Ex Parte Terrill et al

Patent Trial and Appeal Board

Aug 31, 2016

11814333 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111814,333 08/09/2007
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
09/02/2016
FIRST NAMED INVENTOR
Stephen Terrill
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P20431-US1 3540
EXAMINER
MOHAMMED, ASSAD
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN TERRILL, AKE BUSIN, and
MAGNUS OLSSON 1
Appeal2015-002992
Application 11/814,333
Technology Center 2600
Before JEFFREYS. SMITH, AMBER L. HAGY, and SHARON PENICK,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-35. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in
interest. (App. Br. 1.)
Appeal2015-002992
Application 11/814,333
Introduction
According to Appellants, "[ t ]he present invention relates generally to
a method and apparatus for handling emergency calls in a multimedia
service network. In particular, the invention is concerned with obtaining
required location information for a calling subscriber." (Spec. 1 :4--8.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A method, of obtaining location information for a
subscriber terminal currently connected to an Internet Protocol
(IP) access network at a certain point of access, the method
executed in a session managing node of a multimedia service
network and comprising:
receiving, by the session managing node, a request from
said subscriber terminal containing an Internet Protocol (IP)
address currently assigned to the subscriber terminal when
connected to said point of access,
sending, by the session managing node, a location query
for the subscriber terminal including said IP address to the IP
access network, and
receiving, by the session managing node, location
information for said point of access of the subscriber terminal in
response to the location query, thereby enabling supply of the
received location information to an emergency centre in
connection with an emergency call from said subscriber
terminal, wherein the location information comprises a physical
location for said point of access.
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Application 11/814,333
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Knox
Herrero et al.
Truesdale et al.
Poikselka et al.
Cacioppo et al.
Tonogai et al.
US 2004/0190497 Al
US 2005/0009520 Al
US 2005/0169248 Al
US 2005/0233727 Al
US 7,133,498 B2
US 7,945,036 Bl
REJECTIONS
Sept. 30, 2004
Jan. 13,2005
Aug.4,2005
Oct. 20, 2005
Nov. 7, 2006
May 17, 2011
(filed April 7, 2003)
Claims 1-3, 8-11, 16-21, 23-27, 31, and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Knox, Cacioppo, and Truesdale.
(Final Act. 3-18.)
Claims 4--7, 12-15, 22, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Knox, Cacioppo, Truesdale, and
Herrero. (Final Act. 18-20.)
Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knox, Cacioppo, Truesdale, and Tonogai. (Final Act. 20-
21.)
Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knox, Cacioppo, Truesdale, Herrero, and Poikselka.
(Final Act. 21-22.)
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Application 11/814,333
ISSUES
(1) Whether the Examiner erred in finding the combination of
Knox, Cacioppo, and Truesdale teaches or suggests
receiving, by the session managing node, location information
for said point of access of the subscriber terminal in response to
the location query, thereby enabling supply of the received
location information to an emergency centre in connection with
an emergency call from said subscriber terminal, wherein the
location information comprises a physical location for said point
of access[,]
as recited in independent claim 1 and commensurately recited in
independent claims 9, 17, 23, 31, and 32.
(2) Whether the Examiner erred in finding the combination of
Knox, Cacioppo, and Truesdale teaches or suggests the limitations of
dependent claims 18, 19, and 21.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions 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 and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief. We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis. 2
2 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 11/814,333
A. Claims 1-3, 8-11, 16-21, 23-27, 31, and 32 3
The Examiner finds Knox teaches or suggests the limitations of claim
1, except the Examiner finds:
Knox does not expressly teach an IP address and receiving, by
the session managing node, location information for said point
of access of the subscriber in response to the location query,
thereby enabling supply of the received location information to
an emergency center in connection with an emergency call from
said subscriber, where the location information comprises a
physical location for said point of access.
