Ex Parte Parham et al

Board of Patent Appeals and Interferences

Sep 26, 2007

09685274 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ERIC SEAN PARHAM, BRIAN E. WILLIAMS,
ANTHONY JOHN PAUL CAREW, and
ROBERT WHITCHER
___________

Appeal 2007-1781
Application 09/685,274
Technology Center 2600
___________

Decided: September 26, 2007
___________

Before JOSEPH L. DIXON, ANITA PELLMAN GROSS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2007-1981
Application 09/685,274

BACKGROUND
Appellants’ invention relates to a system and method for interfacing
between signaling protocols. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. A system for interfacing between signaling protocols, comprising:

a gateway operable to receive signaling information in a media
gateway and call session control format, the gateway operable to convert
the media gateway and call session control format to a broadband loop
emulation service signaling protocol, the gateway operable to provide
tone generation and detection capabilities pursuant to the signaling
information.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
SMYK US 6,603,760 B1 Aug. 5, 2003
(filed Dec. 7, 1999)

DSL Forum TR-036, Requirements for Voice over DSL, Version 1.0
(August 28, 2000). (Referenced as DSL Forum).

REJECTIONS
Claims 3, 9-11, and 14-20 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite or failing to particularly point out and
distinctly claim a subject matter which applicants regard as the invention.
Claims 1-20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Smyk in view of DSL forum.
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Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Nov. 15, 2006) for the
reasoning in support of the rejections, and to Appellants’ Brief (filed Aug.
21, 2006) and Reply Brief (filed Jan. 16, 2007) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 112, SECOND PARAGRAPH
Claims 3, 9-11, and 14-20 stand rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particular point out and distinctly
claim the subject matter which applicants regard as the invention. The
Examiner maintains that dependent claim 3 is unclear as to what is meant by
“provide the signaling information in a media gateway and call session
control format to a Class 5 softswitch” because a Class 5 softswitch is
neither defined in the specification nor well known as a term in the art
(Answer 3). The Examiner finds similar fault in claims 9-11 and 14-20
(Answer 3-4).
Appellants have provided a printout of an article from SUPERCOMM
2000 “TalkingNets to Implement telecom technologies' Flexible Softswitch
Technology Within its Next-Generation Network”, dated June 6, 2000,
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which is four months before Appellants’ filing date. Appellants maintain
that the term Class 5 softswitch was a well-known term in the art to those
skilled in the relevant art (Br. 4). The Examiner maintains that the
SUPERCOMM 2000 article is “very general, short and does not teach Class
5 softswitch, but discuss soft switches as an alternative to Class 5 switches
and contain no in-depth information on the Class 5 softswitch
implementation.” (Answer 7). Additionally, the Examiner maintains that
mentioning the concept of soft switches in an article is not clearly sufficient
to define a Class 5 softswitch because the article contains mostly
marketing/sales information for TalkingNets Co. and was not intended to
define a Class five soft switch or the Class five soft switch signaling format
(Answer 7).
While we agree with the Examiner that the article from
SUPERCOMM 2000 is general and does not contain in-depth information
on Class 5 softswitches, we do find that the term was known to those skilled
in the telecommunications art, and those skilled in the relevant art would
have been able to discern the metes and bounds of the invention claimed in
dependent claim 3. Additionally, we do not find it to be a requirement that
Appellants provide an express definition of each claim limitation so long as
those skilled in the art would have been able to determine the metes and
bounds of the claimed invention with respect to other devices in the
marketplace. Here, we find the use of the claimed terminology “Class 5 soft
switch” to be broad rather than indefinite, and we will not sustain the
rejection of claims 3, 9-11, and 14-20 under 35 U.S.C. § 112, second
paragraph.

