Ex Parte Umehara et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613368588 (P.T.A.B. Dec. 30, 2016) 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. 13/368,588 02/08/2012 Naoki UMEHARA 394464US28 9295 22850 7590 01/04/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER GARCIA-CHING, KARINA J ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAOKIUMEHARA and TAKAHIRO ASAI Appeal 2015-001935 Application 13/368,588 Technology Center 2400 Before JEFFREY S. SMITH, JOHN R. KENNY, and SCOTT E. BAIN, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejections of claims 1—19, which constitute all the claims pending in this application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-001935 Application 13/368,588 CLAIMED INVENTION The Specification relates to controlling connections amongst a plurality of transmission terminals. Spec. 12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A connection control system for controlling connections among a plurality of terminals through a network, the system comprising: a storage device to store identification information for identifying a terminal, and identification information for identifying one or more candidate terminals that are associated with the terminal, for each one of the plurality of terminals; a network interface to receive a request for participating in a session being performed by a plurality of participating terminals, from a participation requesting terminal that is not participating in the session; and a controller to: extract identification information for identifying at least one candidate terminal that is associated with the participating terminal for each one of the plurality of participating terminals, from the storage device, to obtain extracted candidate terminal identification information of the participating terminals; determine whether the extracted candidate terminal identification information of the participating terminals includes identification information for identifying the participation requesting terminal to generate a first determination result; and determine whether to allow the participation requesting terminal to connect with the plurality of participating 2 Appeal 2015-001935 Application 13/368,588 terminals through the network to participate in the session, based on the first determination result. REFERENCES US 2006/0246934 A1 Nov. 2, 2006 US 8,412,660 B2 Apr. 2,2013 EP2 267 680A1 Dec. 29, 2010 REJECTIONS Claims 1, 5—8, 10, and 11 stand provisionally rejected on the grounds of non-statutory double patenting over claims 2, 3, 7, 9—13, and 26—27 of U.S. Serial No. 13/974,8673 Final Act. 2. Claims 8—10 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 16. Claims 1, 8, 11, 18, and 19 stand rejected under 35 U.S.C. § 102(b), as anticipated by Patel. Final Act. 18. Claims 2—7, 9—10, and 12—17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Patel, Yanagisawa, and Brezmes. Final Act. 26. Patel Yanagisawa Brezmes ANALYSIS Non-Statutory Obviousness-Type Double-Patenting Rejection Appellants do not substantively address the Examiner’s provisional rejection of claims 1, 5—8, 10, and 11 for obviousness-type double patenting. 1 This application issued as U.S. Patent No. 8,850,033. In the event of further prosecution, we leave it to the Examiner to determine whether, as a result of this issuance, the provisional rejection has ripened into a non provisional rejection. 3 Appeal 2015-001935 Application 13/368,588 App. Br. 4. Accordingly, we summarily sustain that provisional rejection. In re Wetterau, 356 F.2d 556, 558 (CCPA 1966); 37 C.F.R. § 41.31(a). Indefiniteness Rejection The Examiner concludes that claim 8 is indefinite because the Specification has not provided sufficient underlying structure for any of the three means elements recited by claim 8. Ans. 2-4. Appellants dispute this conclusion. App. Br. 5—7; Reply Br. 1—5. Means for Extracting Identification Information Appellants argue that the Specification sets forth an algorithm that, in conjunction with a computer, provides sufficient disclosed structure for the means for extracting identification information, recited by claim 8. App. Br. 5—6; Reply Br. 2-4. Appellants identify this algorithm on page three of their Reply Brief. We agree that the identified algorithm provides structure for the recited means for extracting identification information and that it, in combination with a computer, provides sufficient underlying structure for that means element. Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp., 841 F.3d 1334, 1345 (Fed. Cir. 2016). Means for Determining Appellants argue that the Specification also discloses sufficient underlying structure for the two means for determining elements recited in claim 8. App. Br. 6—7; Reply Br. 4—5. Appellants quote paragraphs from the Specification for support, but do not identify a disclosed algorithm supporting either of these means elements. App. Br. 6—7; Reply Br. 4—5. Instead, Appellants argue that the support in this Specification for these elements is similar to the support found to be adequate in Typhoon Touch 4 Appeal 2015-001935 Application 13/368,588 Technologies v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) and, therefore, the means for determining elements here should be deemed definite. App. Br. 6—7; Reply Br. 4—5. We are not persuaded by this argument. In Typhoon Touch, the patentee identified a four-step algorithm that the Federal Circuit held provided sufficient structure for the involved element. Typhoon Touch Tech., 659 F.3d at 1385. Here, Appellants do not identify any such algorithm. App. Br. 6—7; Reply Br. 4—5. Accordingly, we agree with the Examiner that the Specification does not disclose sufficient underlying structure for the two means for determining elements of claim 8, and we sustain the indefmiteness rejection of claim 8 and of its dependent claims 9 and 10. Ans. 4. Anticipation Rejection Claim 11 Appellants argue that Patel fails to disclose several limitations of claim 11 because Patel does not associate candidate terminals with another terminal. App. Br. 8—10; Reply Br. 6—9. In particular, Appellants argue that Patel discloses “candidate terminals associated with [a] group call,” not “candidate terminals associated with [a] terminal.” App. Br. 9. We disagree. As the Examiner sets forth, Patel discloses that participating terminal 114 identifies target communication units (candidate terminals) by forwarding an identifier. Ans. 5—6, citing Patel Tflf 8, 31, and 35. This identifier associates the candidate terminals with the participating terminal. Id. Appellants argue that the identifier merely identifies the candidate terminals that are associated with a group call that the participating terminal is starting. Id. Such association, however, is still an association between 5 Appeal 2015-001935 Application 13/368,588 the candidate terminals and the participating terminal. Accordingly, we sustain the anticipation rejection of claim 11. Claims 1 and 8 For claim 1, Appellants argue that Patel does not disclose storing “identification information for identifying one or more candidate terminals that associated with the terminal,” because Patel stores the identities of the participants (and hence candidate terminals) of its group call. App. Br. 11. This argument is premised on the contention that the association of the candidate and participating terminals for the group call is not an association of those terminals—a premise which, as discussed above, we do not accept. Accordingly, we sustain the anticipation rejection of claim 1. For claim 8, Appellants present the same arguments as for claim 11. Id. Accordingly, we sustain the anticipation rejection of claim 8. Claims 18 and 19 Appellants do not separately argue claims 18 and 19. App. Br. 8—11. Accordingly, we sustain the anticipation rejection of these claims. Obviousness Rejection Appellants argue that Patel and Yanagisawa do not teach or suggest “specifying one of the plurality of terminals having a largest value of distance of a shortest path,” as recited in claims 2, 9, and 12. App. Br. 12— 13; Reply Br. 9—10. In particular, Appellants argue that Figure 1 of Yanagisawa, cited by Examiner, merely presents a table specifying all values for the distance of shortest paths between points, and does not specify which points have the largest value of shortest distance between them. App. Br. 12—13; Reply Br. 9—10. (The Examiner relies on Patel for teaching the 6 Appeal 2015-001935 Application 13/368,588 recited terminals. Ans. 8). By presenting its distance values, however, Yanagisawa’s table does specify which points have the largest value of distance of the shortest path between them. Ans. 8, citing Yanagisawa, Fig. 1, 3:17—26. In particular, the table specifies that points A and D have the largest value of distance because their value (5) exceeds the values for all other combination of nodes. Id. Accordingly, we sustain the obviousness rejection of claims 2, 9, and 12 and of claims 3—7, 10, and 13—17, not separately argued. App. Br. 12—13. Except as otherwise noted above, we adopt the Examiner’s findings and rationales set forth in the Final Action and the Answer for all rejections of all claims and the provisional obviousness-type double patenting rejection. DECISION We affirm all of the Examiner’s rejections of claims 1—19. 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 7 Copy with citationCopy as parenthetical citation