(Final Act. 3--4 (emphasis added).) As to those limitations, the Examiner
additionally relies on Cacioppo as teaching an "IP addresses being used to
identify a caller terminal location based on communication address." (Final
Act. 4 (citing Cacioppo 2:60-3:3, 4:45-50).) The Examiner further relies on
Truesdale as teaching determining a physical location for a wireless access
point associated with an access device. (See Ans. 23-24 (citing Truesdale
Fig. 3 and i-fi-f 10, 15-17, 25, 28, 32, 34--35, 37-38, and 43); see also Final
Act. 5.)
Appellants focus on the Examiner's findings regarding the teachings
of Truesdale, arguing they are in error because:
Truesdale does not teach where the physical location of the
wireless access point 30 (corresponding to claimed point of
access of the subscriber terminal) is determined in response to a
location query which includes the IP address of the access device
12 (corresponding to the claimed subscriber terminal).
[Moreover], Truesdale does not teach where the physical
3 Appellants collectively argue the rejection of claims 1-3, 8-11, 16, 17, 20,
23, 26, 31, and 32 with regard to the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a). Therefore, based on Appellants' arguments, we decide
the appeal of claims 1-3, 8-11, 16, 17, 20, 23, 26, 31, and 32 based on claim
1 alone. See 37 C.F.R. § 41.37(c)(l)(iv).
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location of the wireless access point 30 (corresponding to
claimed point of access of the subscriber terminal) is supplied to
an emergency center in connection with an emergency call from
the access point 12 (corresponding to claimed subscriber
terminal). Instead, Truesdale teaches where the physical location
of the access device 12 (corresponding to claimed subscriber
terminal) is determined for purposes of an emergency call (see
paragraphs [0013]-[0016]).
(App. Br. 11.) In other words, according to Appellants, Truesdale teaches
only determining the location of an "access device" and does not teach or
suggest determining the location of a "point of access," as recited in claim 1.
(See App. Br. 9; see also Reply Br. 3.)
We disagree. As the Examiner finds, and we agree, the location
information of the access device "is based on the communication address
from the access point (wireless access points) in order to present location
information (triangulation information) to the operator in which the operator
could send emergency units [to] the caller's location." (Ans. 22-23
(emphasis added) (citing Truesdale Fig. 3 and ifif 10, 15-17, 25, 28, 32, 34--
35, 37-38, 43).) We further note Truesdale teaches:
emergency access may be provided to a user from any access
device on the data network 16. Examples of such access devices
may include a computer 56, a fax machine 58, a Personal Data
Assistant (PDA) 60, a pager 62, or a Programmable Logic
Controller (PLC) 64 (used to control devices in an industrial
network) or via wireless access point 30.
(Truesdale i-f 30 (emphases added).) Truesdale further teaches the location
data may be ''provided by different components of the network in several
locations on the network." (Truesdale i-f 28 (emphasis added).) In particular,
Truesdale teaches "the location data 24 may be provided by or stored on the
wireless access devices 12, on a wireless access point 30, on a network
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Application 11/814,333
element such as a router 26, on the PBX or call server 18, or on the gateway
28." (Id. (emphases added).) Appellants' challenge to the Examiner's
findings is premised on an incomplete reading of Truesdale, and is,
therefore, not persuasive of Examiner error.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Knox, Cacioppo, and Truesdale teaches or
suggests the limitations of claim 1. Accordingly, we sustain the Examiner's
35 U.S.C. § 103(a) rejection of independent claim 1, as well as claims 2, 3,
8-11, 16, 17, 20, 23, 26, 31, and 32, which are not argued separately.
