Ex Parte MA et al

Patent Trial and Appeal Board

Aug 24, 2016

13730287 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/730,287 12/28/2012
96355 7590 08/26/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
KA-YUI KEVIN MA
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.
5524-131 1063
EXAMINER
ANSARI, NAJEEBUDDIN
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA-YUI KEVIN MA and EUGENE PETER CANNON
Appeal2015-005890
Application 13/730,287
Technology Center 2400
Before ADAM J. PYONIN, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005890
Application 13/730,287
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "[a]n IP telephony system [that] allows
a user to register a telephony device that receives its native telephony service
from a different telephony service provider as an extension telephone"
where "[t]he user can then place calls through the IP telephony system using
the extension telephone." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method of setting up a telephony communication for a te-
lephony device that receives its native telephony service from a
first telephony service provider, comprising:
receiving a telephony communication setup request from the
telephony device, the setup request being received at a second
telephony service provider via a data connection that has been
established between the telephony device and the second teleph-
ony service provider via a data network;
determining if the data connection satisfies at least one quality
criteria;
establishing the requested telephony communication between
the telephony device and the second telephony service provider
as a VOIP telephony communication that traverses the data net-
work if the result of the determining step indicates that the data
connection satisfies the at least one quality criteria.
1 Appellants identify V onage Network, LLC as the real party in interest.
(See App. Br. 3.)
2
Appeal2015-005890
Application 13/730,287
THE REFERENCES AND THE REJECTION
Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Desa et al. (US 2007 /0201453 Al; pub. Aug. 30, 2007) and Rassam
(US 2007/0037550 Al; pub. Feb. 15, 2007). (See Final Act. 3-26.)
ANALYSIS
Appellants' independent claims2 concern setting up communication
for a telephony device that receives its native telephony service from a first
provider, including (a) receiving a setup request from the telephony device
over a data connection to a second service provider, (b) determining if the
data connection satisfies at least one quality criterion, and ( c) if the criterion
is satisfied, establishing VOIP telephony communication between the device
and the second provider.
The Examiner found that Desa teaches everything in claim 1, except
"determining if the data connection satisfies at least one quality criteria for
establishing the requested telephony communication if the result of the
determining step indicates that the data connection satisfies the at least one
quality criteria," but that Rassam "teaches a quality criteria in order to select
and/or establish a communication session via a plurality of telephone
communication services as in the present application." (Final Act. 4--5.)
Appellants first argue that Desa's "call setup request would be
received by the VOIP service provider via the cellular telephone call that is
connected through the cell phone's native cellular service provider,"
2 Claim 1 is a method claim and claims 13, 14, and 15 are corresponding
means, system, and Beauregard claims, respectively.
3
Appeal2015-005890
Application 13/730,287
meaning that "[t]he VOIP service provider does not receive a call setup
request via a data connection that has been established between the cell
phone 29 and the VOIP service provider," such that "Desa fails to disclose
establishing the requested telephony communication between the user's
telephony device and the second telephony service provider as a VOIP
telephony communication that traverses a data network." (App. Br. 12-13,
emphases omitted.)
The Examiner responds, however, that "Examiner had referenced
telephone 12 (or computer 16) throughout prosecution to specifically teach
the disclosed telephony device establishing a communication with a second
telephony service provider via a data connection." (Ans. 3; see also Final
Act. 3; Desa ,-r 16.)
In reply, Appellants argue that treating Desa's telephone 12 or
computer 16 as the claimed "telephony device" would not square with the
claim language requiring that the "telephony device ... receives its native
telephony service from a first telephony service provider," as the telephone
and computer receive only IP telephony service. (See Reply Br. 3--4,
emphasis omitted.)
We find Appellants' arguments unpersuasive because, as the
Examiner found, Desa teaches that the telephone device 12 or computer 16
receive native telephony service from a first provider, e.g., PSTN via carriers
22. (See Final Act. 3; Desa Fig. 1, i-fi-18, 14, 20.) The Examiner's findings
are reasonable: we do not read the claims as requiring, for example, that the
first and second providers both be connected directly to the telephony
device, or that the first provider not be connected through the second
4
Appeal2015-005890
Application 13/730,287
provider. The "first provider" may be one of the carriers, and the "second
provider" may be the VoIP provider. 3
Appellants also argue that "Rassam is not establishing a VOIP
communication if the quality criteria of a data connection is sufficient" and
that "[i]n fact, Rassam does not even appear to contemplate or realize that
the quality of data communications passing over a data network might cause
problems with a VOIP telephone call established over the data network."
(App. Br. 14--15, emphasis omitted.) We are not persuaded. Rassam
teaches determining whether to use a particular connection based on the
strength of the connection. (See Final Act. 4--5; Rassam Fig. 7, i-fi-120-21.)
In light of this teaching, we agree with the Examiner that it would have been
obvious to a person of ordinary skill in the art to check the quality of Desa's
VOIP connection before attempting to establish a call. (See Ans. 4--5.)
Obviousness turns not on the precise language of the references but, instead,
on what the references, when considered together, "would have suggested to
one of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981); see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417-19 (2007).
Appellants next argue that there would have been no motivation to
combine because "Desa assumes a valid connection over the VOIP service
provider and thus does not foresee a need to determine if the call quality is
sufficient before using the VOIP service provider." (App. Br. 16, emphasis
omitted.) We agree with the Examiner that "[a] person of ordinary skill in
3 Appellants' reply argument that "Desa only takes the user to a menu and is
not 'receiving a telephony communication setup request"' (Reply Br. 2) is
not persuasive because it is still based on the idea that Desa's cell phone
would be the source of the request.
5
Appeal2015-005890
Application 13/730,287
the art would have been motivated to combine ... to ... establish a V olP
communication if it is determined the VoIP connection is able to handle the
call based on a quality criteria as in the present application." (Ans. 5.) A
skilled artisan would have understood that it would be undesirable to attempt
to establish a call over a connection incapable of supporting it.
Finally, Appellants argue that the combination does not teach or
suggest "monitoring the transmission of data packets carrying the telephony
communication setup request," as in claims 3 and 1 7, or "monitoring the
transmission of data packets carrying the acknowledgement message," as in
claims 4 and 18. We agree with the Examiner that Desa and Rassam, in
teaching analysis of a voice over IP connection, would teach, to one of skill
in art, monitoring the transmission of data packets. (See Final Act. 6-7;
Ans. 6-7.)
For these reasons, we sustain the Examiner's rejection of claims 1-27
under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 1-27 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)(l )(iv).
AFFIRMED
6