Ex Parte MA et alDownload PDFPatent Trial and Appeal BoardJan 25, 201813244872 (P.T.A.B. Jan. 25, 2018) 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. 13/244,872 09/26/2011 Ka-yui Kevin MA JCE-5524-53 9095 96355 7590 01/29/2018 NIXON & VANDERHYE, P.C. / Vonage 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER ANSARI, NAJEEBUDDIN ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 01/29/2018 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 JOHN ERICKSON Appeal 2017-003700 Application 13/244,872 Technology Center 2400 Before ADAM J. PYONIN, NABEEL U. KHAN, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-003700 Application 13/244,872 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—13, which are all of the pending claims. 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 users ... to register extension telephony devices.” (Abstract.) Claim 1, reproduced below, exemplifies the subject matter on appeal: 1. A method of creating a correlation between telephone num bers associated with different geographical areas, comprising: receiving, from a telephony device, a request for the assign ment of a telephone number associated with a first geographical area that is to correspond to a telephone number associated with a second geographical area; assigning a first telephone number associated with the first geographical area to a second telephone number associated with the second geographical area, where the first telephone number can subsequently be used to connect telephony communications to the second telephone number; and informing the telephony device of the first telephone number. 1 Appellants identify Vonage Network, LLC as the real party in interest. (See App. Br. 3.) 2 Appeal 2017-003700 Application 13/244,872 THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Albal et al. US 2003/0147518 A1 Sarp et al. US 2005/0180555 Al Forte US 2008/0107252 Al Chen et al. US 2010/0150337 Al THE REJECTIONS 1. Claims 1—11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chen and Sarp. (See Final Act. 3—12.) 2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chen and Forte. (See Final Act. 12—14.) 3. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable Chen, Forte, and Alba. (See Final Act. 14—15.) Aug. 7, 2003 Aug. 18,2005 May 8, 2008 June 17, 2010 BACKGROUND Appellants ’ Invention According to Appellants, the method of claim 1 is illustrated in their Figure 5 and described in paragraphs 72—76 of the Specification. (See App. Br. 6.) Paragraph 72 explains that an “IP telephony system 120 can assign a local access number for a user to correspond to a number that the user frequently calls from his extension telephony device.” For example, a user who “frequently uses his cellular telephone 134 to call his mother, who has analog telephone 152 in a different country . . . can request that the IP telephony system assign a local access number to correspond to the 3 Appeal 2017-003700 Application 13/244,872 telephone number assigned to his mother’s analog telephone 152.” (Spec. 172.) The Prior Art Chen describes “a system for cross-registration of a phone device.” (Chen, Abstract.) The portion of the reference cited by the Examiner describes how, upon receiving a cross-registration request, a processor may associate a local phone device with a user having a remote user phone profile stored in a remote call processing system and may transmit the corresponding remote user phone profile to the local phone device. (See Chen 1 54.) For example, a user named John may have a profile stored on a “NYC Server” and, when John wishes to use a “Chicago Phone,” “[t]he NYC Server receives the request and associates the Chicago Phone with John” and “transmits John’s Phone Profile to the Chicago Phone, so that the Chicago Phone provides John with the ability to use the user preferences stored in the phone profile.” (Id.) Then, “[e]ven though John is in Chicago, where phone numbers have a (312) area code, a NYC area code is presented to [a] device that John is trying to reach.” (Id. 1 65.) Sarp concerns “a dynamic telephone configuration mode for users of a telephone system.” (Sarp, Abstract.) Paragraph 42, cited by the Examiner, describes how a configuration module may send a signal to indicate to a telephone that a dynamic configuration indicator should be lit on the telephone. (Sarp 142.) “For example, an indicator above [a] dynamic configuration button can be lit to notify the user that the dynamic configuration is complete.” (Id.) The portion of Forte cited by the Examiner describes how it is known in the art for an incoming call to have automatic number identification, 4 Appeal 2017-003700 Application 13/244,872 which “identifies the telephone number of the calling party and is traditionally used for ‘caller ID,’” as well as dialed number identification service information, which “identifies the telephone number of the called party” and is used to identify the correct extension. (Forte 116.) ANALYSIS Claims 1—3 and 6—10 In the method of claim 1, the system (1) receives, from a telephony device, a request for assignment of a telephone number associated with a first geographical area (e.g., the son’s location) to correspond to a telephone number associated with a second geographical area (e.g., the mother’s location); (2) assigns a first number associated with the first area to a second number associated with the second area, where the first number can subsequently be used to connect telephony communications to the second number; and (3) informs the telephony device of the first number. The Examiner finds Chen teaches all of the subject matter of claim 1, and, further, “assuming arguendo that Chen does not specifically teach the telephone device is informed of the first telephone number, Sarp from an analogous art teaches a dynamic telephone configuration of a telephone system in which a user inputs virtual extensions associated with the telephone being dynamically configured.” (Final Act. 3—5.) At the outset, we note that Appellants’ method and Chen’s method differ in that Appellants describe use of a first number as a local proxy for a specific, remote, second number, whereas Chen describes a system in which a single number may be moved to different phone devices, such as when the 5 Appeal 2017-003700 Application 13/244,872 user assigned that number moves to a different office. (See, e.g., Chen 11 64—65.) Appellants argue the rejection of claim 1 is flawed because “in the Chen methods, a user is not requesting the assignment of a first telephone number from the first geographical area,” as “[ijnstead ... the first telephone number has already been assigned to the user’s regular telephone in the first geographical area.” (App. Br. 11.) “Thus,” Appellants conclude, “Chen fails to disclose or suggest any methods that include a step of receiving a request for the assignment