Ex Parte Kamat et al

Patent Trial and Appeal Board

Feb 15, 2019

14812002 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/812,002 07/29/2015
48500 7590 02/20/2019
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Durgesh Kamat
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.
4366-747 9387
EXAMINER
LOUIS-FILS, NICOLE M
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DURGESH KAMAT, PUNEET KUMAR, and
PRACH! KAJARIA 1
Appeal2018-006921
Application 14/812,002
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-8, 11-14, 18, and 19. The Examiner objected to
claims 9, 10, 15-17, and 20. Final Act. 1, 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, Avaya Inc. is the real party in interest. App.
Br. 2.
2 Our decision relies upon Appellants' Appeal Brief, filed Apr. 2, 2018
("App. Br."); Appellants' Reply Brief, filed June 25, 2018 ("Reply Br.");
Examiner's Answer, mailed Apr. 24, 2018 ("Ans."); Final Office Action,
mailed Nov. 27, 2017 ("Final Act."); and the original Specification, filed
July 29, 2015 ("Spec.").
Appeal2018-006921
Application 14/812,002
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to a
telephony system that manages a call disconnection. Spec. ,r 1; Abstract.
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A server, comprising:
a network interface configured to receive and route calls;
a data store comprising a forking record for a called device
indicating an associated forked device;
a processor configured to receive a call, access the forking
record, determine the call is addressed to the called device
and, in response to the determination, generate a forked call
to the forked device, and cause the network interface to
route the forked call to the forked device; and
the processor being further configured to, in response to the
network interface receiving a disconnect message from the
forked device, route the received call to a voicemail server
associated with at least one of the called device and the
forked device.
App. Br. 12 (Claims App'x).
THE REJECTION
Claims 1-8, 11-14, 18, and 19 stand rejected under 35 U.S.C.
§ I02(a)(2) as anticipated by Shtiegman (US 2008/0002820 Al, published
Jan. 3, 2008).
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 4--10) and our discretion
under 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv), we decide the appeal of anticipation
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Application 14/812,002
Rejection RI of claims 1-8, 11-14, 18, and 19 on the basis of representative
claim 1. 3
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1. We
highlight and address specific findings and arguments regarding this claim
for emphasis as follows.
Anticipation Rejection of Claim 1
Claim 1 recites "receiving a disconnect message from the forked
device." Appellants argue that Shtiegman fails to disclose this limitation.
App. Br. 4--10; Reply Br. 1-5. Specifically, Appellants argue Shtiegman is
deficient because the claim requires the "disconnect message" to be sent
from a forked device after a call has been answered by the forked device. Id.
3 When addressing the dependent claims, Appellants primarily rely upon the
arguments presented for claim 1, but also state "[ a ]dditional reasons
supporting allowance of the dependent claims is [sic] also believed to be
evident." App. Br. 10. Appellants neither identify specific limitations from
these claims, nor provide any substantive arguments regarding these
limitations. Id. Accordingly, we do not consider Appellants to separately
argue these dependent claims. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential); see also 37 C.F.R. § 4I.37(c)(l)(iv) (2014)
("The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.").
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Application 14/812,002
Accordingly, we first evaluate the proper construction of the claim
term "disconnect message." During prosecution, claims must be given their
broadest reasonable interpretation in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we
interpret claim terms using "the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997).
Appellants contend a "disconnect message" requires an ongoing call,
i.e., a call that was previously answered. 4 App. Br. 6-7; Reply Br. 2-3. In
support, Appellants point to the ordinary use of the word "disconnect,"
reasoning that "it would be nonsensical to disconnect devices that are not
connected." App. Br. 6. In addition, Appellants point to an "SIP Protocol"
document to support Appellants' understanding of the term "disconnect."
