Ex Parte Sylvain

Patent Trial and Appeal Board

Aug 11, 2015

11960341 (P.T.A.B. Aug. 11, 2015)

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.
11/960,341 12/19/2007 Dany Sylvain NOR-148
(18611ROUS01U)
4315
131442 7590 08/12/2015
RPX Clearinghouse, LLC
One Market Plaza, Steuart Tower
Suite 800
San Francisco, CA 94105
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
08/12/2015 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 DANY SYLVAIN
____________

Appeal 2013-005732
Application 11/960,341
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D.
BAER, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all the claims pending in this
application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest identified by Appellant is Rockstar Bidco, LP.
Appeal Br. 3.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates generally to a system and method for
multimedia communications over a communication network between a
calling party and a called party. Abstract.
Claim 1 is representative and reads as follows:
1. A method for establishing multimedia communications
over a communication network between a calling party and a
called party, the method comprising:
receiving a request from a session initiation protocol
(SIP)-enabled communication device of the calling party to
establish a SIP session with the called party;
establishing, in response to the request, a voice
connection between the SIP-enabled communication device of
the calling party and a non-multimedia communication device
used by the called party; and
establishing a second connection for transferring media
other than voice between the SIP-enabled communication
device of the calling party and a computing device used by the
called party, without terminating the voice connection between
the SIP-enabled communication device of the calling party and
the non-multimedia communication device of the called party.
Appeal Br. 17 (Claims App.).

References
Gallant US 2002/0146005 A1 Oct. 10, 2002
Kobayashi US 2006/0153166 A1 July 13, 2006
Pulhug US 2009/0135806 A1 May 28, 2009
LeVasseur US 2010/0241664 A1 Sept. 23, 2010

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Rejections on Appeal
1. Claims 1, 6–10, and 15–19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over
Kobayashi, Pulhug, and Gallant.
2. Claims 2–5, 11–14, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over
Kobayashi, Pulhug, Gallant, and LeVasseur.
Issues on Appeal
Appellant’s arguments in the Appeal Brief2 and Reply Brief present us
with the following issues:
1. Did the Examiner err in combining Kobayashi with
Pulhug and Gallant?
2. Does the combination of Kobayashi, Pulhug, and Gallant
teach or suggest a “service node,” as recited in claims 10
and 19?
3. Does the combination of Kobayashi, Pulhug, and Gallant
teach or suggest “wherein the computing device of the
called party is non-SIP enabled,” as recited in claims 7
and 16?
4. Does the combination of Kobayashi, Pulhug, Gallant, and
LeVasseur teach or suggest “receiving a request from a
web browser executing on the computing device of the

