Ex Parte SylvainDownload PDFPatent Trial and Appeal BoardSep 21, 201511960317 (P.T.A.B. Sep. 21, 2015) Copy Citation 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. 11/960,317 12/19/2007 Dany Sylvain NOR-143 (18562ROUS01U) 4277 131442 7590 09/22/2015 RPX Clearinghouse, LLC One Market Plaza, Steuart Tower Suite 800 San Francisco, CA 94105 EXAMINER FABBRI, ANTHONY E ART UNIT PAPER NUMBER 2453 MAIL DATE DELIVERY MODE 09/22/2015 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 2013-004015 Application 11/960,317 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-004015 Application 11/960,317 2 STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Exemplary Claims Appellant’s disclosed invention relates to the establishment of a multimedia communication session between a non-SIP (session initiation protocol)-enabled computing device and a SIP-enabled computing device (claim 1; Figs. 1, 2; Abstract; Spec. ¶¶ 1–6, 22–34). Exemplary independent claim 1 and dependent claim 3 under appeal, with emphases added to the disputed portions of the claims, read as follows: 1. A method for establishing a communication session between a non-SIP (session initiation protocol)-enabled computing device and a SIP-enabled communication device, the method comprising: establishing a browser-based connection with a non-SIP (session initiation protocol)-enabled computing device over a first network; establishing a SIP-based connection with a SIP-enabled communication device over a second network; and establishing the transfer of media between the non-SIP- enabled computing device and the SIP-enabled communication device using the browser-based and the SIP-based connections to establish a multimedia communication session. 3. The method of claim 2, wherein the transfer of media occurs before establishment of the voice connection. Appeal 2013-004015 Application 11/960,317 3 Examiner’s Rejections (1) The Examiner rejected claims 1, 9, 17, and 21 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Nakazawa et al. (US 2005/0044188 A1; published Feb. 24, 2005) and Girard (US 2007/0110043 A1; published May 17, 2007). Final Act. 3–9; Ans. 4–7. (2) The Examiner rejected claims 7, 8, 15, 16, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Nakazawa, Girard, and Weber et al. (US 6,480,901 B1; issued Nov. 12, 2002). Final Act. 9–11; Ans. 7. (3) The Examiner rejected claims 2–5, 10–13, and 18 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Nakazawa, Girard, Weber, and Hariri et al. (US 7,092,498 B2; issued Aug. 15, 2006). Final Act. 11–15; Ans. 8–9. (4) The Examiner rejected claims 6 and 14 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Nakazawa, Girard, and Hariri. Final Act. 15–16; Ans. 9. Issues on Appeal1 Based on Appellant’s arguments in the Appeal Brief (App. Br. 7–18) and the Reply Brief (Reply Br. 2–9), the following issues are presented on appeal: 1 Appellant presents arguments for independent claim 1, and relies on those arguments as to remaining independent claims 9, 17, and 21 which contain similar features relating to establishing a multimedia communication session between SIP and non-SIP devices. We select claim 1 as representative of the group of claims (claims 1, 9, 17, and 21) rejected over Nakazawa and Girard. Appeal 2013-004015 Application 11/960,317 4 (1) Did the Examiner err in rejecting claims 1, 6, 9, 14, 17, and 21 as being obvious because the base combination of Nakazawa and Girard fails to teach or suggest the multimedia communication session, as recited in representative independent claim 1? (2) Did the Examiner err in rejecting claims 7, 8, 15, 16, 19, and 20 as being obvious because the combination of Nakazawa, Girard, and Weber fails to teach or suggest the disputed SIP limitations of these claims? (3) Did the Examiner err in rejecting claims 2, 5, 10, 13, and 18 as being obvious because the combination of Nakazawa, Girard, and Weber fails to teach or suggest that a call destination device is an SIP-enabled communication device as recited in claims 2, 10, and 18? (4) Did the Examiner err in rejecting claims 3 and 11 as being obvious because the combination of Nakazawa, Girard, and Weber fails to teach or suggest that transfer of media occurs before termination of the voice connection as recited? (5) Did the Examiner err in rejecting claims 4 and 12 as being obvious because the combination of Nakazawa, Girard, and Weber fails to teach or suggest that that transfer of media occurs after termination of the voice connection as recited? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 3–16) in light of Appellant’s contentions in the Appeal Brief (App. Br. 7–18) and the Reply Brief (Reply Br. 2–9) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (see Ans. 4–9). We disagree with Appellant’s conclusions as to the obviousness of Appeal 2013-004015 Application 11/960,317 5 claims 1, 2, 4–10, and 12–21; and we agree with Appellant’s conclusions as to claims 3 and 11. With regard to representative independent claim 1 and dependent claims 2, 4–8, 10, 12–16, and 18–20, we concur with the conclusions reached by the Examiner, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3–16), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellant’s Appeal Brief (Ans. 5–9). We highlight and amplify certain teachings and suggestions of the references, as well as certain ones of Appellant’s arguments as follows. We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references) (citation omitted). Claims 1, 6, 9, 14, 17, and 21 With regard to claim 1, the Examiner has provided a factual basis and articulated reasoning with a rational underpinning to support the conclusion of obviousness with regard to claim 1 (see Final Act. 3–5; Ans. 5). See KSR, 550 U.S. at 418. We agree with the Examiner (Final Act. 4–5) that it would have been obvious to modify