Ex Parte O et al

Patent Trial and Appeal Board

Aug 13, 2013

11864336 (P.T.A.B. Aug. 13, 2013)

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.
11/864,336 09/28/2007 Mark O'Sullivan 3655/0334PUS1 3322
47827 7590 08/14/2013
Avaya by MUNCY, GEISSLER, OLDS & LOWE, PLLC
4000 LEGATO ROAD, SUITE 310
FAIRFAX, VA 22033
EXAMINER
CHOU, ALBERT T
ART UNIT PAPER NUMBER
2471
MAIL DATE DELIVERY MODE
08/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte MARK O’SULLIVAN, GRAHAM STREIT, and
MARIO ZANCAN
_____________

Appeal 2011-002481
Application 11/864,336
Technology Center 2400
______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
BARBARA A. BENOIT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002481
Application 11/864,336

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3 through 12 and 17 through 21.
We affirm.
INVENTION
The invention is directed to a method of providing diagnostic
functionality in a SIP enabled telephone system. See pages 1-2 and Figures
4 through 9 of Appellants’ Specification. Claim 1 is representative of the
invention and reproduced below:
1. A method of providing diagnostic functionality in a SIP
enabled telephony system comprising a plurality of SIP enabled
functional elements each provided with a diagnostics agent, the
method comprising the steps of: transmitting a SIP diagnostics
request from an originator diagnostics agent of a first element
to a diagnostics agent of a second element, and transmitting the
request from the second diagnostics agent to a third diagnostics
agent.

REJECTIONS AT ISSUE
The Examiner has rejected claim 21under 35 U.S.C. § 112 second
paragraph.1 Answer 3-4.2
The Examiner has rejected claims 1, 3 through 9 and 17 through 21
under 35 U.S.C. § 102(e) as anticipated by Sahraie (U.S. 2008/0016157 A1;
Jan. 17, 2008). Answer 5-8.

1 The Examiner withdrew the rejection of claims 1 and 3 through 8 under 35
U.S.C. § 112 second paragraph. Answer 4.
2 Throughout this opinion we refer to the Examiner’s Answer mailed on
September 17, 2010 Appellants’ Brief dated July 21, 2010 and Appellants’
Reply Brief dated November 10, 2010.
Appeal 2011-002481
Application 11/864,336

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The Examiner has rejected claims 10 through 12 under 35 U.S.C.
§ 103(a) as unpatentable over Sahraie and Starr (U.S. 7,120,122 B1; Oct. 10,
2006). Answer 9-10.

ISSUES

Rejection under 35 U.S.C. § 112 second paragraph
Appellants address the rejection of claim 21 on page 9 and 10 of the
Brief but do not argue that the rejection of claim 21 under 35 U.S.C. § 112
second paragraph us in error. Accordingly, we sustain the Examiner’s
rejection of claim 21 pro forma.

Anticipation rejection
Claims 1 and 6 through 8.
Appellants argue on pages 4 through 9 of the Appeal Brief that the
Examiner’s anticipation of rejection of claims 1 and 6 through 8 is in error.
Appellants argue that claim 1 recites a SIP request from a first diagnostics
agent to a second agent which forwards the message to a third agent. Brief
4. Appellants argue the Examiner’s finding that Sahraie teaches other
network elements can be traversed by a SIP request does not meet this claim
limitation. Brief 3-4. Appellants reason that Sahraie does not teach that the
SIP request traverses the diagnostics agent of the intermediate SIP element
(such as a router). Brief 5. Thus, Appellants’ Arguments directed to claims
1, and 6 through 8, present us with the issue:
a) Did the Examiner error in finding that Sahraie teaches transmitting
an SIP message from a first agent to a second agent where the
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messages traverse an agent intermediate to the first and second
agent?

Claim 3
Appellants’ arguments on page 6 of the Brief present us with the same
issue as discussed with respect to claim 1.