2 Our Decision refers to the Final Office Action (mailed Dec. 21, 2011,
“Final Act.”), Appellant’s Appeal Brief (filed Oct. 15, 2012, “Appeal Br.”)
and Reply Brief (filed Mar. 28, 2013, “Reply Br.”), the Examiner’s Answer
(mailed Jan. 29, 2013, “Ans.”), and the original Specification (filed Dec. 19,
2007, “Spec.”).
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called party,” “transmitting a web page to the computing
device of the called party in response to the web browser
request,” and “receiving a request from the web browser
executing on the computing device to establish the
second connection in accordance with an action selected
by the called party from the web page,” as recited in
claims 2, 11, and 20?
5. Does the combination of Kobayashi, Pulhug, Gallant, and
LeVasseur teach or suggest “wherein the web page is
downloaded from a web server of a service node in
response to activation of a URL (universal resource
locator) uniquely associated with the called party,” as
recited in claims 4 and 13?
6. Does the combination of Kobayashi, Pulhug, Gallant, and
LeVasseur teach or suggest “wherein the web page
displays status information indicating that a call is
established with the calling party,” as recited in claims 5
and 14?
ANALYSIS
We are not persuaded by Appellant’s arguments that the Examiner has
erred. Appeal Br. 7–15; Reply Br. 2–7. We agree with, and adopt as our
own, the Examiner’s findings and reasons as set forth in the Final Action
from which this appeal is taken (Final Act. 3–9) and the Examiner’s Answer
(Ans. 3–15). For emphasis, we highlight specific arguments and findings as
follows.
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Issue 1
With respect to claim 1, Appellant raises several arguments regarding
why it would not have been obvious to one of ordinary skill in the art to
modify Kobayashi based on the teachings of Pulhug and Gallant. Appeal
Br. 7–11; Reply Br. 2–7. As discussed below, we do not find any of these
arguments persuasive.
Appellant contends the Examiner has failed to provide any rationale
or evidence for why one of ordinary skill in the art would modify Kobayashi
based on the teaching of Pulhug to establish a second connection for
transferring media other than voice with a separate computing device, rather
than to a single computing device as taught by Kobayashi. Appeal Br. 7–8.
Appellant also asserts there is no teaching or suggestion in Kobayashi that a
modification of its data transfer solution is either necessary or desirable. Id.
at 8. Appellant further alleges the Examiner is engaging in impermissible
hindsight in proposing a modification of Kobayashi to include the data
transfer mechanism of Pulhug. Id.
We do not find Appellant’s arguments persuasive. Instead, we find
that the Examiner has provided sufficient articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. KSR
Int’l Co., v. Teleflex Co., 550 U.S. 398, 418 (2007). More specifically, the
Examiner finds that, at the time of the invention, it would have been obvious
to one of ordinary skill in the art to modify the invention of Kobayashi to
enable a called party to receive data over an “other-than-voice” connection
using a second computing device while the called party is engaged in an
ongoing voice connection using a first device. Ans. 3–4. The Examiner
further finds that the motivation for the modification is to provide a
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convenient way for the called party to receive data while the called party is
engaged in a voice session, as the modification will give the called party of
Kobayashi not only the advantages of receiving a file while engaging in a
voice call, but also the ability to receive and conveniently check the file in a
separate device.3 Id. Based on the Examiner’s findings, we conclude that
modifying Kobayashi to have a first device (i.e., IP telephone 101) establish
a first voice connection with a second device (i.e., IP telephone 102) and
establish a second “other-than-voice” connection with a separate computing
device, rather than the second device, is nothing more than the predictable
use of prior art elements according to their established functions. KSR, 550
U.S. 398 at 417.
In response to Appellant’s assertion that there is no teaching or
suggestion in Kobayashi that a modification of its data transfer solution is
either necessary or desirable, the Supreme Court has rejected the rigid
requirement of demonstrating a teaching, suggestion, or motivation to
combine references in order to show obviousness. KSR, 550 U.S. 398 at
419. Instead, a rejection based on obviousness only needs to be supported
by “some articulated reasoning with some rational underpinning” to combine