4 We note that, although Appellants sometimes cast the dispute in terms of
whether a connection (of any sort) is a prerequisite for a "disconnect
message," Appellants' arguments make it clear that the salient issue is
whether a call must be connected (i.e., answered) before a disconnect
message can be sent. See, e.g., App. Br. 6 (reasoning that "disconnect"
requires a "connect" and then asserting that "disconnect" cannot be equated
with "no answer"); id. at 7 ("Counter to [sic] the Examiner's position
'temporarily unavailable, no answer, do not disturb' are not disconnect
messages."); id. at 9 (equating connected with answered and connected call);
Reply Br. 4 ("Appellant maintains that there is no connection when a call is
placed but results in any one of 'temporarily unavailable, no answer, do not
disturb or a failure in the system."').
4
Appeal2018-006921
Application 14/812,002
Id.; see id. at 4 (introducing and defining "SIP Protocol"); see also id. at 15-
17 ("Dictionary Appendix" allegedly quoting excerpts of the SIP Protocol).
The Examiner responds the claim does not require "that the call has
been connected," and the Examiner submits that the language of claim 1
does not exclude a disconnect message caused by a forked device being
temporarily unavailable, not answering, or set to "do not disturb." Ans. 2-3.
We are not persuaded by Appellants' arguments regarding the
meaning of "disconnect message." First, even if the term "disconnect"
suggests the termination of an existing connection, Appellants fail to show
that a post-answer connection, specifically, is required. Second, we have
considered, but place no weight on, Appellants' reference to the SIP
Protocol-this document is not a dictionary or technical treatise, and it
would constitute improper new evidence. 5 See 37 C.F.R. § 4I.37(c)(2) ("A
brief shall not include ... any new or non-admitted affidavit or other
Evidence."); id. § 41.30 (defining evidence to include things that tend to
prove or disprove a fact, except for "dictionaries"); see also Phillips v. A WH
Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en bane) (noting that
"dictionaries and technical treatises" aid in the construction of claim terms).
In particular, the excerpts of the SIP Protocol in Appellants' "Dictionary
Appendix" do not aid in the construction of the term "disconnect message."
They do not define the term "disconnect" or "disconnect message," and in
5 Further, Appellants submit that excerpts from the SIP Protocol are quoted
in Appellants' "Dictionary Appendix," but Appellants fail to include a copy
of the SIP Protocol itself. In addition, Appellants fail to identify where the
SIP Protocol can be found in the Application's file history. (Appellants
inclusion of a website link is insufficient, as it fails to make a clear record.)
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Application 14/812,002
fact, the appendix fails to even include the word "disconnect." App. Br. 15-
17.
Rather, we review the Specification for guidance on the broadest
reasonable interpretation of the term "disconnect message." See Phillips,
415 F.3d at 1315 (emphasizing specification's importance in claim
construction). Although the Specification refers to "disconnect message"
only once (Spec. ,r 18), it discusses a "disconnect" in the context of several
different embodiments. Notably, several of these "disconnects" occur before
a call is answered. E.g., id. ,r,r 10, 46-48, 51, 65. For example, Figure 2
shows a situation where a called party 104 "has not answered forked device
112" because, for example, forked device 112 is busy. Id. ,r 46. Forked
device 112 reports disconnect 202 to call server 110 to indicate that it is
busy. Id. ,r 48. Figure 3 depicts another pre-answer scenario where a
disconnect is sent when a device is "busy, disconnected, drops or indicates
that the call should be dropped." Id. ,r 51.
In addition, the context of the claims indicates a "disconnect message"
may be sent before a call is answered. See Phillips, 415 F.3d at 1314 (noting
other claims can provide insight into the meaning of a term). Claim 4,
which depends from claim 1, states that "device busy[] and unavailable" are
two of the possible "reason[ s] for the disconnect" associated with the
disconnect message. App. Br. 12 (Claims App 'x). 6 If a disconnect message
is sent because a device is busy, then it follows that the call was not
6 While dependent claim 4 may be seen as narrowing the scope of
independent claim 1 under the doctrine of claim differentiation (see
Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1323 (Fed.
Cir. 2016)), we note claim 1, while broader, must therefore at least
encompass the narrower embodiment recited in dependent claim 4.
