Ex Parte Mani

Patent Trial and Appeal Board

Jul 25, 2017

12875281 (P.T.A.B. Jul. 25, 2017)

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.
12/875,281 09/03/2010 Mahalingam Mani 4366YDT-75 8865
48500 7590
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
OH, ANDREW CHUNG SUK
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAHALINGAM MANI
Appeal 2017-004644
Application 12/875,2811
Technology Center 2400
Before DAVID M. KOHUT, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20, which are all of the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Avaya Inc. App. Br. 2.
Appeal 2017-004644
Application 12/875,281
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method, comprising:
determining that a first communication device is
transitioning from a wired state to a wireless state;
during the transition, establishing a tunnel by the first
communication device for carrying communication packets
transmitted to or from the first communication device utilizing
the communication channel established for the wired state, and
tunneling communication packets transmitted to or from the first
communication device via the tunnel;
determining that the first communication device has
completed its transition from the wired state to the wireless state;
and
after the first communication device has been determined
to have completed its transition from the wired state to the
wireless state, routing communication packets transmitted to or
from the first communication device via a wireless
communication channel established for the wireless state and
discontinuing tunneling of communication packets transmitted to
or from the first communication device via the communication
channel established for the wired state.
REJECTIONS
Claims 1—4, 6—9, 11, 12, 14—18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sylvain (US 2005/0239496 Al;
published Oct. 27, 2005), Wu (US 2009/0092093 Al; published Apr. 9,
2009), and Wang (US 2005/0068938 Al; published Mar. 31, 2005). Final
Act. 12-18, 20-24, 26-32.
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Claims 5 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Wu, Wang, Kottilingal (US 2008/0108348 Al;
published May 8, 2008), and Mayer (US 2011/0197058 Al; published
Aug. 11,2011). Final Act. 18-20,32-33.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Wu, Wang, and Craze (US 2009/0058707 Al;
published Mar. 5, 2009). Final Act. 24—25.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvain, Wu, Wang, and Boehm (US 2009/0213808 Al;
published Aug. 27, 2009). Final Act. 25—26.
ANALYSIS
We disagree with Appellant’s contentions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellant, we highlight and address specific findings and
arguments for emphasis as follows.
Claim 1
“determining that a first communication device is transitioning from a wired
state to a wireless state; [and] during the transition, establishing a tunnel”
Appellant contends the Examiner erred in finding Wu teaches
“determining that a first communication device is transitioning from a wired
state to a wireless state; [and] during the transition, establishing a tunnel,” as
recited in claim 1. App. Br. 8—11; Reply Br. 3—6. Specifically, Appellant
argues “Wu teaches the ‘transfer’ of VoIP calls to a cellular [network] . . .
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and the disconnection of the VoIP call with the cellular [network] . . .
without mention or reference to tunneling.” App. Br. 9 (citing Wu Fig. 4);
Reply Br. 3. Appellant further argues Wu’s “cordless handset. . . transitions
from one wireless mode, [Digital Enhanced Cordless Telecommunications
(DECT),] ... to another wireless mode, cellular” (Reply Br. 3 (citing Wu
| 59)), rather than “transition[ing] to a wireless state from a wired state”
(App. Br. 10). Additionally, Appellant argues Wu’s “base unit, ‘dual mode
IP telephone 510[,]’ may have a wired Ethernet connection, [but] the base
unit does not transition to the cellular network.” Reply Br. 3 (citing Wu
159).
We are not persuaded. The Examiner finds, and we agree, Wu
teaches a cordless handset that communicates using Ethernet, i.e., a “wired
state,” and transitions to cellular communications, i.e., a “wireless state.”
Final Act. 13 (citing Wu | 59). That is, Wu teaches a “call can be handed
off’ from a wired Ethernet network “to a cellular network.” Wu 159. The
Examiner further finds, and we agree, Wu transitions from wired Ethernet
communications to wireless cellular communications by establishing a
Digital Enhanced Cordless Telecommunications (DECT) connection that
connects the cordless handset “with [an] Ethernet connected base unit.”
Final Act. 13 (citing Wu |59); Ans. 27—28. The Examiner further finds, and
we agree, “Wang teaches tunneled communications.” Final Act. 14 (citing
Wang || 23, 30). The Examiner relies on the combination of Wang’s
tunneled communications with Wu’s DECT connection to “establish[] ... a
secure end-to-end tunnel for [the] DECT” connection as teaching the argued
limitation. Ans. 26; Final Act. 13—15.
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Appellant’s argument that Wu does not teach “the establishment and
utilization of a tunnel during the wired to wireless transition” (App. Br. 9;
Reply Br. 3) improperly attacks the references individually when the
rejection is based on a combination of references, i.e., Wu and Wang. In re
Keller, 642 F.2d 413, 426 (CCPA 1981). In particular, Appellant has not
persuasively addressed the Examiner’s application of Wang’s tunneled
communications to the DECT communication taught by Wu, such that Wu’s
DECT communication is a tunneled communication. Final Act. 14—15
(“implement a tunneled connection over a handset, taught by Wang . . . into
the system where a mobile handset transitions from wired to wireless to
cellular states, taught by Wu”) (citations omitted); Ans. 26.
Further, Appellant’s argument that Wu “transition[s] from one
wireless mode, DECT, to another wireless mode, cellular” rather than
transitioning from a wired mode to a wireless mode (Reply Br. 4; App. Br.
10) is not persuasive. Wu teaches, or at least suggests, its cordless handset
communicates in a wired state through an Ethernet connection. In particular,
Wu’s cordless handset “rest[s] in [the] cradle of the telephone base unit” and
is connected to Wu’s “speakerphone,” which is “directly connected to the
network via an Ethernet connection.” Wu 59; see Wu 58, Fig. 13
