Ex Parte NickolsDownload PDFPatent Trial and Appeal BoardJan 9, 201713170483 (P.T.A.B. Jan. 9, 2017) 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. 13/170,483 06/28/2011 Matthew A. NICKOLS 20110464 3900 25537 7590 VERIZON PATENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 EXAMINER NGUYEN, LINH T ART UNIT PAPER NUMBER 2459 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): patents @ verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW A. NICKOLS Appeal 2016-003567 Application 13/170,483 Technology Center 2400 Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and NATHAN A. ENGELS, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003567 Application 13/170,483 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—20, 22, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). WE AFFIRM. Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A method implemented by a device, the method comprising: receiving a request, by the device and from a first endpoint device, to initiate a media communication session with a second endpoint device; determining, by the device, a first Internet Protocol (IP) version that is to be used by first media resources of the first endpoint device for the media communication session; determining, by the device, a second IP version that is to be used by second media resources of the second endpoint device, for the media communication session, based on prior interaction of the device with the second endpoint device; determining, by the device, that the second IP version that is to be used by the second media resources of the second endpoint device is not compatible with the first IP version that is to be used by the first media resources of the first endpoint device; and transmitting, by the device, one or more session initiation protocol (SIP) messages to signal an establishment of the media communication session through an intermediary device based on determining that the second IP version that is to be used by the second media resources of the second endpoint device, in establishing the media communication session, is not compatible with the first IP version that is used by the first media resources of the first endpoint device, the intermediary device being different from the device. 2 Appeal 2016-003567 Application 13/170,483 Rejections on Appeal Claims 1, 4—6, 9, 12, 14, 15, 18—20, and 22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Boucadair (US 2009/0041034 Al, Feb. 12, 2009). Final Act. 4-11. Claims 2, 3, 16, 17, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boucadair in view of Buckley (US 8,683,077 B2, Mar. 25, 2014), further in view of Horvath (US 8,554,925 B2, Oct. 8, 2013). Final Act. 12-17, 25-26. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Boucadair in view of Blanchet (US 2005/0138166 Al, June 23, 2005). Final Act. 17—19. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Boucadair in view of King (US 2005/0182829 Al, Aug. 18, 2005). Final Act. 19—20. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boucadair in view of Mills (US 8,139,566 B2, Mar. 20, 2012). Final Act. 20-22. Claims 13 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boucadair in view of Buckley. Final Act. 22—25. Appellant’s Contentions1 1. Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) because: BOUCADAIR et al. does not disclose or suggest “transmitting, by the device, one or more session initiation protocol (SIP) 1 We reproduce only those contentions highlighted in the analysis below. Appellant’s remaining contentions are found at pages 7—30 of the Appeal Brief and pages 2—10 of the Reply Brief. 3 Appeal 2016-003567 Application 13/170,483 messages to signal an establishment of the media communication session through an intermediary device based on determining that the second IP version that is to be used by the second media resources of the second endpoint device, in establishing the media communication session, is not compatible with the first IP version that is used by the first media resources of the first endpoint device, the intermediary device being different from the device,” as recited in claim 1. App. Br. 8. 2. Also, Appellant contends that the Examiner erred in rejecting claim 12 under 35 U.S.C. § 102(b) because: BOUCADAIR et al. does not disclose or suggest a processor to “transmit one or more session initiation protocol (SIP) messages to signal an establishment of the media communication session through an intermediary device based on determining that the second IP version that is to be used by the second media resources of the second endpoint device is not compatible with the first IP version that is used by the first media resources of the first endpoint device, the intermediary device being different from the device,” as recited in claim 12. App. Br. 14. 3. Appellant contends that the Examiner erred in rejecting claim 20 under 35 U.S.C. § 102(b) because: BOUCADAIR et al. does not disclose or suggest a server to “transmit, based on determining that the second IP version is not compatible with the first IP version, one or more session initiation protocol (SIP) messages to signal an establishment of the communication session, between the first endpoint device and second endpoint device, through a media converter,” as recited in claim 20. App. Br. 18. 4 Appeal 2016-003567 Application 13/170,483 4. Appellant contends that the Examiner erred in rejecting claims 2, 3, 7, 8, 16, 17, and 25 under 35 U.S.C. § 103(a) for the reasons set forth on pages 22 through 29 of the Appeal Brief. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. As to Appellant’s above contentions 1—3, we disagree. We deem Appellant’s arguments to be mere demands that the prior art disclose the identical language of independent claims 1,12, and 20. However, there is no ipsissimis verbis test within 35 U.S.C. § 102. Appellant’s assertion that claim limitations are not expressly recited in a reference does not evidence lack of prima facie anticipation, but, rather, “begs the substantive question of whether there are facial differences to be bridged.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). A reference does not have to satisfy an ipsissimis verbis test to disclose a claimed element, therefore Appellant’s demand for such an exacting match is not persuasive of error. See In re Cleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Further as to Appellant’s above contentions 1—3, we 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 Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. As to Appellant’s above contentions 4, the Examiner has rebutted each of those arguments in the Answer (pages 4—14). Therefore, we agree with the Examiner’s findings and underlying reasoning and adopt them as our own. 5 Appeal 2016-003567 Application 13/170,483 DECISION The Examiner’s rejection of claims 1, 4—6, 9, 12, 14, 15, 18—20, and 22 as being anticipated under 35 U.S.C. § 102(b) is affirmed. The Examiner has not erred in rejecting claims 2, 3, 7, 8, 10, 11, 13, 16, 17, 24, and 25 as being unpatentable under 35 U.S.C. § 103(a). 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 Copy with citationCopy as parenthetical citation