Claims 4 and 5
Appellants argue on page 6 of the Brief that the Examiner’s rejection
of claims 4 and 5 is in error for the reasons discussed with respect to claim 1.
Further, Appellants argue the rejection is in error as the Examiner has not
shown the determination of the existence of a session or any forwarding
occurring on determination of a functional element is associated with a
session. Thus, Appellants’ Arguments directed to claims 4 and 5 present us
with the issue:
b) did the Examiner err in finding that Sahraie forwards a diagnostic
request to another element on determination of another element
being associated with a session or attempted session with which
the diagnostics request is concerned?

Claims 9 and 19
Appellants argue on pages 6 through 8 of the Brief that the
Examiner’s rejection of claim 9 and claim 19 is in error. Appellants’
separate arguments directed to the rejection of these claims are similar to
those directed to the rejection of claim 1. Appellants argue the Examiner’s
rejection is in error as it is based upon the assumption that Sahraie will send
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messages from one device to another and does not show that the messages
are sent from one agent to another. Thus, Appellants’ arguments with
respect to claims 9 and 19 present us with the same issue as claim 1.

Claims 17, 18, 20 and 21
Appellants’ argue that on pages 6 through 9 of the Brief that the
Examiner’s rejection of claims 17, 18, 20 and 21 is in error. Appellants
arguments with respect to these claims present us with the same issue as
discussed with respect to claims 4 and 5.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in:
a) finding that Sahraie teaches transmitting an SIP message from a
first agent to a second agent where the messages traverse an agent
intermediate to the first and second agent and;
b). finding that Sahraie forwards a diagnostic request to another
element on determination of another element being associated with a session
or attempted session with which the diagnostics request is concerned.

Issue a)
In response to Appellants’ arguments directed to issue a) the
Examiner finds that Sahraie teaches that any session initiation protocol (SIP)
enabled device can be an end point, that the SIP enabled devices contain a
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SIP user agent. Answer 11. As such the Examiner finds that a SIP message
sent on a network would travel through other SIP devices as part of the
routing of the message. Answer 11. We concur with the Examiner’s
findings. We not persuaded by Appellants’ argument that the SIP message
traversing a network element such as a router does not require the use of the
SIP agent. Brief, 5 and 2. Appellants have not cited any evidence to show
that the SIP message would not traverse the agent in the intermediate device.
Further, Sahraie does provide evidence to support the Examiner’s finding
that an SIP message traverses the agent of an intermediate device, See para.
0045 (a message from user agent is sent to controller agent which in turn
relays the message to another controller agent). Accordingly, Appellants’
arguments presented with respect to issue a) have not persuaded us of error.
As this is the only issue presented with respect to claims 1, 3, 6 through 9,
and 19, we sustain the Examiner’s anticipation rejection of these claims.
We similarly sustain the Examiner’s obviousness rejection of claims
10 through 12 as Appellants’ arguments directed to this issue merely assert
that the additional reference does not address the shortcomings in the
anticipation rejection of claim 9.

Issue b)
In response to Appellants’ arguments directed to issue b) the
Examiner finds Sahraie teaches that SIP messages traverse or relay messages
to other network elements and that to do such the elements must know and
determine the element the SIP request is destined to. Answer 14. We
concur with the Examiner. As discussed above Sahraie teaches routing a SIP
message through agents of device, implicit in this is a determination that
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there is a session between the devices in which the agents reside.
Accordingly, Appellants’ arguments presented with respect to issue b) have
not persuaded us of error. As this is the only issue presented with respect to
claims 1, 3, 6 through 9, and 19, we sustain the Examiner’s anticipation
rejection of these claims 4, 5, 17, 18, 20 and 21.

DECISION

We sustain the Examiner’s indefiniteness rejection of claim 21.
We sustain the Examiner’s anticipation rejection of claims 1, 3
through 9 and 17 through 21.
We sustain the Examiner’s obviousness rejection of claims 10 through
12.
The Examiner’s rejection of claims 1, 3 through 12 and 17 through 21
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)(1)(iv).

AFFIRMED

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