Ex Parte KrstulichDownload PDFPatent Trial and Appeal BoardJun 26, 201512241659 (P.T.A.B. Jun. 26, 2015) Copy Citation 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. 12/241,659 09/30/2008 Zlatko Krstulich 21242-US 7454 23553 7590 06/26/2015 MARKS & CLERK P.O. BOX 957 STATION B OTTAWA, ON K1P 5S7 CANADA EXAMINER ZHOU, YONG ART UNIT PAPER NUMBER 2477 MAIL DATE DELIVERY MODE 06/26/2015 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 ZLATKO KRSTULICH ____________ Appeal 2013-003562 Application 12/241,659 Technology Center 2400 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1–19. (App. Br. 1.)1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We refer to Appellant’s Specification (“Spec.”) filed September 30, 2008; Appeal Brief (“App. Br.”) filed September 7, 2012; and Reply Brief (“Reply Br.”) filed December 20, 2012. We also refer to the Examiner’s Answer (“Ans.”) mailed October 24, 2012 and Final Office Action (Final Rejection) (“Final Act.”) mailed March 19, 2012. Appeal 2013-003562 Application 12/241,659 2 Appellant’s Invention The invention at issue on appeal concerns communication devices and methods for providing information between a Voice over IP (Internet Protocol) (“VoIP”) device and a second device over a public switched telephone network (“PSTN”) by sending to the second device a communication including an embedded watermark, and if the second device is VoIP-capable, sending call packet data (call session packet data) to the second device as IP framed data over a time division multiplex (TDM) channel of the PSTN. (Spec. ¶¶ 1, 2, 5–8; Abstract.) Illustrative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method by which a first communication device, which is Voice over IP (VoIP)- capable, communicates with a second communication device over TDM channels of the PSTN, comprising: informing the second communication device that the first communication device is VoIP-capable by embedding a watermark in communications transmitted over the PSTN; determining whether the second communication device is VoIP-capable by searching for an acknowledgment embedded in communications received over the PSTN; if it is determined that the second communication device is VoIP-capable, sending call session packet data to the second communication device as IP framed data over a TDM channel of the PSTN. Appeal 2013-003562 Application 12/241,659 3 Rejections on Appeal 1. The Examiner rejects claims 1–6, 10, 11, and 14 under 35 U.S.C. § 102(e) as being anticipated Kouchri (US 2007/0274306 A1, published Nov. 29, 2007). 2. The Examiner rejects claims 15–17 under 35 U.S.C. § 103(a) as being unpatentable over Kouchri and Allen (US 6,169,735 B1, issued Jan. 2, 2001). 3. The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Kouchri and Fridman (US 2007/0242676 A1, published Oct. 18, 2007). 4. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Kouchri and Sjolund (US 2004/0131053 A1, published July 8, 2004). 5. The Examiner rejects claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Kouchri and Jain (US 2007/0076662 A1, published Apr. 5, 2007). 6. The Examiner rejects claims 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Kouchri, Allen, and Fridman. ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that Kouchri discloses: informing the second communication device that the first communication device is VoIP-capable by embedding a Appeal 2013-003562 Application 12/241,659 4 watermark in communications transmitted over the PSTN; [and] . . . if it is determined that the second communication device is VoIP-capable, sending call session packet data to the second communication device as IP framed data over a TDM channel of the PSTN within the meaning of Appellant’s claim 1 and the commensurate limitations of claim 15? ANALYSIS The Examiner rejects independent claim 1 under 35 U.S.C. § 102(e) as being anticipated by Kouchri. (Final Act. 2–3; Ans. 2–4.) Appellant contends that Kouchri does not disclose the features of representative claim 1. (App. Br. 6–9; Reply Br. 2.) Specifically, Appellant contends, inter alia, that Kouchri does not disclose a communication including an embedded watermark (App. Br. 6–7) and sending call session packet data as IP framed data over a TDM channel (App. Br. 7–9; Reply Br. 2). We agree with Appellant that Kouchri does not describe sending call session packet data as IP framed data over a TDM channel within the meaning of claim 1. (Id.) Although Kouchri describes sending messages between IP networks (VoIP devices) across a TDM network (channel) (see Kouchri ¶¶ 34, 43, 56, 75), Kouchri only describes sending such messages for call setup, not for transferring call session packet data. (See App. Br. 7– 9; Reply Br. 2.) This disclosure is insufficient to anticipate the recited limitation in Appellant’s claim 1. Such disclosure is also insufficient to render obvious the commensurate limitation in Appellant’s claim 15. Appeal 2013-003562 Application 12/241,659 5 Consequently, we are constrained by the record before us to find that the Examiner erred in finding Kouchri discloses the recited features of Appellant’s claim 1. Appellant’s independent claim 15 includes limitations of commensurate scope. Appellant’s dependent claims 2–14 and 16–19 depend from and stand with their respective base claims. Accordingly, we reverse the Examiner’s rejections of claims 1–19. CONCLUSIONS Appellant has shown that the Examiner erred in rejecting claims 1–6, 10, 11, and 14 under 35 U.S.C. § 102(e). Appellant has shown that the Examiner erred in rejecting claims 7–9, 12, 13, and 15–19 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1–19. REVERSED tkl Copy with citationCopy as parenthetical citation