Ex Parte Sanders et al

Patent Trial and Appeal Board

Oct 31, 2012

10973146 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFERY A. SANDERS, MICHAEL H. MCCLUNG, HENRY
CHEN, and ANDREW J. FRANCKE
____________________

Appeal 2010-004033
Application 10/973,146
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and JUSTIN BUSCH,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/973,146

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellants, the invention relates to “communications
and more specifically to providing a proxy server feature at an endpoint.”
Spec. 1.

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method for providing a proxy server feature,
comprising:
initiating a proxy server feature at a first endpoint of a
plurality of endpoints;
receiving registration information corresponding to the
plurality of endpoints, the registration information
corresponding to an endpoint comprising an address for the
endpoint;
storing the registration information in a routing table at
the first endpoint;
locating a callee endpoint of the plurality of endpoints
using the routing table in order to establish a session with the
callee endpoint;
intercepting an endpoint state process of the session at a
feature interaction point; and
determining a next state of the endpoint state process
according to a feature finite state machine corresponding to the
feature interaction point.
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References
MeLampy US 2002/0169887 A1 Nov. 14, 2002
Tran US 6,667,968 B1 Dec. 23, 2003
Newberg US 2004/0131060 A1 Jul. 8, 2004
O’Neill US 2006/0047742 A1 Mar. 2, 2006
Beck US 2006/0067323 A1 Mar. 30, 2006
Squire US 7,139,838 B1 Nov. 21, 2006

Rejections1
Claims 1, 3, 6-8, 10, 13-15, 17, 20-22, 24, and 27-29 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over MeLampy in view of
O’Neill and Squire. Ans. 3-7.
Claims 2, 9, 16, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy in view of O’Neill and Newberg. Ans. 7.
Claims 4, 11, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy in view of O’Neill and Beck. Ans. 8.
Claims 5, 12, 19, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy in view of O’Neill and Tran. Ans. 9

1 We have decided the appeal before us. However, should there be further
prosecution of these claims, the Examiner’s attention is directed to recently
issued guidance from the Director and our reviewing courts. Specifically,
should there be further prosecution with respect to claims 1-7, 15-21, 28, and
30, the Examiner’s attention is directed to Bilski v. Kappos, 130 S. Ct. 3218
(2010) and Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, 43922-28
(Jul. 27, 2010).
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Application 10/973,146

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Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over MeLampy in view of O’Neill, Newberg, Tran, Beck, and
Squire. Ans. 9-14.

ISSUES2
35 U.S.C. § 103(a) (MeLampy, O’Neill, and Squire): claims 1, 3, 6-8, 10,
13-15, 17, 20-22, 24, and 27-29
Appellants argue their invention is not rendered obvious by the
combination of MeLampy, O’Neill, and Squire. App. Br. 10-12.
Specifically, Appellants argue that “Squire only discloses ‘providing policy
based interdomain distribution and intradomain flooding’ using ‘[Border
Gateway Protocol’s] finite state machine and other similar formats and
attributes to the BGP.’” App. Br. 10. Appellants also argue that “O’Neill
only discloses four ways to extend the proxy server capability beyond the
SIP specification.” App. Br. 11. Appellants further contend the Examiner
improperly combined the references by using hindsight. Id.

Issue 1: Has the Examiner erred in finding that Squire, in combination
with MeLampy and O’Neill, teaches or suggests “intercepting an endpoint
state process of the session at a feature interaction point” and “determining a

2 Appellants provide no separate argument regarding dependent claims 2, 4,
5, 9, 11, 12, 16, 18, 19, 23, 25, and 26. Therefore, these claims stand or fall
with the claims from which they depend. Appellants argue that the rejection
of claim 30 is improper because it includes similar limitations to those in
claims 1 and 7, which Appellants argue is patentable. Claim 7 is dependent
on (and therefore includes the limitations of) claim 1. Therefore, claim 30
will stand or fall with claim 7.
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next state of the endpoint state process according to a feature finite state
machine corresponding to the feature interaction point” as recited in claim 1
(and similar limitations recited in claims 8, 15, 22, 28, and 29)?

Issue 2: Has the Examiner erred in finding that O’Neill, in
combination with MeLampy and Squire, teaches or suggests “accessing
feature logic using a service framework at the first endpoint, the feature
logic defining the proxy server feature” and “initiating the proxy server
feature by executing the feature logic” as recited in claim 7 (or similar
limitation recited in claims 14 and 21)?

Issue 3: Has the Examiner erred by improperly combining the
references?

