Ex Parte Ottur et al

Patent Trial and Appeal Board

Mar 30, 2017

12107813 (P.T.A.B. Mar. 30, 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.
12/107,813 04/23/2008 Deepak Ottur V020 1401
72623 7590 04/03/2017
MOSFR TAROADA / VON A OF HOT DTNOS OORP
EXAMINER
1030 BROAD STREET PATEL, PARTHKUMAR
SUITE 203
SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
docketing@mtiplaw.com
llinardakis @ mtiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEPAK OTTUR, JOHN RILEY, LOUIS MAMAKOS, and
STEVEN DOUGLAS MILLER
Appeal 2016-0005201,2
Application 12/107,813
Technology Center 2400
Before MARC S. HOFF, JAMES R. HUGHES, and
ALEX S. YAP, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—6, 8—19, and 21. Claims 7 and 20
1 According to Appellants, the real party in interest is Vonage Network LLC.
App. Br. 2.
2 We refer to Appellants’ Specification (“Spec.”), filed Apr. 23, 2008;
Appeal Brief (“App. Br.”) filed March 11, 2015; and Reply Brief (“Reply
Br.”) filed Oct. 12, 2015. We also refer to the Examiner’s Answer (“Ans.”)
mailed Aug. 13, 2015, and Final Office Action (Final Rejection) (“Final
Act.”) mailed Sept. 4, 2014.
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Application 12/107,813
have been canceled. Final Act. 1; App. Br. 6. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Appellants ’ Invention
The invention concerns voice over internet protocol (VOIP) networks
and VOIP terminal adapters, VOIP test apparatuses, and methods of testing a
VOIP network, including collecting call statistics at a VOIP terminal
adapter, analyzing the call statistics to identify call quality problems, and the
VOIP terminal adapter obtaining a test script from the VOIP network based
on the identified call quality problems. Spec. Tflf 1, 5—6; Abstract.
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A method of testing in a voice over internet protocol
(VOIP) network, comprising:
collecting call statistics at an enhanced VOIP terminal
adapter during execution of standard call flows, the enhanced
VOIP terminal adapter being configured to couple at least one
communication device to the VOIP network, receive and place
calls, and obtain configuration profiles from a provisioning
server;
analyzing the call statistics to identify call quality
problems;
obtaining at least one test script from the VOIP network at
the enhanced VOIP terminal adapter based on the identified call
quality problems',
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executing the at least one test script within a scripting
framework of the enhanced VOIP terminal adapter to interact
with at least one component coupled to the VOIP network; and
transmitting results of the execution of the at least one test
script from the enhanced VOIP terminal adapter to the VOIP
network.
Rejections on Appeal
1. The Examiner rejects claim 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.3
2. The Examiner rejects claims 1—5, 8—12, 15—19, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Qiu et al. (US 2008/0049623
Al, published Feb. 28, 2008) (“Qiu”) and Fok et al. (WO 2006/094296 Al,
published Sept. 8, 2006) (“Fok”).
3. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Qiu, Fok, and Quinn et al. (US 2002/0137472 Al,
published Sept. 26, 2002) (“Quinn”).
4. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Qiu, Fok, and Smith et al. (US 7,707,586 B2, issued
Apr. 27, 2010 (filed Sept. 8, 2004)) (“Smith”).
5. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Qiu, Fok, Smith, and Quinn.
3 Appellants do not list claim 21 in their Claim Appendix and do not address
the Examiner’s rejection of claim 21. Appellants added claim 21 in an
Amendment filed June 12, 2014. Appellants have not canceled claim 21.
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ISSUES
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
1. Did the Examiner err in rejecting claim 21 as being indefinite?
2. Did the Examiner err in finding that the combination of Qiu and
Fok would have collectively taught or suggested that the “collecting call
statistics,” “analyzing the call statistics to identify call quality problems,”
and “obtaining at least one test script from the VOIP network at the
enhanced VOIP terminal adapter based on one or more identified call quality