3 In the Reply Brief, Appellant argued that the proffered motivation to
modify Kobayashi with the teaching of Pulhug was never presented in the
Final Office Action, and thus, the proffered motivation amounts to a new
ground of rejection. Reply Br. 2. Even assuming arguendo that the
proffered motivation amounts to a new ground of rejection, the failure to
designate the rejection as a new ground of rejection is a petitionable issue,
rather than an appealable issue. See 37 CFR 41.40(a) (“Any request to seek
review of the primary examiner’s failure to designate a rejection as a new
ground of rejection in an examiner’s answer must be by way of a petition to
the Director under § 1.181 of this title filed within two months from the
entry of the examiner’s answer and before the filing of any reply brief.”).
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known elements in the manner required by the claim. Id. at 418. In
response to Appellant’s assertion that the Examiner engaged in
impermissible hindsight in modifying Kobayashi to include the data transfer
mechanism taught by Pulhug, it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning. However, so long as it takes into account only knowledge which
was within the level of ordinary skill at the time the claimed invention was
made, and does not include knowledge gleaned only from the Appellant’s
disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Here, we conclude the Examiner did not use
impermissible hindsight because the rejection is based on the references and
what they would have taught or suggested to a person of ordinary skill in the
art.
Appellant further contends that the proposed modification of
Kobayashi based on the teaching of Pulhug does not produce the claimed
“establishing a second connection for transferring media other than voice
between the SIP-enabled communication device of the calling party and a
computing device of the called party” because Pulhug does not teach or
suggest using the same SIP-enabled communication device to establish both
the voice connection and the “other-than-voice” connection. Appeal Br. 8–
9. Appellant further argues it was improper to only focus on the called
party’s portion of the system taught by Pulhug because such a focus failed to
consider Pulhug in its entirety. Reply Br. 3. However, Appellant has failed
to identify any portion of Pulhug that would discourage a person of ordinary
skill in the art from using a single SIP-enabled enabled communication
device to establish both a voice connection and an “other-than-voice”
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connection, as taught by Kobayashi. Further, Appellant has not asserted that
the proposed modification would have been beyond the capabilities of a
person of ordinary skill in the art. Absent such an assertion, we “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ,” and find a person of ordinary skill in the art would
overcome those difficulties within their level of skill. KSR 550 U.S. 398 at
418; see also id. at 421 (“[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton”). Thus, this argument is also not
persuasive.
Appellant further contends that there is no motivation or suggestion to
modify Kobayashi and Pulhug to establish a voice connection between a
caller’s SIP-enabled communication device and a called party’s non-
multimedia communication device, as taught by Gallant, because such a
modification would render Kobayashi inoperable (or unsatisfactory for its
intended purpose) because the modification would render the called party’s
device incapable of receiving a file transfer from the caller’s IP telephone.
Appeal Br. 10–11; Reply Br. 5–6. The Examiner finds that, at the time of
the invention, it would have been obvious to one of ordinary skill in the art,
in light of the teachings of Kobayashi, Pulhug, and Gallant, to modify the
invention of Kobayashi and Pulhug to enable a system to establish a
communication connection between an SIP-enabled endpoint and a non-SIP-
enabled endpoint, and that the suggestion for doing so would have been to
allow users that are using a SIP-enabled endpoint to establish a connection
from the SIP-enabled endpoint to a non-SIP enabled endpoint. Final Act. 4–
5. The Examiner further finds the IP telephone of Kobayashi that is used by
the called party (i.e., IP telephone 102) includes, among other components, a
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telephone controller 201 that controls voice communication operations and a
file transmitter/receiver 202 that transmits and receives a file via an IP
network, and, based on the teaching of Gallant, one of ordinary skill in the
art could separate IP telephone 102 into the aforementioned components so
that the called party could retain the ability to receive data files. Ans. 8–9.
We do not find Appellant’s arguments regarding inoperability
persuasive. Instead, we find that Appellant’s assertions that modifying the
system of Kobayashi to enable IP telephone 101 to establish a connection
with a communication device that includes the functionality provided by
telephone controller 201, rather than a communication device that includes
both the functionality provided by telephone controller 201 and the
functionality provided by file transmitter/receiver 202, conclusory and
unsubstantiated. Not only are Appellant’s arguments speculative and
unsubstantiated, it is well settled that “a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Accordingly, we conclude
Appellant has not provided sufficient evidence or technical reasoning to
demonstrate that modifying Kobayashi and Pulhug based on the teaching of
Gallant would render Kobayashi inoperable or unsatisfactory for its intended
purpose.
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Appellant further contends the proposed modification of the
combination of Kobayashi and Pulhug with the teaching of Gallant is
incorrect because claim 1 recites that the “non-multimedia communication
device” is a communication device, rather than a computing device. Appeal
Br. 8–9. Appellant’s arguments appear to be based on a minor typographical
error in the Final Office Action, i.e. substituting “computing device of the
called party” for “communication device of the called party.” Final Act. 4;
Ans. 6. Nevertheless, we agree with the Examiner that Gallant teaches an