of a telephone number associated with a first geographical area, or a step of assigning a first telephone number associated with the first geographical area, both as recited in claim 1.” (Id.) The Examiner responds that “Chen teaches a cross-registration request procedure to associate the NYC Phone (New York Number (212 area code)) with the Chicago number that a user is presently located in (i.e. second geographical area). . . thus clear[ly] teaching requesting an assignment of the NYC phone located in New York to become associated with the local Chicago number in Chicago.” (Ans. 8.) We agree with the Examiner that Chen teaches or suggests receipt (by the NYC Server) of a request for “assignment of a telephone number associated with a first geographical area” (assigning John’s New York number to the Chicago Phone). Appellants’ argument that “the first telephone number [in Chen] has already been assigned to the user’s regular telephone in the first geographical area” (App. Br. 11) is not persuasive 6 Appeal 2017-003700 Application 13/244,872 because the claim does not require that the number be new, or even new to a particular user.2 Appellants additionally argue that claim 1 “further recites informing the telephone device of the first telephone number that has been assigned” and “Chen’s methods ... do not require such a step because the user already knows the first telephone number — it is the user’s regular telephone number in the first geographical area.” (App. Br. 11—12.) The Examiner responds that “Sarp specifically teaches an indicator to notify the user that the dynamic configuration process is complete . . . thus providing some sort of notification or informing the change of the number in the virtual extension number when the extension number is being configured.” (Ans. 9.) Appellants’ argument is not commensurate with the claim language because the claim requires that the device be informed of the number, not that the user be informed of the number. It is thus immaterial that “the user already knows the first telephone number.” However, we agree that the rejection does not sufficiently show that the art would have taught or suggested “informing the telephony device of the first telephone number,” as recited in claim 1. The Examiner cites paragraph 65 of Chen as showing 2 The claim also requires that the number assigned “correspond to a telephone number associated with a second geographical area.” It is not clear what in Chen would be the telephone number associated with the second geographical area, as the Examiner does not account for it in the rejection (see Final Act. 3), and the reference appears to describe just the one (New York) number that being assigned to a device (the Chicago Phone). As Appellants do not raise this issue, however, we deem it waived. See 37 C.F.R. §41.37(c)(l)(iv). 7 Appeal 2017-003700 Application 13/244,872 that “John’s nationalized (New York) telephone number may be presented to the external device from the local phone device in Chicago.” (Final Act. 4.) But the fact that the system presents a number to an external device does not require that the Chicago Phone device itself was informed of the New York number, and there is no finding that such a step would be required.3 Sarp does not cure this deficiency, because although it describes notifying a telephone that a configuration process is complete, there is no teaching or suggestion of informing the device “of the first telephone number,” as claimed. Because we find the combination does not teach or suggest “informing the telephony device of the first telephone number,” we do not sustain the Section 103 rejection of claim 1 or, for the same reasons, the same rejection of corresponding means claim 6, system claim 7, and dependent claims 2—5 and 8—11. Claims 12 and 13 Claim 12 recites (1) “sending ... a request for a telephone number associated with a first geographical area to be correlated to a telephone number associated with a second geographical area,” where “the request includes the telephone number associated with the second geographical area and an identity of a party that is reachable at that number” and (2) “receiving 3 It is possible, for example, that the phones in Chen’s system are referenced by an internal registration scheme and that the presentation of the number for outgoing calls is handled at the server level. Such would be consistent with the reference’s explanation that, in the case of an emergency call, the server may replace the original (New York) number with a “manufactured number” that is associated the geographical location of the local phone device. (See Chen 142.) 8 Appeal 2017-003700 Application 13/244,872 an incoming telephone call at the telephony device that “includes caller ID information that indicates the telephone number associated with the first geographical area and the identity of the party that is reachable at the telephone number associated with the second geographical area.” The Examiner finds this claim obvious in view of Chen and Forte, citing Forte as teaching an incoming call including information that identifies the called party. (See Final Act. 13—14; citing Forte 130.) Appellants argue that “in Chen’s methods there is never a need to inform the individual of either telephone number,” so “there is no reason to modify Chen’s methods to include a receiving step as recited in claim 12, which is designed to inform a user of a first telephone number that has been assigned.” (App. Br. 16.) We agree with Appellants because we fail to see why, in a system like that described in Chen, there would be a call placed to the local device that was associated with user profile that included caller ID information that indicates the telephone number associated with the first geographical area and the identity of the party that is reachable at the telephone number associated with the second geographical area.4 The Examiner’s stated motivation—“to allow the local phone device in Chicago ... to further accept incoming calls via the associated or correlated New York telephone number” (Final Act. 14)—is not supported by a rational underpinning because incoming calls, including calls placed to the New York number, are 4 It is unclear in the Examiner’s analysis who would be the “party that is reachable at the telephone number associated with the second geographical area,” because, as noted above, there is only one phone number in Chen. 9 Appeal 2017-003700 Application 13/244,872 routed in Chen’s system without including the identity of a party reachable at a telephone number associated with the second geographical area. For these reasons, we do not sustain the Section 103 rejection of claim 12 or, for the same reasons, the same rejection of dependent claim 13. DECISION The rejections of claims 1—13 are reversed. REVERSED 10 Copy with citationCopy as parenthetical citation