B. Claims 18, 19, 21, 24, 25, and 27
Claim 18 depends from independent claim 17, and recites: "wherein a
location retrieval unit in the IP access network retrieves a point of access
identity, currently associated with the received IP address, from an Internet
Protocol (IP) address administrator in the IP access network." (App. Br. 20
(Claims App'x) (emphasis added).) Claim 19 depends from claim 18, and
recites: "wherein the location retrieval unit further retrieves said location
information based on the retrieved point of access identity, from a location
database in the IP access network." (Id. (emphasis added).) Appellants
characterize claims 18 and 19 as reciting:
the two step process . . . where an IP address of the claimed
subscriber terminal is first used to retrieve a point of access
identity (per claim 18-note claim 21 recites that the retrieved
point of access identity is a layer 2 address) and then where the
retrieved point of access identity (e.g., layer 2 address) is used
to retrieve location information of the claimed point of access
(per claim 19).
(App. Br. 14 (emphases added).) Claim 21 depends from claim 18, and
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recites "wherein the point of access identity is a layer 2 address." (App. Br.
21 (Claims App'x).)
The Examiner relies on the combination of Knox, Cacioppo, and
Truesdale as teaching or suggesting the limitations of claims 18, 19, and 21.
(Final Act. 8-11.) In particular, the Examiner finds "Cacioppo teaches [an]
IP address being used to identifj; a caller terminal location based on
communication address .... " (Final Act. 10 (citing Cacioppo 2: 60-3: 3,
4:45-50) (emphasis added); see also Ans. 24.) The Examiner further finds
"Truesdale further teaches providing the retrieved location information for
the subscriber to said session managing node in response to the received
location query, where the location information comprises a physical location
for said point of access." (Final Act. 10 (citing Truesdale i-fi-f 10, 15-16, 32,
34--35, 37-38, 43) (emphases added); see also Ans. 24.) The Examiner
further finds "Knox discloses wherein the location retrieval unit further
retrieves said location information based on the retrieved point of access
identity, from a location database in the IP access network." (Final Act. 11
(citing Knox i-fi-1 45--46).) The Examiner further finds "Knox discloses
wherein the point of access identity is a layer 2 address .... " (Final Act. 11
(citing Knox i-fi-1 45--46).)
In arguing against the Examiner's findings regarding claims 18, 19,
and 21, Appellants focus on alleged deficiencies in the individual teachings
of the cited references. (App. Br. 13-14.) As an initial matter, we note this
approach is inherently flawed because it fails to address the Examiner's
findings based on the combination of references. The test for obviousness is
not whether the claimed invention is expressly suggested in any one or all of
the references. "Rather, the test is what the combined teachings of the
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references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted) (emphasis
added). Thus, where, as here, the rejection is based upon the teachings of a
combination of references, "[ n ]on-obviousness cannot be established by
attacking references individually." In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In addition, a reference
"must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole." Id.
Appellants' arguments do not persuade us of Examiner error. In
arguing the references individually, Appellants argue the Examiner's
findings regarding Knox are deficient because:
Knox's paragraphs [0045]-[0046] do not disclose where an IP
address of any device let alone the claimed subscriber terminal
is first used to retrieve a point of access identity (per claim 18-
note claim 21 recites that the retrieved point of access identity is
a layer 2 address) and then where the retrieved point of access
identity (e.g., layer 2 address) is used to retrieve location
information for any device let alone the claimed point of access
(per claim 19).
(App. Br. 13-14.) Appellants also challenge the Examiner's findings
regarding Cacioppo, arguing "Cacioppo discloses where a database
associates a location with a communication address (e.g., IP address) of a
telecommunication device ... [but] Cacioppo does not disclose the two step
process associated with claims 18 and 19 .... " (App. Br. 14.) In other
words, Appellants argue the Examiner fails to find the prior art teaches or
suggests using an IP address of a device on the network to first "retrieve a
point of access identity" and then use the point of access identity to "retrieve
location information" for the device. (Reply Br. 5-6.)