SIP-enabled communication device (i.e., device 26) that establishes a
connection with a non-multimedia communication device (i.e., telephone
164) used by a called party (Ans. 6–7), and Appellant has not presented any
evidence or argument to rebut this finding. Thus, this argument is also not
persuasive.
Appellant also contends that one of ordinary skill in the art, presented
with Kobayashi, Pulhug, and Gallant, would not find any teachings or
suggestions in the references to make the proposed modifications in the
order proffered by the Examiner (i.e., to first modify Kobayashi with
Pulhug, and then to modify the combination of Kobayashi and Pulhug with
Gallant). Appeal Br. 10–11. However, this argument is also not persuasive,
because the order of a combination of multiple prior art references is not
relevant in determining obviousness of a claim, when each of the references
contains the relevant disclosures. See In re Bush, 296 F.2d 491, 496 (CCPA
1961).
Issue 2
Appellant contends the Examiner has failed to identify a service node
comprising
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logic for establishing, in response to the request, a voice
connection between the SIP-enabled communication device of
the calling party and a non-multimedia communication device
used by the called party; and logic for establishing a second
connection for transferring media other than voice between the
SIP-enabled communication device of the calling party and a
computing device used by the called party,
as recited in claim 10 and similarly recited in claim 19, in any of the cited
references. Appeal Br. 11. The Examiner finds that Gallant describes a SIP
proxy server computer that functions as both a server and a client for the
purpose of making connection requests on behalf of other clients. Final Act.
5–6. We agree with the Examiner’s findings, and thus, we do not find
Appellant’s arguments regarding claims 10 and 19 persuasive.
Issue 3
Appellant contends that none of the cited references teaches or
suggests “wherein the computing device of the called party is non-SIP
enabled,” as recited in claim 7 and similarly recited in claim 16. However,
in support of their contention, Appellant merely reiterates its arguments
regarding inoperability. Appeal Br. 12. As previously discussed, we do not
find Appellant’s arguments regarding inoperability persuasive with respect
to claim 1. Thus, we also do not find these arguments regarding claims 7
and 16 persuasive.
Issue 4
Appellant contends that none of the cited references teaches or
suggests “receiving a request from a web browser executing on the
computing device of the called party,” “transmitting a web page to the
computing device of the called party in response to the web browser
request,” and “receiving a request from the web browser executing on the
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computing device to establish the second connection in accordance with an
action selected by the called party from the web page,” as recited in claim 2
and similarly recited in claims 11 and 20. Appeal Br. 13–14. The Examiner
finds that the combination of Kobayashi, Pulhug, and Gallant teaches: (1)
during a call, a user can transfer files and the call may continue while the file
is being transferred; (2) after establishing a voice connection between a
caller device and a called device, data other than voice is transmitted to a
device used by a called party using a second established connection; and (3)
a request to establish the second connection is received in accordance with
an action (i.e., a pressing of a file transfer button) selected by the called
party. Final Act. 7–8; Ans. 12–13. The Examiner further finds that
LeVasseur teaches using a web browser and web pages to check the status of
a connection and establish the connection over an IP network. Id. We agree
with the Examiner’s findings. In response to Appellant’s arguments that
Kobayashi only teaches that a file transfer is performed on an initiative of a
calling party, we find Kobayashi further teaches that either the calling party
or the called party can initiate a file transfer. See Kobayashi ¶ 26. Thus, we
do not find Appellant’s arguments regarding claims 2, 11, and 20 persuasive.
Issue 5
Appellant contends that none of the cited references teaches or
suggests “wherein the web page is downloaded from a web server of a
service node in response to activation of a URL (universal resource locator)
uniquely associated with the called party,” as recited in claim 4 and similarly
recited in claim 13. Appeal Br. 14–15. The Examiner finds that LeVasseur
discloses: (1) dialed digits of a called party’s phone number are translated to
a search string from which a dynamically created web page that contains
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information associated with the called party is created; (2) a server uses the
translated search string to initiate a search engine’s discovery of websites
having content relevant to the called party; and, (3) this content is populated
into a web page, where the web page is downloaded to the calling party’s
device, and possibly to the called party’s device, while a connection is
established between the calling party’s device and the called party’s device.
Final Act. 8–9; Ans. 13–14. We agree with the Examiner’s findings, and,
thus, we do not find Appellant’s arguments regarding claims 4 and 13
persuasive.
Issue 6
Appellant contends that none of the cited references teaches or
suggests “wherein the web page displays status information indicating that a
call is established with the calling party,” as recited in claim 5 and similarly
recited in claim 14. Appeal Br. 15. The Examiner finds Kobayashi
discloses a display 203 that includes an LCD, and that the display displays a
current status of IP telephone 101, a file to be transmitted according to an
instruction from a user, and a file received. Final Act. 9; Ans. 14–15. The
Examiner further finds that LeVasseur discloses using a web browser and
webpages to check the status of a connection and establish a connection over
an IP network. Id. We agree with the Examiner’s findings, and, thus, we do
not find Appellant’s arguments regarding claims 5 and 14 persuasive.

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DECISION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C.
§ 103(a) 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
ACP