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answered. This further demonstrates that the "disconnect message" recited
in claim 1 can be sent before a call is answered and connected.
Thus, the Specification describes embodiments of a "disconnect" that
occur before a call has been answered, and the claims do not preclude
sending a "disconnect message" before a call is answered and connected.
Accordingly, as a matter of claim construction, we conclude that the recited
"disconnect message" does not require a call to have been answered. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)
(noting that a construction that excludes a preferred embodiment "is rarely,
if ever, correct and would require highly persuasive evidentiary support").
Given this construction, Appellants' arguments fail to show error in
the Examiner's factual findings of anticipation of claim 1. In particular, the
Examiner pointed to paragraphs 250 and 251 of Shtiegman for the disputed
limitation. Final Act. 4. The cited paragraphs state:
LS [Live Server] would run the call timers. When there is
no answer, LS would send out a CANCEL for the existing
INVITEs, and ensure that the right forwarding rules are applied
on no answer. LS also ensures that the time criterion for
forwarding calls are respected.
LS finally retargets the call to the call forward on no
answer destination, which is usually set to Voicemail for UC
enabled users.
Shtiegman ,r,r 250-51. With respect to this passage, Appellants only argue
that Shtiegman's CANCEL message fails to disclose a disconnect message
because it occurs upon a "'no answer' state." App. Br. 8 (emphasis
removed). 7 However, as explained above, this is not commensurate with the
7 In the Reply Brief, Appellants also state this "portion of Shtiegman, and
the entirety of the reference, [are] silent to any teaching of any forked device
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Appeal2018-006921
Application 14/812,002
broadest reasonable interpretation of claim 1, which does not require a call
to be answered. The Examiner found Shtiegman discloses receiving a
disconnect message from a forked device and, in response, routing the
received call to voicemail. Final Act. 2, 4 (citing Shtiegman ,r,r 250-51, 135,
and Fig. 65, among other passages). We agree that the reference discloses
the claim limitation. E.g., Shtiegman ,r,r 239--51 ( disconnect message
disclosed by CANCEL message), Fig. 65 ( described ,r,r 646-4 7, disconnect
message disclosed by deflection to voicemail); see also id. ,r,r 296-303
( describing embodiment where user sends caller to voicemail). Accordingly,
we are not persuaded of error in the Examiner's finding that Shtiegman
discloses "receiving a disconnect message from the forked device," as
recited by claim 1.
Finally, Appellants assert that the Examiner took official notice that
error messages taught the claimed "disconnect message." App. Br. 7; Reply
Br. 2. However, we find the Examiner's factual findings regarding the
disclosure of Shtiegman do not constitute official notice. See MPEP
§ 2144.03 (9th ed. 2018) (providing for official notice "of facts not in the
record" or regarding "'common knowledge"'). Further, Appellants fail to
explain "why [a] noticed fact is not considered to be common knowledge or
well-known in the art," and thus, even assuming the Examiner did rely upon
or any disconnect from aforked device." Reply Br. 2 (emphasis in original).
Appellants did not previously contend that Shtiegman fails to disclose a
forked device. See generally App. Br. 4--10. In addition, we see no error in
the Examiner's finding that Shtiegman discloses a forked device. See Final
Act. 4 ( citing Shtiegman ,r 249 for "rout[ing] the forked call to the forked
device"); Shtiegman ,r 249 ("LS forks the call to the user's endpoints .... ");
see also id. ,r,r 24 7--48 ( disclosing call forking to a user's endpoint and/ or
team members).
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Application 14/812,002
official notice, a fact we do not acknowledge, Appellants do not adequately
traverse any finding of official notice. See id. ("To adequately traverse [a
finding of official notice], an applicant must ... stat[ e] why the noticed fact
is not considered to be common knowledge or well-known in the art.")
Accordingly, this argument does not persuade us of error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitation of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 2-8, 11-14, 18, and 19, which fall therewith. See Claim Grouping,
supra.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-8, 11-14,
18, and 19.
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 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
9