Nakazawa’s translator node with the multimedia switching system of Girard to (i) create a system to translate multimedia between SIP and non-SIP networks, and (ii) make it convenient to have any node of the network connect to any other node of the network even when no common language is shared amongst nodes. In this light, we cannot agree with Appellant’s assertion (App. Br. 7–9) that there is no Appeal 2013-004015 Application 11/960,317 6 motivation combine Nakazawa and Girard, and the combination is not capable of producing the recited invention. Appellant’s arguments that Nakazawa and Girard do not individually teach or suggest establishing a multimedia communication session as recited in claim 1 are not persuasive in light of our agreement with the Examiner (Final Act. 4; Ans. 5) that Girard teaches this feature at least in paragraphs 126, 149, and 194. Accordingly, we sustain the Examiner’s rejection of representative independent claim 1, as well as claims 9, 17, and 21 grouped therewith. For similar reasons, we also sustain the Examiner’s rejection of claims 6 and 14, which depend from respective ones of claims 1 and 9. Claims 7, 8, 15, 16, 19, and 20 Appellant makes arguments with regard to claims 7, 8, 15, 16, 19, and 20 (App. Br. 10–12) concerning the individual shortcomings in the teachings of the applied reference to Weber. These arguments, however, are not convincing of the non-obviousness of the claimed invention set forth in claims 7, 8, 15, 16, 19, and 20, because Nakazawa, and not Weber, is not relied upon by the Examiner for a teaching of SIP. Merck & Co., 800 F.2d at 1097 (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). Accordingly, we sustain the Examiner’s rejection of claims 7, 8, 15, 16, 19, and 20 over the combination of Nakazawa, Girard, and Weber. Claims 2, 4, 5, 10, 12, 13, and 18 Appellant makes arguments with regard to (i) claims 2, 5, 10, 13, and 18 (App. Br. 13–14), and (ii) claims 4 and 12 (App. Br. 15–16) concerning Appeal 2013-004015 Application 11/960,317 7 the individual shortcomings in the teachings of the applied reference to Hariri. These arguments, however, are not convincing of the non- obviousness of the claimed invention set forth in claims 2, 4, 5, 10, 12, and 13 because Nakazawa, and not Weber, is not relied upon by the Examiner for a teaching of SIP. Merck & Co., 800 F.2d at 1097 (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). Appellant’s contention (App. Br. 13–14) as to claims 2, 10, and 18, that Hariri fails to teach or suggest a call destination device is an SIP- enabled communication device, is unpersuasive since Nakazawa (¶¶ 4, 9; Ans. 3–4) is relied upon for a SIP-based connection with a SIP-enabled communication device. Appellant has not shown that the combination of references, in this case Nakazawa, Girard, Weber, and Hariri fails to teach or suggest the method recited in claims 2, 10, and 18, including a call destination device that is a SIP-enabled communication device. In view of the foregoing, we sustain the rejection of claims 2, 10, and 18, as well as claims 5 and 13 which depend therefrom, over the combination of Nakazawa, Girard, Weber, and Hariri. With regard to claims 4 and 12, Appellant’s contention (App. Br. 15– 16) that Hariri fails to teach or suggest transfer of media after establishing a voice connection as recited in the claims is not persuasive. Hariri specifically discloses transfer of media during and/or after establishing a voice connection (col. 5, l. 64 to col. 6, l. 13; col. 7, ll. 39–51; col. 8, ll. 43– 49; Fig. 3). Accordingly, we sustain the Examiner’s rejection of claims 4 and 12 over the combination of Nakazawa, Girard, Weber, and Hariri. Appeal 2013-004015 Application 11/960,317 8 Claims 3 and 11 With regard to representative claims 3 and 11, Appellant’s contention (App. Br. 14–15) that Hariri fails to teach or suggest transfer of media before establishing a voice connection as recited in the claims is persuasive. Hariri only discloses transfer of media during and/or after establishing a voice connection (col. 5, l. 64 to col. 6, l. 13; col. 7, ll. 39–51; Fig. 3). Accordingly, we do not sustain the Examiner’s rejection of claims 3 and 11 over the combination of Nakazawa, Girard, Weber, and Hariri. CONCLUSIONS (1) The Examiner did not err in determining that the base combination of Nakazawa and Girard teaches or suggests the methods, service node, communication network driver alert system for establishing a multimedia communication session between SIP and non-SIP enabled communication devices as recited in claims 1, 6, 9, 14, 17, and 21. (2) The Examiner did not err in determining that the combination of Nakazawa, Girard, and Weber teaches or suggests the disputed SIP limitations of claims 7, 8, 15, 16, 19, and 20. (3) The Examiner did not err in rejecting claims 2, 5, 10, 13, and 18 as being obvious because the combination of Nakazawa, Girard, and Weber teaches or suggests that a call destination device is an SIP-enabled communication device as recited in claims 2, 10, and 18? (4) The Examiner erred in rejecting claims 3 and 11 as being obvious because the combination of Nakazawa, Girard, and Weber fails to teach or suggest that transfer of media occurs before termination of the voice connection as recited. Appeal 2013-004015 Application 11/960,317 9 (5) The Examiner did not err in rejecting claims 4 and 12 as being obvious because the combination of Nakazawa, Girard, and Weber teaches or suggests that that transfer of media occurs after termination of the voice connection as recited. DECISION The Examiner’s rejections of claims 1, 2, 4–10, and 12–21 under 35 U.S.C. § 103(a) are affirmed. The Examiner’s rejection of claims 3 and 11 is reversed. 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-IN-PART ACP Copy with citationCopy as parenthetical citation