Ex Parte Kikinis

Board of Patent Appeals and Interferences

May 19, 2005

09024923 (B.P.A.I. May. 19, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAN KIKINIS
_____________
Appeal No. 2005-0508
Application No. 09/024,923
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 4-7, 10-13, 15 and 18,
which constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for converting telephony calls between Connection
Oriented/Switched Telephony (COST) calls and Internet Protocol
Appeal No. 2005-0508
Application No. 09/024,923
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Network Telephony (IPNT) calls in order to permit live
conversation between a user on a COST telephone connected to the
COST network and a user on an IPNT terminal connected to the
Internet.
Representative claim 1 is reproduced as follows:
1. A computerized telephony bridge unit, comprising:
a trunk-line port and associated circuitry for
receiving and placing Connection Oriented/Switched
Telephony (COST) telephone calls on a COST network;
a data network port and associated circuitry for
receiving and placing Internet Protocol Telephony Network
(IPNT) calls on the Internet;
conversion circuitry for converting data
representing calls dynamically between IPNT and COST
telephone calls and
a digitally-stored look-up table relating COST
telephone numbers to IP addresses;
characterized in that control routines functioning
as part of the bridge unit receive a first incoming call
from one of the COST and Internet networks, extract
specific data encoded into the incoming call, either COST
or IPNT, and use the extracted data to access the look-up
table to determine an associated COST telephone number or
IP address, and use the associated COST telephone number
or IP address to place a call associated with the
received call on the network other than the network on
which the call is received, and dynamically convert data
between the associated calls, and the dynamic conversion
of data enables two people to engage in a live
conversation even though one person is on the Internet
and the other is on a COST network.
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Application No. 09/024,923
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The examiner relies on the following references:
Iwami et al. (Iwami) 5,604,737 Feb. 18, 1997
Chang et al. (Chang) 6,198,738 Mar. 06, 2001
(filed Apr. 16, 1997)
Claims 1, 4-7, 10-13, 15 and 18 stand rejected under 35
U.S.C. § 103(a). As evidence of obviousness the examiner offers
Iwami in view of Chang.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
Appeal No. 2005-0508
Application No. 09/024,923
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the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
Appellant has indicated that for purposes of this appeal
the claims will all stand or fall together as a single group
(brief, page 9). Consistent with this indication appellant has
made no separate arguments with respect to any of the claims on
appeal. Accordingly, all the claims before us will stand or fall
together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983). Therefore, we will consider the rejection
against independent claim 1 as representative of all the claims
on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
Appeal No. 2005-0508
Application No. 09/024,923
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teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039-40, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this
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Application No. 09/024,923
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decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered and are deemed
to be waived (see 37 CFR § 41.37(c)(1)(vii)(2004)).
With respect to representative independent claim 1, the
examiner essentially finds that Iwami teaches the claimed
invention except that Iwami does not specifically disclose that
the LAN network includes the Internet. Since Iwami discloses
that the LAN can run TCP/IP or UDP/IP protocols, the examiner
finds that the LAN could be the Internet. The examiner also
cites Chang as teaching the completion of calls between a
computer and a telephone. The examiner finds that it would also
have been obvious to the artisan to include the Internet as
taught by Chang with the method and system of Iwami (answer,
pages 3-4).
Appellant argues that the operation taught by Iwami does
not meet the claimed “extracting specific data encoded into the
incoming call either COST or IPNT, and using the extracted data
to access the look-up table to determine an associated COST
number or IP address as claimed” (brief, page 10). Appellant
also argues that Iwami fails to teach processing an incoming
Internet call and only deals with incoming COST calls. Appellant
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also argues that the motivation for combining the teachings of
Chang with Iwami comes from appellant’s own disclosure (id.,
pages 10-12).
The examiner responds that it would not be possible for
the communication server to know which telephone to send the call
setting request to unless the server decoded information received
in the voice communication request to obtain the correct
telephone number. In other words, it is the examiner’s position
that the called telephone number itself constitutes data which
has been encoded into the incoming call. The examiner also
responds that even though claim 1 recites incoming COST or IPNT
calls in the alternative, Iwami does teach the processing of
incoming Internet calls in Figure 11 and the use of a look-up
table in Figure 18. Finally, the examiner explains how the
invention of claim 1 is derived from the teachings of Iwami and
Chang and not from appellant’s own disclosure (answer, pages 5-
8).
We will sustain the examiner’s rejection of all the
claims on appeal for essentially the reasons argued by the
examiner in the answer. Specifically, we agree with the examiner
that Iwami clearly teaches connecting calls from a telephone to a
computer or from a computer to a telephone. We also agree with
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Application No. 09/024,923
8
the examiner that any call made includes the called telephone
number encoded within the call even if the encoding constitutes
nothing more than the telephone number itself or the Internet
address of the computer being called. As noted by the examiner,
the term “encoded” is broad enough to read on almost any
information such as the telephone number. It is clear that Iwami
uses the extracted information, that is, the telephone number, to
access a look-up table as claimed (see Figure 18). Regarding the
motivation to combine, Chang is only cited to teach that it was
known to communicate telephone calls between a standard telephone
and a computer on the Internet. We agree with the examiner that
it would have been obvious to the artisan to replace the generic
LAN taught by Iwami with the Internet in order to provide a wider
network for the system of Iwami to be used.
In summary, we find that the examiner has established a
prima facie case of the obviousness of the claims on appeal, and
appellant’s arguments have not persuaded us that the rejection is
in error. Therefore, the decision of the examiner rejecting
claims 1, 4-7, 10-13, 15 and 18 is affirmed.
Appeal No. 2005-0508
Application No. 09/024,923
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).

AFFIRMED

)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
JS/hh
Appeal No. 2005-0508
Application No. 09/024,923
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