Ex Parte MA et alDownload PDFPatent Trial and Appeal BoardAug 23, 201613730325 (P.T.A.B. Aug. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/730,325 12/28/2012 96355 7590 08/25/2016 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. 5524-158 8131 EXAMINER ANSARI, NAJEEBUDDIN ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 08/25/2016 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 Appeal2015-003800 Application 13/730,325 Technology Center 2400 Before ADAM J. PYONIN, NABEEL U. KHAN, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-003800 Application 13/730,325 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 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 bridging an existing telephony communication that has already been established by a first telephony service pro- vider to a first telephony device that receives its native telephony service from a second telephony service provider, comprising: receiving, at a first telephony service provider, a request from the first telephony device that receives its native telephony ser- vice from a second telephony service provider, the request indi- cating that the first telephony device is to be connected to an on- going telephony communication that has been established by the first telephony service provider to a second telephony device that is associated with the same account as the first telephony device; and bridging the first telephony device into the ongoing telephony communication. 1 Appellants identify V onage Network, LLC as the real party in interest. (See App. Br. 3.) 2 Appeal2015-003800 Application 13/730,325 THE REFERENCES AND THE REJECTION Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Desa et al. (US 2007/0201453 Al; published Aug. 30, 2007) and Barlow et al. (US 7,106,848 Bl; published Sept. 12, 2006. (See Final Act. 3-23.) ANALYSIS Appellants' claim 1 is directed to a method for bridging an existing communication established by first provider to a "first telephony device" that receives its native telephony service from a different provider, where the first provider receives a request from the first device indicating that it is to be connected to the existing connection, which is with a "second telephony device" that is associated with the same account as the first telephony device, and bridges the first telephony device into the existing communication. (See Claim 1; Spec. i-fi-f 126-130 & Fig. 11.) For example, the subscriber's cell phone may join an existing call between the subscriber's primary VoIP device and a third party. (See Spec. i-fi-f 129-130 ("As a result, the user of the extension telephony device will be able to participate in the call. This type of a bridge arrangement essentially resembles a conference call.").) The Examiner found that Desa teaches everything in claim 1, except that "Desa fails to explicitly teach bridging an existing and/or an ongoing telephony communication that has been established by the first telephony service provider as in the present application," but that "Barlow teaches a method for transferring an in-progress communication from one communicating device to another." (Final Act. 5.) 3 Appeal2015-003800 Application 13/730,325 Appellants argue that the cited combination does not teach or suggest "receiving, at a first telephony service provider, a request from the first telephony device that receives its native telephony service from a second telephony service provider, the request indicating that the first telephony device is to be connected to an ongoing telephony communication that has been established by the first telephony service provider to a second telephony device that is associated with the same account as the first telephony device" and "bridging the first telephony device into the ongoing telephony communication," as recited in claim 1 and similarly recited in claims 8 and 9. (App. Br. 10.) Appellants similarly argue that the combination does not teach or suggest "establishing a telephony communication between the telephony device and the first telephony service provider so that the first telephony service provider can bridge the telephony device into the existing telephony communication," as recited in claim 16. (Id.) In particular, Appellants assert that "Desa's network operation center is not receiving a request from the cell phone indicating that the cell phone is to be connected to an ongoing telephony communication, nor is the network operations center bridging the cell phone call onto the ongoing telephony communication" (App. Br. 11) and that "Barlow does not at all describe an IP telephony service that initiates an outbound call to a called party and then bridges an incoming call from a calling party to the ongoing outbound call to the called party" (App. Br. 13). The Examiner responds that Desa teaches the first telephony service provider (VoIP system) receives a setup request from a first telephony device (cell phone) to connect and/or further bridge a communication between the 4 Appeal2015-003800 Application 13/730,325 first telephone device and a V olP phone/telephony to access said VoIP system functionalities of the second telephony device (VoIP phone) associated with the same account as the first te- lephony device (cell phone) as in the present application. (Ans. 4.) The Examiner additionally determines that [a]lthough Desa fails to explicitly teach bridging an existing and/or an ongoing telephony communication that has been estab- lished by the first telephony service provider as in the present application, Barlow from an analogous art teaches a method for transferring an in-progress communication from one communi- cating device to another. The method includes establishing a connection between first and second communicating stations, and receiving a signal from one of the communicating stations requesting a transfer of the connection and identifying a third sta- tion to which the connection is to be transferred. A connection is then established between one of the first and second communi- cating stations and the third station (Barlow: column 2, lines 40- 58; see also column 4, lines 19-55). Since Barlow teaches con- necting a third station with an existing communication between the first and second stations, Barlow similarly teaches bridging a device into an existing connection as in the present application. (Id. 4--5.) We agree with Appellants. Desa teaches a third party calling into a VoIP system and being presented with the option of being transferred to the subscriber or using available VoIP services, such as inexpensive long distance. (See Desa i-fi-137--46.) Barlow teaches that an ongoing call participant may, from the device they are using, request transfer of their end of the call to another device (e.g., a home phone instead of a cell phone). (See Barlow 4:19-52.) We do not find in this art, separately or in combination, a teaching or suggestion that a device that receives its native telephony service from another provider would request connection to an ongoing communication and be bridged into that communication. In Desa, 5 Appeal2015-003800 Application 13/730,325 the only communication is that between the cellphone user and the subscriber or the VoIP services. The cellphone, which the Examiner maps to the "first telephony device" (see Final Act. 3), is not requesting to join an existing communication.2 In Barlow, although there is a request to transfer the call, that request comes from one of the communication devices already on the call, not a new device. For these reasons, we reverse the 35 U.S.C. § 103(a) rejections of claims 1-22. DECISION The rejections of claims 1-22 are reversed. REVERSED 2 We find no support in the reference for the Examiner's finding that "Desa teaches the first telephony service provider (VoIP system) receives a setup request from a first telephony device (cell phone) to connect and/or further bridge a communication between the first telephone device and a VoIP phone/telephony .... " (Ans. 4, emphasis added.) The cell phone initiates a new communication; it does not join an existing communication. 6 Copy with citationCopy as parenthetical citation