Ex Parte Tighe et al

Patent Trial and Appeal Board

Oct 30, 2013

10810512 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. TIGHE,
PAUL S. HAHN, RICHARD B. PLATT,
and ROWAN L. MCFARLAND
____________

Appeal 2011-003418
Application 10/810,5121
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Cisco Technology, Inc.
Appeal 2011-003418
Application 10/810,512

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-22, 24-26, and 33-39, which are
all the claims remaining in the application. Claim 23 is cancelled and claims
27-32 are withdrawn. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
The present invention relates generally to supporting enhanced media
communications. See Spec. 1:10.
Claim 1 is illustrative:
1. A method for supporting communications
comprising:
establishing a packet-based audio communication link
between a local telephony device and a remote telephony
device;
informing a local computing device coupled to the local
telephony device of the audio communication link;
receiving a message from the local computing device, the
message requesting identification of enhanced media
capabilities associated with a remote computing device coupled
to the remote telephony device;
tunneling the message in the audio communication link
to the remote telephony device;
receiving a tunneled response in the audio
communication link from the remote telephony device, the
response identifying the enhanced media capabilities associated
with the remote computing device; and
forwarding the response to the local computing device.

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Appellants appeal the following rejections:

R1. Claims 1-8, 10-17, 19, 20, 22, 24-26, and 33-39 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Bales (U.S. 5,574,724,
Nov. 12, 1996) and Schroderus (U.S. Patent Pub. 2003/0223381 A1, Dec. 4,
2003); and
R2. Claims 9, 18, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bales, Schroderus, and Bowman-Amuah (U.S.
6,434,568 B1, Aug. 13, 2002).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ANALYSIS
Claims 1-22, 24-26, and 33-39
Issue: Did the Examiner err in finding that the combination of Bales
and Schroderus teaches and/or suggests the configuration as set forth in the
claimed invention?
Appellants contend that “[b]ecause Bales only discloses two
communication terminals, it cannot disclose the various claimed
communications between devices (1)-(4) arranged in the manner recited in
Claim 1” (App. Br. 15). Appellants further contend that “the disclosed
configuration of the communication terminals in Bales renders the addition
of embedded signaling unnecessary. . . . Therefore, one having ordinary
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skill in the art would be motivated not to incorporate embedded signaling in
Bales” (id. at 17).
The Examiner found that Bales discloses the claimed configuration
because “Bales discloses a telephony device 106 in communication with a
remote telephony device 107 through multiple computing devices (101-104)
which are connected through communication links” (Ans. 12). The
Examiner further found that “Schroderus . . . discloses a method of
embedding signaling messages in real time data traffic. . . . [I]t would have
been obvious [to combine the teachings for] . . . the purpose of saving
network resources” (id. at 16 (citation omitted)). We agree with the
Examiner.
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Specifically, Bales discloses:
At a subsequent time, the users of communication
terminals 106 and 107 desire a video capability so that they can
exchange video images. Communication terminal 106 requests
that switch node 101 add video capability to the call. Switch
node 101 does this by transmitting TRANS 201 (transport)
message as illustrated in FIG. 2 to switch node 102. . . . If
switch node 102 can provide the video capability, it transmits
back TRANS ACK [transport acknowledge] 204 message . . . .
In addition, switch node 102 transmits TRANS 202 message of
FIG. 2 to switch node 103. . . . Assuming switch node 103 is
capable of providing the video capability . . . transmits TRANS
203 to switch node 104. If switch node 104 can provide the
video bandwidth and communication terminal 107 has video
capability, switch node 104 transmits to switch node 103
TRANS COM [transport complete] 207 message. This
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message is repeated back to switch node 101 via switch nodes
103 and 102.
(Col. 3, ll. 33-54).
In other words, as shown in Bales’ Figure 1, Bales discloses a local
telephony device and a remote telephony device (i.e., devices 106 and 107,
respectively) in communication with multiple computing devices (switch
units 101-104) which are connected via communication links. Messages
communicated in the system (i.e., TRANS) allow checking and adding of
video capability to a voice call (see Bales’ Fig. 2).
Contrary to Appellants’ contention in the Appeal Brief, Bales’ system
does not only include two communication terminals, but instead includes
communication terminals 106 and 107 in addition to switch nodes 101-104
with communication links there between. The Examiner has associated this
particular configuration with the claimed local/remote telephony devices and
local/remote computing devices (see Ans. 12), which we find persuasive.
Appellants also contend that “the computing devices cannot be
intermediary device in the audio communication link as the Examiner
appears to suggest” (Reply Br. 2). The Examiner’s statement of rejection for
the claims in the Answer appears to be substantially the same as, if not
identical to, the statement of the rejection in the Final Rejection. Appellants
thus could have presented this new argument in support of the claims in the
Appeal Brief, such that we would have had benefit of the Examiner’s
evaluation of the argument in the responsive Answer. Appellants do not
explain what good cause there might be to consider the new argument.
Appellants’ new argument is thus untimely. These belated arguments are,
therefore, technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474
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(BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”).
As for Appellants’ contention that “one having ordinary skill in the art
would be motivated not to incorporate embedded signaling in Bales” (App.
Br. 17), we find that the “combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007), especially if the combination would not be “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). Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted, emphasis added). This reasoning is applicable here.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Bales and Schroderus, the Examiner’s 35 U.S.C. § 103(a)
rejection of representative independent claim 1, as well as claims 2-22, 24-
26, and 33-39 not separately argued by Appellants, is sustained.
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DECISION
We affirm the Examiner’s § 103(a) rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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