Ex Parte Saru et al

Patent Trial and Appeal Board

Dec 23, 2016

12744687 (P.T.A.B. Dec. 23, 2016)

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.
12/744,687 12/23/2010 Sami Saru 7888-21303 4548
81310 7590 12/28/2016
Mevertnns; HnnH Kivlin Knwe.rt Rr Ci (ArmleT
EXAMINER
P.O. BOX 398
Austin, TX 78767-0398
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
patent_docketing@intprop.com
ptomhkkg @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMI SARU, JANNE AALTONEN, and ISMO ANTIKAINEN1
Appeal 2016-004617
Application 12/744,687
Technology Center 2400
Before THU A. DANG, NORMAN H. BEAMER, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—11, 13—18, and 22. Claims 2, 12, 19-21, 23, and 24 have been
canceled. Br. 3. We have jurisdiction over the remaining pending claims
under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Apple, Inc. as the real party in interest. Br. 1.
Appeal 2016-004617
Application 12/744,687
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to “supporting or
implementing functionality to intercept a phone call and/or data transmission
in a cellular network and direct it to at least one receivers’ VoIP [(Voice
over Internet Protocol)] client.” Spec. 1,11. 6—8. According to the
Specification, rerouting circuit-switched originating calls (such as via a
conventional cellular network) to a packet-based network (e.g., using VoIP),
is more cost-effective. Spec. 10,11. 3—10.
Claim 11 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
11. A system configured to reroute transmission of data directed to a
recipient in a data communications network, the data communications
network comprising:
a first network portion;
a second network portion, the second network portion being a
circuit-switched network portion;
a third network portion, the third network portion being an
Internet Protocol (IP) network portion, the recipient being able to
receive communications via the second network portion or via the third
network portion;
a gateway element coupled to said second and third network
portions so that the second and third network portions are coupled
between the gateway element and a first terminal associated with the
recipient; and
a data delivery module coupled to the gateway element, the data
delivery module configured to maintain subscriber records associated
with the recipient, said subscriber records including usage records
identifying usage of network resources associated with the second
network portion and the third network portion;
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Application 12/744,687
wherein the gateway element receives, via the first network
portion, a request for data transmission connectivity to the recipient at
the first terminal associated with the recipient;
wherein the data delivery module determines whether the
recipient has Voice over IP (VoIP) connectivity that may be used to
transmit data to the recipient;
wherein, under direction from the data delivery module, when
the recipient has VoIP connectivity, the gateway element attempts to
establish data transmission connectivity with a VoIP client for the
recipient;
wherein the gateway element receives, via the first network
portion, data to be transmitted to the first terminal of the recipient via
the second network portion',
wherein, when data transmission connectivity is established with
the VoIP client, the gateway element reroutes the data by transmitting
the data to the recipient’s VoIP client via the third network portion,
said data delivery module being arranged to trigger updates to the usage
record associated with the recipient to indicate transmission of the data
via the third network portion instead of via the second network portion;
wherein, when data transmission connectivity is not established
with the VoIP client, the gateway elements transmits the data to the first
terminal of the recipient via the second network portion.
The Examiner’s Rejections
1. Claims 1, 3—5, 8, 11, 13, 14, 17, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tagg et al. (US
2005/0286466 Al; Dec. 29, 2005) (“Tagg”) and Pershan (US 2005/0190721
Al; Sept. 1, 2005). Final Act. 3—9.
2. Claims 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tagg, Pershan, and McCann (US 2005/0197105
Al; Sept. 8, 2005). Final Act. 10—11.
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Appeal 2016-004617
Application 12/744,687
3. Claims 9, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tagg, Pershan, and Lazaridis et al. (US
2008/0182565 Al; July 31, 2008) (“Lazaridis”). Final Act. 12-13.
Issue on Appeal
Did the Examiner err in finding Tagg teaches or suggests “a gateway
element” coupled to “a second network portion” and “a third network
portion” and further configured to “receive^, via the first network portion,
data to be transmitted to the first terminal of the recipient via the second
network portion . . . [and] when data transmission connectivity is established
with the VoIP client,. . . reroute[] the data . . . via the third network
portion,” as recited in claim 11?
ANALYSIS2
Appellants contend the Examiner erred in finding Tagg teaches or
suggests the limitations “wherein the gateway element receives via the first
network portion, data to be transmitted to the first terminal of the recipient
via the second network portion” and “wherein, when data transmission
connectivity is established with the VoIP client, the gateway element
reroutes the data by transmitting the data to the recipient’s VoIP client via
the third network portion,” as recited in claim 11. Br. 8. Specifically,
Appellants assert Tagg “does not describe the operations of receiving and
rerouting such as in the independent claims.” Br. 8.
2 Throughout this Decision, we have considered the Appeal Brief, filed
January 2, 2015 (“Br.”); the Examiner’s Answer, mailed on July 6, 2015
(“Ans.”); and the Final Office Action (“Final Act.”) mailed on July 16,
2014, from which this Appeal is taken.
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Application 12/744,687
Claim 11 recites a data communications network comprising three
portions: (i) a first network portion; (ii) a second network portion, which is a
circuit-switched network portion; and (iii) a third network portion, which is
an Internet Protocol (IP) network portion. The Examiner finds Tagg teaches
three different networks and maps the PSTN as the claimed first network
portion, cellular infrastructure as the claimed second network portion; and
the Internet as the claimed third network portion. Final Act. 3 (citing Tagg
11223, 236-39, Figs. 3, 9); Ans. 2.
Further, claim 11 recites “a gateway element coupled to said second
and third network portions so that the second and third network portions are
coupled between the gateway element and a first terminal associated with
the recipient.” In other words, based on the Examiner’s earlier mapping of
the network portions, a gateway element is coupled to both the cellular
infrastructure and the Internet so that the cellular infrastructure and the
Internet are coupled between the gateway and a first user terminal associated
with the recipient. The Examiner relies on Figure 10 of Tagg, which is
reproduced below:
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Application 12/744,687
Figure 10
Figure 10 of Tagg, reproduced above, illustrates an embodiment of
Tagg’s wireless VoIP system. Tagg 1147. The Examiner finds “media
gateway 1011 resides between PSTN 1012 and Internet 1008, and between
PSTN 1012 and 3G Network 1003, and facilitates calls to the user.” Final
Act. 4 (citing Tagg 243^45, Fig. 10) (emphasis omitted); Ans. 3. Thus,
the Examiner is mapping PSTN 1012 (previously mapped as corresponding
to the claimed first network portion) as the claimed “first terminal associated
with the recipient.”
Further, claim 11 recites “the gateway element receives, via the first
network portion, data to be transmitted to the first terminal of the recipient
via the second network portion.” Under the Examiner’s mapping, however,
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Application 12/744,687
the gateway element would receive data from the PSTN (1012), which is to
be transmitted to the PSTN (1012) via 3G Network (1003).
We agree with Appellants that, using the findings of the Examiner, the
media gateway (1011) of Tagg is not coupled to the various network
portions as claimed, nor does it receive and re-route the data as claimed.
For the reasons discussed supra, and on the record before us, we do
not sustain the Examiner’s rejection of independent claim 11. For similar
reasons, we do not sustain the Examiner’s rejection of independent claims 1
and 22, which recite similar limitations. Additionally, we do not sustain the
Examiner’s rejections of claims 3—10 and 13—18, which depend therefrom.
DECISION
We reverse the Examiner’s decision to reject claims 1, 3—11, 13—18,
and 22.
REVERSED
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