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 each of the arguments. We agree with the Examiner.
With respect to claim 1, Appellants argue that Squire does not
disclose “intercepting an endpoint state process of the session at a feature
interaction point” or “determining a next state of the endpoint state process
according to a feature finite state machine corresponding to the feature
interaction point,” as claimed in independent claim 1. Claim 7 depends from
claim 1 and adds that the “initiating the proxy server feature” step includes
accessing “feature logic using a service framework at the first endpoint, the
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feature logic defining the proxy server feature” and “executing the feature
logic.”
With respect to both arguments, Appellants have merely indicated
what the identified references teach, without explaining how the cited
portions of the references do not sufficiently teach the portions of
Appellants’ claims for which the Examiner cited the respective references.
Appellants’ entire argument in their Appeal Brief regarding claim 1 is a
statement that “Squire only discloses ‘providing policy based interdomain
distribution and intradomain flooding’ using ‘[Border Gateway Protocol’s]
finite state machine and other similar formats and attributes to the BGP.’”
App. Br. 10. Appellants’ only argument in their Appeal Brief regarding
claim 7 is that O’Neill “only discloses four ways to extend the proxy server
capability beyond the SIP specification.” App. Br. 11. Conclusory
statements unsupported by factual evidence are entitled to little probative
value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The Examiner points to column 4, lines 9-24 of Squire as teaching the
disputed elements of claim 1. Ans. 4-5. Appellants merely point to one
paragraph that discusses a preferred embodiment and conclude that Squire
therefore does not teach or suggest the recited language in claim 1. App. Br.
10. However, Appellants do not provide sufficient evidence or argument to
convince us of error in the Examiner’s rejection of claim 1.
Similarly, the Examiner points to paragraphs 146-150 of O’Neill, and
more specifically paragraph 148, as disclosing the additional limitations
recited in dependent claim 7. Ans. 6, 15. Once again, Appellants simply state
that “O’Neill only discloses four ways to extend the proxy server capability
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beyond the SIP specification,” and determines that the limitations of claim 7
are not disclosed, taught, or suggested. App. Br. 11. As with claim 1,
Appellants have not provided sufficient argument or evidence explaining
how ¶148 does not show the recited limitations and therefore has not
provided sufficient argument or evidence to convince us of error in the
Examiner’s rejection of claim 7.
After reviewing Appellants’ Specification, Appellants’ conclusory
statements remain unconvincing. Appellants define a “feature interaction
point” as “a point of the state process at which feature router 108 may
intercept the state process and provide a response.” Spec. p. 15 ll. 6-8.
Appellants define “feature finite state machines” as “state machines that
provide instructions to implement features.” Spec. 15 ll. 26-27. Appellants
have not persuaded us that the Examiner’s interpretation is unreasonable or
inconsistent with the Specification.
In their Reply Brief, Appellants raise two new arguments regarding
claims 1 and 7 (and the other claims that recite similar limitations). Reply
Br. 2-3. Arguments raised in a Reply Brief that could have been raised in an
Appeal Brief need not be considered and are treated as waived. 37 C.F.R. §
41.41(g); See Ex parte Borden, 93 USPQ2d 1473, 1743-74 (BPAI 2010).
However, even if we were to consider Appellants’ arguments in the Reply
Brief, Appellants still provide insufficient explanation to convince us of
error in the Examiner’s rejections.
In their Reply Brief, Appellants assert that Squire relates to routing
information and not features. Reply Br. 2. As discussed above, we agree
with the Examiner’s rejection of claim 1 under a broadest reasonable
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interpretation of the claims. Moreover, throughout their Specification,
Appellants describe routing functions as examples of proxy server features.
With respect to Appellants belated argument that O'Neill relates to
capabilities of a proxy server as opposed to operating an endpoint as a proxy
server, O’Neill is relied upon for logic to select binding and enable endpoint
routing. Reply Br. 3. Claim 7 is dependent from claim 1, which includes a
proxy server feature at an endpoint. Claim 7 simply provides further detail as
to how the “initiating the proxy server feature” is implemented (through
“accessing feature logic”). Therefore, even if we were to consider
Appellants’ new arguments submitted in their Reply Brief, we would find
them unpersuasive.
Appellants also assert that the Examiner improperly uses hindsight
without explaining the flaws in the Examiner’s reasons for combining the
references. We do not find that Appellants have provided sufficient
argument to overcome the Examiner’s basis for combining the references.
Independent claims 8, 15, 22, 28, and 29 include similar limitations as
those in claim 1 and are therefore unpatentable for the same reasons as
discussed with respect to claim 1. Dependent claims 14, 21, and 30 include
similar limitations as those in claim 7 and are therefore unpatentable for the
same reasons as discussed with respect to claim 7. No separate argument
was made regarding dependent claims 2-6, 9-13, 16-20, or 23-27, which
therefore fall with the claims from which they depend.

DECISION
The Examiner’s decision rejecting claims 1-30 is affirmed.
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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)(1)(iv).

AFFIRMED

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