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35 U.S.C. § 103
With respect to the Examiner's rejection under 35 U.S.C. § 103(a)
over the combination of Smyk in view of DSL forum, we agree with the
Examiner's rejection as set forth in the Answer at pages 4-5 and the
motivation to combine the teachings of DSL forum with recently developed
broadband loop emulation service (BLES). Smyk teaches a flexible system
that will instruct the network to handle calls differently depending on
whether the service should be based on a Class 5 switch or the service
manager (SM). (Smyk, col. 5, ll. 14-16). Smyk teaches that a next-
generation network (NGN) is a packet-based network that employs new
control management and signaling techniques to provide narrowband voice
telephony services and broadband multimedia services. (Smyk, col. 1, ll.
22-26). Smyk teaches in a first mode of operation that the NGN simulates a
digital local loop to allow local services to be offered to all NGN customers
via Class 5 switching systems. In this mode, the NGN is transparent to both
the customer and the Class 5 switching system. This mode of operation is
referred to herein as virtual local loop (VLL) mode. (Smyk, col. 3, l. 63-col.
4, l. 1).
Here, we find that Smyk teaches a gateway operable to receive
signaling information in a media gateway and call session control format,
the gateway further operable to convert the media gateway and the call
session control format to a broad band loop emulation service signaling
protocol. We further find that Smyk teaches the gateway is operable to
provide tone generation and detection capabilities pursuant to the signaling
information as recited in independent claim 1. Smyk teaches a Class 5
switch that will provide a dial tone to customer 420 and collect dial digits.
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The call is routed to the terminating party 28 using traditional PSTN call
signaling and transmission capabilities (Smyk, col. 6, ll. 54-57). While
Smyk does not disclose the use of BLES, Smyk does disclose the use of
virtual phones using packetized local loop facilities (e.g., DSL) to connect to
a local loop gateway. The packetized local loop network communicates
with Class 5 switches through a local gateway (Smyk, column 3, lines 23-
28).
DSL forum is directed to digital subscriber loop (DSL) technology
and broadband loop emulation service (BLES). Additionally, DSL forum
discusses that Class 5 services include switches which include soft switches
(DSL forum 20, section 6.3.3.1. Regular telephony features). (See Annex
B, which is not part of the reference as supplied by the Examiner.)
We disagree with Appellants’ contention that the Examiner has not set
forth a sufficient motivation for the combination. We find the Examiner has
set forth sufficient motivation and suggestion in the combination of Smyk
and DSL forum such that the skilled artisan would have combined the
relevant teachings (Br. 6-7).
Appellants' main contention is that Smyk has no disclosure with
respect to BLES service signaling protocol and is not capable of performing
the media gateway and call session format conversion to BLES as provided
in the claimed invention. Appellants further contend that DSL forum does
not disclose a gateway that converts a media gateway and call session format
to a BLES signaling protocol and has no disclosure with respect to the media
gateway and call session format. Appellants contend that the structure from
the combination of the two teachings would still lack an ability to convert a
media gateway and call session format to a broadband loop emulation
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service signaling protocol while also providing tone generation and detection
as required by the claimed invention (Br. 8).
We do not agree with Appellants’ position, and we find that the
combination of Smyk and DSL forum would have fairly suggested the
invention as recited in independent claim 1. We find the Examiner's
statement of motivation to combine and the suggestion for combinability
with respect to new standards (such as BLES being essential for devices
from different manufacturers to work together on a network), would have
been persuasive to one skilled in the art (Answer 8). Therefore, we will
sustain the rejection of independent claim 1 and dependent claims 3 and 9-
11, which have not been separately argued by Appellants. We note that
Appellants argue claims 3 and 9-11 in the Brief at pages 8-9 but do not
include the required heading for a separate grouping of these claims.
Therefore, we include these claims with independent claim 1.
While Appellants argue that Smyk is directed to a Class 5 switch and
has no teachings with respect to a Class 5 softswitch. As noted above, we
find DSL forum teaches the use of Class 5 switches including the use of
softswitches. Therefore, we find it would have been obvious to one of
ordinary skill in the art to have implemented the combination of Smyk and
DSL forum with a Class 5 softswitch. We further find that those skilled in
the art would have appreciated the difference between a conventional Class
5 switch and a Class 5 softswitch and would have recognized the required
interfacing since DSL forum expressly mentions the use thereof.
With respect to independent claim 14, Appellants rely upon the same
argument as advanced with respect to independent claim 1 and dependent
claim 3, which we did not find persuasive above (Br. 10-11). Therefore, we
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do not find this argument persuasive, and we will sustain the rejection of
independent claim 14 and dependent claims 15-20, which have not been
separately argued by Appellants.
CONCLUSION
To summarize, we have reversed the rejection of claims 3, 9-11, and
14-20 under 35 U.S.C. § 112, second paragraph. We have sustained the
rejection of claims 1-20 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).
AFFIRMED

rwk

Charles S. Fish, Esq.
Baker Botts L.L.P.
2001 Ross Avenue
Dallas, TX 75201-2980
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