Ex Parte Pantalone et al

Patent Trial and Appeal Board

Jan 10, 2014

11469680 (P.T.A.B. Jan. 10, 2014)

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.
11/469,680 09/01/2006 Brett A. Pantalone PS06 0617US2 6822
58561 7590 01/10/2014
HARRITY & HARRITY, LLP
11350 RANDOM HILLS ROAD
SUITE 600
FAIRFAX, VA 22030
EXAMINER
ZHOU, YONG
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
01/10/2014 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 BRETT A. PANTALONE, ANDERS ANGELHAG,
JAN ROBERT TOBIAS RITZAU, and
WILLIAM O. CAMP JR.
____________________

Appeal 2011-006246
Application 11/469,680
Technology Center 2400
____________________

Before JOHNNY A. KUMAR, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006246
Application 11/469,680

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
THE INVENTION

The claims are directed to a peer to peer connection. Spec. 1.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method in a first communication device for setting up a
peer-to-peer IP connection between the first communication
device and a second communication device, where the first
communication device is associated with a first Subscriber
Identity Module (SIM) and the second communication device is
associated with a second SIM, the method comprising:
sending, to the second communication device, using a
messaging service that is available to the first communication
device when the first communication device is associated with
the first SIM, a request for setting up the peer-to-peer IP
connection between the first communication device and the
second communication device, the request being directed to a
particular port of the second communication device, the
particular port being associated with an application, the request
causing the application to automatically start in the second
communication device in response to the second
communication device receiving the request via the particular
port;
sending an IP address of the first communication device
in a message to the second communication device, or receiving
an IP address of the second communication device in a message
from the second communication device; and
setting up the peer-to-peer IP connection between the
first communication device and the second communication
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Application 11/469,680

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device, where the setting up is initiated by a party associated
with the first communication device or a party associated with
the second communication device by connecting to the other
party using the IP address of the other party.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lean
Milosavljevic
Buttet
US 2003/0105850 A1
US 2004/0142371 A1
US 2004/0142724 A1
June 5, 2003
July 22, 2004
July 22, 2004
Lazaridis WO 2004/064432 A2 July 29, 2004

REJECTIONS
1

The Examiner made the following rejections:
Claims 1-5, 7-9, 11-15, 17-25, 27-35 and 37-40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lazaridis and Lean. Ans. 4-
10.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lazaridis, Lean and Buttet. Ans. 10-13.

1
Appellants’ arguments in connection with independent claims 10, 11, 20,
21, and 31 (App. Br. 20-51) repeat arguments presented in connection with
independent claim 1 (App. Br. 13-20) with additional argument presented in
connection with claim 10 (App. Br. 46, 49-51.) Separate patentability is not
argued for dependent claims 2-9, 12-19, 22-30, and 32-40. “A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(vii)(last sentence). Further, merely restating with respect to a
second claim an argument, previously presented with respect to a first claim,
is not an argument for separate patentability of the two claims. Therefore,
based on Appellants’ arguments, we decide the appeal of claims 1-9 and 11-
40 based on claim 1 alone and the appeal of claim 10 separately.

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Application 11/469,680

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Claims 6, 16, 26, and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lazaridis, Lean, and Milosavljevic. Ans. 13-14.

APPELLANTS’ CONTENTIONS
1. The Examiner improperly applied piecemeal examination by breaking
a disputed limitation “down into illogical parts by pointing to
different, unrelated portions of LAZARIDIS and LEAN.” App. Br.
15.
2. “[S]ince LAZARIDIS does not disclose or suggest ‘that the request is
directed to a particular port of the second device and associated with
an application and the requests causes the application to automatically
start in the second device’ . . . [it] cannot possibly disclose or suggest
[disputed claim language].” App. Br. 16.
3. Because the Examiner fails to repeat in haec verba the claim
limitation explicitly indicated to be missing from Lazaridis to instead
be found in Lean, “the Examiner has not addressed the actual
language of claim 1 . . . [and] has not established a prima facie case of
obviousness with respect to claim 1.” App. Br. 17.
4. “[N]one of these devices of LEAN could be reasonably construed as a
communication device associated with a SIM.” App. Br. 18.
5. The Examiner unreasonably interprets Lean’s application handler 620
as corresponding to the application to automatically start in the second
communication device in response to the second communication
device receiving the request via the particular port of claim 1. App.
Br. 18.
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Application 11/469,680

