102(b) as
being anticipated by Huomo.
b) Claims 2, 6, 7, 9, 13, 14, 18-20, and 24-29 under 35 U.S.C. § 103(a)
over Huomo.
c) Claims 3, 5, 10, 12, 17, and 23 under 35 U.S.C. § 103(a) as being over
Huomo and Pence.

DECISION
The decision of the Examiner to reject claims 1-29 is affirmed.
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

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