problems” within the meaning of Appellants’ claim 1 and the commensurate
limitations of Appellants’ claims 9 and 16?
ANALYSIS
The Indefiniteness Rejection
Appellants added claim 21 in an Amendment filed June 12, 2014.
Appellants do not list claim 21 in their Claim Appendix (see App. Br. 18).
The claim reads: “21. (New) The apparatus of claim 6, wherein ... the test
scripts are generated by a . . . use the stuff taken out of claim 6.”
Amendment 6 (filed June 12, 2014). Appellants have not canceled claim 21.
The Examiner finds claim 21 indefinite because the claim language is
confusing and vague, and the claim, styled as apparatus claim, depends on
claim 6, which is a method claim. Final Act. 4. Appellants do not address
the indefmiteness rejection of claim 21. In the absence of arguments
traversing the indefmiteness rejection, we are not persuaded the Examiner
erred in rejecting claim 21.
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The 35 U.S.C. § 103 Rejection of Claims 1—5, 8—12, 15 19, and 21
The Examiner rejects independent claim 1 in view of Qiu and Fok.
See Final Act. 5—7; Ans. 2—3.4 Appellants contend that Qiu and Fok do not
teach the disputed features of claim 1. App. Br. 6—8; Reply Br. 2-4.
Specifically, Appellants contend that Qiu does not teach “obtaining at least
one test script” (claim 1) (see App. Br. 6—7) and Fok does not teach
“collecting call statistics” (claim 1) (see App. Br. 7—8). See App. Br. 6—8;
Reply Br. 2^4.
The Examiner finds that Qiu teaches obtaining test scripts, in that Qiu
describes transmitting configuration parameters to a VOIP phone. See Final
Act. 6—7 (citing Qiulflf 60-65, 74, 82; Figs. 1, 5 (elements 105, 145, and
524); Ans. 2—3 (citing Qiu 69, 76, 82; Figs. 1, 4, 5 (elements 105, 150,
160, 508, 556, and 568). The Examiner, however, fails to clearly explain
how the recited test scripts read on Qiu’s configuration parameters. Even if
we assume that Qiu’s configuration parameters are equivalent to Appellants’
recited test scripts, Qiu does not teach the VOIP device (VOIP phone)
obtaining the configuration parameters based on the identified call problems.
See App. Br. 6—8; Reply Br. 2-4. It is Qiu’s servers, e.g., device
management server 145 and test management server 160, that are described
as collecting call statistics, analyzing those statistics, and sending parameters
to the VOIP phone. See Qiu 69, 76, 82. The Examiner concedes this
point. Final Act. 7. Therefore, we agree with Appellants that Qiu (and Fok
in combination with Qiu) does not teach “obtaining at least one test script
4 The Examiner’s Answer contains incorrect page numbers. Our references
to the Answer reflect the actual, correct page numbers of the Answer.
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from the VOIP network at the enhanced VOIP terminal adapter based on the
identified call quality problems,” as recited in claim 1. (Emphasis added.)
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that Qiu and Fok teach the disputed
limitations of Appellants’ claim 1. Dependent claims 2—6, 8, 10-12, 15, 17—
19, and 21 depend on claims 1, 9, and 16, respectively. Accordingly, we
reverse the Examiner’s obviousness rejection of claims 1—5, 8—12, 15—19,
and 21.
With respect to the obviousness rejections of dependent claim 6
(rejected as obvious over Qiu, Fok, and Quinn), dependent claim 13
(rejected as obvious over Qiu, Fok, and Smith), and dependent claim 14
(rejected as obvious over Qiu, Fok, Smith, and Quinn), we reverse the
Examiner’s obviousness rejections of these claims for the same reasons set
forth with respect to claim 1 {supra). The Examiner does not suggest, and
we do not find that the additional references cure the deficiencies of Qiu
(and Fok) (discussed supra).
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claim
21 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Appellants have shown that the Examiner erred in rejecting claims 1—
6, 8-19, and 21 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claim 21. We reverse the
Examiner’s rejection of claims 1—6 and 8—19.
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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-IN-PART
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