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6. The Examiner’s rationale for combining Lazaridis and Lean is based
on conclusory statements insufficient to establish a prima facie case of
obviousness. App. Br. 19-20.
7. In connection with claim 10, the Examiner erred in finding that, in
Lean, “[t]he application of providing monitoring service is not
running before receiving the request” while Buttet fails to remedy the
deficiency of Lean. App. Br. 49.
8. The combination of Lazaridis and Buttet is improper in rejecting
claim 10. App. Br. 51.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 13-53)
and Reply Brief (Reply Br. 4-11), the issues presented on appeal are:
(i) Whether the Examiner erred in combining the applied references.
(ii) Whether the combinations of the applied references teach or suggest
the disputed claim limitations.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4-9) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 14-20) and concur with the conclusions
reached by the Examiner. For emphasis, we address Appellants’ arguments
seriatim as they are presented in the Appeal Brief, pages 13-53.
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Claim 1
Appellants contend “that instead of considering the claim as a whole,
the Examiner has dissected the [disputed] feature of claim 1 into discrete
elements and evaluated the elements in isolation, which is expressly
forbidden by the above-cited section of the M.P.E.P.”
2
App. Br. 15.
However, this argument relates to a petitionable matter and not to an
appealable matter, because it relates to the manner in which examination has
been conducted. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973)
and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also MPEP § 1003
(“All unusual questions of practice may be referred to the Technology
Center Directors”) and MPEP §§ 1002.02(c)(3) and 1201. Furthermore, we
find that the Examiner has provided a sound rejection on the basis of the
prior art references that makes obvious the present invention as claimed.
Thus, we find that the Examiner has presented a prima facie case of
obviousness based on the combination of Lazaridis and Lean and as such
find Appellants’ arguments unpersuasive as to a piecemeal examination.
Appellants next contend that, because Lazaridis fails to disclose or
suggest directing a request to a particular port and automatically starting an
application, Lazaridis “cannot possibly disclose or suggest” the disputed
claim language. App. Br. 16. We are unpersauded by this argument because
the Examiner relies on Lean for teaching or suggesting the noted
deficiencies of Lazaridis. Ans. 5, 16. As such, Appellants are responding to
the rejection by attacking the Lazaridis reference individually, even though
the rejection is based on the combined teachings of the references.

2
Appellants mistakenly cite to M.P.E.P. § 2106(II)(C) instead of M.P.E.P.
§ 2103(I)(C) in connection with the language quoted.
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Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
In connection with contention 3, Appellants allege that “the Examiner
does not appear to address the actual feature of claim 1” in applying Lean.
App. Br. 16-17. We disagree. The Examiner clearly sets forth the scope and
content of the prior art, i.e., what is taught or suggested by Lazaridis and
Lean, and the differences between the claimed invention and the prior art,
i.e., specifically identifies claim limitations that are missing from Lazaridis
for which Lean is applied:
However, Lazaridis does not specifically teach that the request
[is] directed to a particular port of the second device and associated
with an application [and] the request [causes] the application to
automatically start in the second device.
Nevertheless, Lean teaches that network monitoring client 610
broadcasts a network monitoring service request to the well known
UDP port and a provisioning manager returns the TCP address and
port number of the application handler 620 assigned to provide
network monitoring service for the particular link identified in the
service request. If a new link comes in service and request network
monitoring service, an application handler 620 will be able to
automatically start serving the new signaling link (new part of the
application) ([0067], lines 4-17).
Therefore, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to combine
teachings from Lean to the Lazaridis invention to have a request to
cause the peer application associated with a port to automatically start
in order to facilitate the automatic configuration and application
execution.
Ans. 5-6 (claim language shown in italics.)
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Contrary to Appellants’ contention, the Examiner has clearly
identified the claim limitations asserted to be taught or suggested by each of
the references. Therefore, the Examiner has presented a prima facie case of
obviousness based on the combination of Lazaridis and Lean and as such we
find Appellants’ arguments unpersuasive of error.
We further find contention 4 unpersuasive of Examiner error. In
particular Appellants argue that because Lean fails to describe a
communication device associated with a SIM, Lean’s network monitoring
service request cannot be sent to a second communication device that is
associated with a second SIM. App. Br. 18. However, Lazaridis, not Lean,
is cited for teaching or suggesting the second communication device
associated with a second SIM. Ans. 4, 17. Lean is applied only for a port
associated with the application, not for a second communication device and
SIM. Therefore, we agree with the Examiner that Appellants’ argument
improperly attacks Lazaridis individually when the rejection is based on the
combination of Lazaridis and Lean. Ans. 17. See also In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In connection with contention 5 Appellants argue that Lean’s
application handler 620 already appears to be running so that it can
automatically start serving any new incoming signaling link. App. Br. 18.
Appellants contrast Lean’s device with claim 1 which recites that the
application automatically starts in response to the second communication
device receiving the request via the particular port (id.) but fail to explain
why the two are different. See id. That is, Appellants fail to explain why
automatically starting to serve a new incoming signal link is different than
and therefore fails to teach or suggest automatically starting the application
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providing the service. We note that, during examination, claims are to be
given their broadest reasonable interpretation consistent with the
specification, and the language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Amer. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).
Appellants’ Specification provides no specific definition of what is meant by
causing an application to automatically start. Therefore, consistent with the
Specification, we find the Examiner’s interpretation to be reasonable and
agree Lean’s application handler 620 operating to automatically start serving
a new signaling link teaches or suggests the disputed limitation of the
request causing the application to automatically start in the second
communication device in response to the second communication device
receiving the request via the particular port.
We are also not persuaded of error by Appellants further argument
that, because Lean’s request is for a network monitoring service which is
different from a request for setting up a peer-to-peer IP connection per claim
1, Lean cannot be relied upon for teaching or suggesting the disputed
limitation. App. Br. 19. Lean is cited for a port associated with an
application (Ans. 17) and Lazaridis for setting up a peer-to-peer IP
connection (Ans. 5). Appellants fail to provide sufficient persuasive
evidence or argument explaining why Lean’s description of starting a
network monitoring service application associated with a port would not
teach or suggest starting an application in the environment of Lazaridis to
provide functionality associated with that port. Instead, we agree with the
Examiner that the combination of Lazaridis and Lean teaches or suggests the
disputed limitation.
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In connection with contention 6, we also disagree that the Examiner
fails to provide an articulated reasoning for combining Lazaridis and Lean.
App. Br. 20. The Examiner explains that one would combine Lean’s starting
of an application associated with a port with Lazaridi’s peer application “to
facilitate the automatic configuration and application execution.” Ans. 6.
Therefore, in the absence of sufficient rebuttal evidence or argument to
persuade us otherwise, we find the Examiner’s conclusions of obviousness
are clearly articulated and are based on detailed factual findings that are
supported by the references of record. See Ans. 4-6.
For the reasons supra we agree with the Examiner’s findings and
conclusions. Accordingly, on the record before us, we sustain the rejection of
independent claim 1 and, for the same reasons, the rejections of independent
claims 11, 20, 21, and 31 under 35 U.S.C. § 103(a) over Lazaridis and Lean
together with the rejections of dependent claims 2-5, 7-9, 12-15, 17-19, 22-
25, 27-30, 32-35 and 37-40 not separately argued. Furthermore and for the
same reasons, we sustain the rejection of dependent claims 6, 16, 26, and 36
under 35 U.S.C. § 103(a) over Lazaridis, Lean, and Milosavljevic, these
claims also not separately argued.