(showing cordless handset 515 docked to IP telephone 510 wired to IP
network 105). In other words, Wu’s handset transitions from a wired state—
connected to speakerphone’s Ethernet via docking—to a wireless cellular
network. Wu ]f 59.
Additionally, Appellant’s argument that Wu’s “base unit does not
transition to the cellular network” (Reply Br. 3) does not address the
Examiner’s finding that Wu’s cordless handset transitions from a wired
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mode, i.e., Ethernet, to a wireless mode, i.e., cellular, as discussed supra.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Wu and Wang teaches “determining that a first
communication device is transitioning from a wired state to a wireless state;
[and] during the transition, establishing a tunnel,” as recited in claim 1.
“discontinuing tunneling ”
Appellant contends Wang does not teach or suggest “after the first
communication device has been determined to have completed its
transition . . . discontinuing tunneling of communication packets transmitted
to or from the first communication device via the communication channel
established for the wired state,” as recited in claim 1. App. Br. 11; Reply Br.
3, 6—7. Specifically, Appellant argues “Wang is silent as to when tunneling
would be discontinued.” App. Br. 11.
We are not persuaded. The Examiner finds, and we agree, Wu
teaches “a wired Ethernet connection being terminated or unused as the
handset transitions to a wireless cellular” communication mode. Ans. 30—
31 ; see Wu 1 59. We also note that the portion of Sylvian cited by the
Examiner similarly teaches the termination of a wired connection after a
wired-to-wireless transition. Sylvain 124 (cited at Final Act. 12) (“the
wired connection over the LAN 14 is lost”). The Examiner determines, and
we agree, that discontinuing the use of a tunneled communication is “at least
very heavily implied,” i.e., obvious, when the tunnel is “no longer used by
the communication device.” Ans. 30—31.
We are not persuaded of error in the Examiner’s finding that the
combination of Sylvain, Wu, and Wang teaches a tunneled wired
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communication that transitions to a wireless communication, ending the
wired communication. In particular, we agree with the Examiner that such a
combination “at least very heavily implie[s]” (Ans. 30—31) discontinuing the
use of a tunneled wired communication because both Sylvain and Wu teach
ending wired communication modes when switching to a wireless
communication mode (Sylvain 124; Wu 59, Fig. 3). Further, Appellant’s
arguments do not persuade us that ending a tunneled wireless
communication mode when that communication mode is no longer used
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” or would have “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Sylvain, Wu, and Wang teaches “after the first
communication device has been determined to have completed its
transition . . . discontinuing tunneling of communication packets transmitted
to or from the first communication device via the communication channel
established for the wired state,” as recited in claim 1.
Improper Combination
Appellant contends the Examiner improperly combined Sylvain, Wu,
and Wang. App. Br. 10-11; Reply Br. 7. Specifically, Appellant argues in
such a combination, Wu would be “rendered inoperable for its intended
purpose” because Wu’s mobile phone would require “the application of a
wired connection.” App. Br. 10-11. Further, Appellant argues the
Examiner relies on “impermissible hindsight” to conclude that it would have
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been obvious that “Wang’s tunnel is initiated or terminated during the wired-
wireless transition.” Reply Br. 7.
We are not persuaded by Appellant’s argument that the Examiner’s
combination renders Wu inoperable for its intended purpose because Wu’s
“mobile phone would require the application of a wired connection.” App.
Br. 10-11. As discussed above, Wu teaches that its cordless handset uses a
wired Ethernet connection when the cordless handset is docked to the
speakerphone. Wu ]f 59. That is, wired use of Wu’s handset does not render
Wu inoperable for its intended purpose because Wu teaches that its handset
operates in both a wired state and a wireless state.
Further, we are not persuaded the Examiner relied on impermissible
hindsight to conclude that it would have been obvious that Wang’s tunnel is
“initiated or terminated during the wired-wireless transition.” Reply Br. 7.
The Examiner’s reasoning is supported by rational underpinning, i.e., ending
the use of a resource (i.e., the communication tunnel) when the resource is
no longer needed (i.e., when communications occurring over the tunnel are
not used or cannot be used). See Ans. 30—31. Furthermore, the Examiner
uses knowledge which is within that of a person with ordinary skill in the art
and does not rely solely on knowledge gleaned from Appellants’ application.
Accordingly, we are not persuaded the Examiner improperly combined
Sylvain, Wu, and Wang.
For the reasons discussed above, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Sylvain, Wu, and
Wang.
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Claims 2—20
For independent claim 8, Appellant repeats its argument regarding
“discontinuing tunneling” for claim 1. App. Br. 12. For the reasons
discussed above, we did not find that argument persuasive. Additionally,
Appellant argues independent claim 15 together with claim 1 and does not
argue separate patentability for dependent claims 2—7, 9—14, and 16—20,
which depend directly or indirectly from claims 1, 8, and 15. App. Br. 11,
14. Accordingly, for the reasons set forth above, we are not persuaded the
Examiner erred in rejecting claims 2—20, and we sustain the Examiner’s
decision to reject those claims.
DECISION
The Examiner’s rejection of claims 1—4, 6—9, 11, 12, 14—18, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Sylvain, Wu, and Wang
is affirmed.
The Examiner’s rejection of claims 5 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Sylvain, Wu, Wang, Kottilingal, and Mayer is
affirmed.
The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Sylvain, Wu, Wang, and Craze is affirmed.
The Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Sylvain, Wu, Wang, and Boehm 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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