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We disagree. Appellants' piecemeal arguments overlook the
Examiner's findings regarding the combined teachings of Knox, Cacioppo,
and Truesdale. As the Examiner finds, and we agree, Truesdale in particular
teaches or suggests associating a point of access with an access device and
with a physical location. (Ans. 24.) Appellants argue the Examiner's
findings regarding Truesdale are deficient because "Truesdale discloses
location information associated with the location of the access device
(claimed subscriber terminal)." (Reply Br. 5 (emphasis added).) This
argument appears to repeat Appellants' misreading of Truesdale, which we
have addressed supra in connection with claim 1. Truesdale is not, as
Appellants argue, limited to providing location information regarding an
access device, but also discloses providing location information regarding a
wireless access point. As the Examiner finds, and we agree, Truesdale
discloses the location data for the access device "may be provided by or
stored on the wireless access devices, on a wireless access point, etc .... , or
on the gateway." (Id. (citing Truesdale i-fi-125, 28, 32).) The Examiner
further finds the location information for the access device in Truesdale "is
based on the communication address from the access point (wireless access
points) in order to present location information (triangulation information) to
the operator in which the operator could send emergency units the caller's
location." (Ans. 24.)
To the extent Appellants argue the prior art does not expressly teach
or suggest the limitations of claims 18, 19, and 21, we note the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Rather, as the
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Supreme Court has explained, the skilled artisan would "be able to fit the
teachings of multiple patents together like pieces of a puzzle" because the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). Here, Appellants
have not demonstrated that the Examiner's proffered combination would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
To the contrary, as the Examiner's findings demonstrate, the ordinary
artisan would understand from the combined teachings of Knox, Cacioppo,
and Truesdale that a subscriber terminal (access device or caller instrument),
in an IP network, would be associated with an IP address, per Knox and
Cacioppo, and would further understand, per Truesdale, that the subscriber
terminal (access device) would be associated with a point of access, which
would, in tum, be associated with a physical location. (See Ans. 23-25.)
The ordinary artisan would further understand, given the IP address for the
subscriber terminal, the point of access could be retrieved and, in tum, the
physical location for the point of access could be retrieved from a database.
(See id.)
We, therefore, are not persuaded of error in the Examiner's finding
the limitations of claims 18 and 19 are taught or suggested by the combined
teachings of Knox, Cacioppo, and Truesdale.
With regard to claim 21, the Examiner finds Knox discloses "wherein
the point of access identity is a layer 2 address." (Final Act. 11 (citing Knox
i-fi-1 45--46).) Appellants have not persuaded us of error in this finding.
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For the foregoing reasons, we sustain the Examiner's 35 U.S.C.
§ 103(a)rejectionofclaims 18, 19, and21.
Appellants argue the rejection of claims 24, 25, and 27 collectively
with regard to the Examiner's rejection of claims 18, 19, and 21under35
U.S.C. § 103(a). (App. Br. 14.) Therefore, for the reasons stated regarding
claims 18, 19, and 21, we also sustain the rejection of claims 24, 25, and 27.
See 37 C.F.R. § 41.37(c)(l)(iv).
C. Claims 4-7, 12-15, 22, 28-30, and 33-35
Appellants have not presented separate substantive arguments with
respect to claims 4--7, 12-15, 22, 28-30, and 33-35, which stand rejected
under 35 U.S.C. § 103(a) over Knox, Cacioppo, Truesdale as presented for
claim 1, and also over one of Herrero, Tonogai, and Poikselka. (Final Act.
18-22.) Appellants' arguments with respect to these claims merely refer,
directly or indirectly, to the arguments presented for claim 1. (See App. Br.
14--16.) Without independent arguments, however, such contentions fail to
constitute a separate issue of patentability. See In re Lovin, 652 F.3d 1349,
1356 (Fed. Cir. 2011) ("We conclude that the Board has reasonably
interpreted Rule 41.37 to require applicants to articulate more substantive
arguments if they wish for individual claims to be treated separately.").
Accordingly, for the reasons stated for claim 1, we sustain the Examiner's
rejection of these claims under 35 U.S.C. § 103(a). See 37 C.F.R.
§ 41.37(c)(l)(iv).
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DECISION
For the above reasons, the Examiner's rejections of claims 1-35 are
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)(l )(iv).
AFFIRMED
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