Claim 10
Appellants contend claim 10 is allowable for the reasons argued in
connection with claim 1. App. Br. 46, 47-49, 50-51. Having found these
contentions unpersuasive of Examiner error for the reasons supra, we
consider Appellants’ additional contentions of error specifically directed to
the rejection of claim 10.
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In connection with contention 7, Appellants additionally contend
neither Lean nor Buttet discloses the application is not running in the second
communication device before receiving the request. App. Br. 49. The
Examiner finds Lean’s disclosure of starting service of a new signaling link
by an application handler wherein “[t]he application of providing monitoring
service is not running before the request” teaches or suggests the disputed
limitation. Ans. 12. We agree with the Examiner. While Appellants argue
that the rejection is improper as based on the “unsupported allegation” that
the monitoring service is not running before receiving the request, neither
have Appellants provided sufficient evidence or argument to persuade us that
the Examiner’s position is unreasonable. In particular, since Lean discloses
automatically starting service of a new signaling link, we find it reasonable
that starting includes starting the running of the application to the extent that
it provides the requested service such that, prior to starting, the service is not
running. That is, starting a service teaches or suggests that the service
requires starting, i.e., is not otherwise available or “running.” Therefore,
absent sufficient rebuttal evidence or argument to persuade us otherwise, we
find no reversible Examiner error.
Finally, in connection with contention 8, Appellants argue that the
combination of Lazaridis and Buttet is improper because the Examiner’s
rationale for combining the references “is merely a conclusory statement of
an alleged benefit of the combination.” App. Br. 51. We disagree. Instead
we find the Examiner has provided an articulated reasoning for combining
Lazaridis and Buttet. Ans. 13. Therefore, in the absence of sufficient
rebuttal evidence or argument to persuade us otherwise, we find the
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Examiner’s conclusions of obviousness are clearly articulated and are based
on detailed factual findings that are supported by the references of record.
For the reasons supra we agree with the Examiner’s findings and
conclusions. Accordingly, on the record before us, we sustain the rejection
of independent claim 10 under 35 U.S.C. § 103(a) over Lazaridis, Lean, and
Buttet.

CONCLUSIONS
We find:
(i) The Examiner did not err in combining the applied references; and
(ii) The applied references teach or suggest the disputed claim limitations.

DECISION
The Examiner’s decision to reject claims 1-40 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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