Unify GmbH & Co. KGDownload PDFPatent Trials and Appeals BoardMar 30, 202014922379 - (D) (P.T.A.B. Mar. 30, 2020) 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. 14/922,379 10/26/2015 Heinrich Diebel 2005P12769US-932 7254 88087 7590 03/30/2020 Fritzsche Patent c/o Buchanan Ingersoll & Rooney PC (SEN) P. O. Box 1404 Alexandria, VA 22313-1404 EXAMINER PHUNG, LUAT ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEINRICH DIEBEL Appeal 2018-005125 Application 14/922,379 Technology Center 2400 Before BRADLEY W. BAUMEISTER, LINZY T. McCARTNEY, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 15–34. An oral hearing was held on February 12, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to applicant as defined in 37 C.F.R. § 1.42(a). According to Appellant, “The real party in interest is Unify GmbH & Co. KG, which is an affiliate of Atos SE.” Appeal Br. 1. Appeal 2018-005125 Application 14/922,379 2 CLAIMED SUBJECT MATTER The claims relate to establishing a connection from a circuit-switched network to a packet-switched network. Spec. ¶ 2. For example, if a caller dials a number from a pulse-dialing telephone, the invention detects the dialed digits and compares them to authorized call numbers. Id. ¶ 27. The comparison can be made on a string of digits that are not yet fully dialed. Id. ¶ 28. The invention then converts the called number to an IP address. Id. ¶ 29. According to the Specification, the invention eliminates wait times for known call numbers when establishing a connection between circuit- switched and packet-switched networks. Id. ¶ 31. Claims 15, 23, and 29 are independent. Claim 29 is reproduced below. 29. A method for recognizing selected digits of a call number comprising: an exchange device storing a plurality of call numbers, each of the stored call numbers having a complete number of digits; the exchange device receiving a string of digits having a number of digits that is less than the complete number of digits of each of the plurality of stored call numbers; the exchange device continuously comparing the received string of digits having the number of digits that is less than the complete number of digits to the plurality of stored call numbers to identify a desired call number of the plurality of stored call numbers that corresponds to the received string of digits before a complete number of digits for the desired call number is received; and the exchange device sending an inquiry to a server to learn what IP address corresponds to the desired call number identified from the continuously comparing of the received string of digits as soon as the desired call number is identified from the continuous comparing of the received string of digits to the plurality of stored call numbers; and Appeal 2018-005125 Application 14/922,379 3 the exchange device converting the desired call number into an IP address based on a response to the inquiry received from the server. Appeal Br. 39. REFERENCES The Examiner relies on the following references. Name Reference Date Theis US 5,917,904 June 29, 1999 Chen US 2002/0186686 A1 Dec. 12, 2002 Awada et al. US 2004/0052355 A1 Mar. 18, 2004 Ambrose US 2006/0002536 A1 Jan. 5, 2006 Sun et al. US 2007/0010264 A1 Jan. 11, 2007 Cisco Systems Inc., Dial Peer Configuration for Cisco Voice Gateway Routers, i-xii, 1–56, A1–A10, IN-1–IN-2 (2003), http://www.cisco.com/ univercd/cc/td/doc/product/software/ios123/123cgcr/vvfax_c/inct_c/ dpeer_c/dialpeer.pdf (“Cisco”) REJECTIONS The Examiner rejects claims 15, 16, 23, 28, 29, and 34 under 35 U.S.C. § 103 as unpatentable over Chen, Awada, and Sun. Final 3–10. The Examiner rejects claims 17, 22, 24, 27, 32, and 33 under 35 U.S.C. § 103 as unpatentable over Chen, Awada, and Cisco. Final 10–11. The Examiner rejects claims 18–21, 25, 26, and 30 under 35 U.S.C. § 103 as unpatentable over Chen, Awada, Sun, and Theis. Final 11–12. The Examiner rejects claim 31 under 35 U.S.C. § 103 as unpatentable over Chen, Awada, Sun, and Ambrose. Final 12–13. Appeal 2018-005125 Application 14/922,379 4 OPINION Obviousness Rejection of Claim 29 over Chen, Awada, and Sun I Claim 29 recites, in part, the exchange device receiving a string of digits having a number of digits that is less than the complete number of digits of each of the plurality of stored call numbers; the exchange device continuously comparing the received string of digits having the number of digits that is less than the complete number of digits to the plurality of stored call numbers to identify a desired call number of the plurality of stored call numbers that corresponds to the received string of digits before a complete number of digits for the desired call number is received. Appeal Br. 39. The Examiner finds that Chen teaches an exchange device that compares a detected string of digits with stored authorized-subscriber numbers. Final 6–9. According to the Examiner, Chen’s device does not continuously compare strings that are not yet fully dialed subscriber numbers. Id. at 8–9. For this limitation, the Examiner cites Awada. Id. In particular, the Examiner finds that Awada improves telephone-number matching by comparing incomplete subscriber numbers to stored numbers. Id. The Examiner proposes improving the matching in Chen’s exchange device by incorporating Awada’s method. Id. Appellant argues that Awada discloses a telephone, not an exchange device, that compares numbers. Appeal Br. 14–15; see also Reply Br. 5–6 (discussing Awada’s telephone). This argument is unpersuasive because the Examiner does not rely on Awada to teach the exchange device. Final 4–5. Here, the Examiner Appeal 2018-005125 Application 14/922,379 5 proposes using Awada’s method to match telephone numbers in Chen’s exchange device. Id. Appellant does not argue, for instance, that Chen’s exchange device would be unable to compare numbers in the same way as Awada’s telephone. See Appeal Br. 14–15. Rather, Appellant essentially argues that Awada lacks a feature that Chen teaches. See id. Because the Examiner’s rejection is based on a combination of Chen and Awada, Appellant’s argument against Awada alone is unpersuasive. See Appeal Br. 14–15; Reply Br. 5–6. Appellant also argues that the rejection lacks a rational underpinning for modifying Chen with Awada. Appeal. Br. 20–21, 23; see also Reply Br. 7–8. According to Appellant, Awada does not teach or suggest an exchange device that routes calls or converts partly entered phone numbers. Appeal Br. 20. In Appellant’s view, “An exchange device is at a different level in the organization of a telecommunications network and is not directly interacted with by a user to make a call.” Id. We find this argument unpersuasive. Appeal 2018-005125 Application 14/922,379 6 In particular, Chen teaches the different organizational levels that Appellant refers to. Id. To illustrate this point, we reproduce Chen’s Figure 1 below. Figure 1, above, shows a schematic view of voice-packet communication devices (1, 1), PSTN2 (70), digital network (80), NAT3 (60), and telephones (41, 42). Id., Fig. 1. Telephone 41 is connected to device 1. Id. ¶ 22. After the user dials a phone number, telephone 41 sends the dialed number to device 1. Id. ¶ 29. Devices 1 and 1 are non-server type devices that communicate the voice packets. Id. ¶ 23. The Examiner finds that devices 1 and 1are exchange devices. Final 3. Like the claimed exchange device, Chen’s exchange device matches strings of digits with numbers in a table. Id. at 7–8 (citing Chen Figs. 2–4, ¶¶ 27, 30). To accomplish this, Chen stores IP-address data 903 and 2 PSTN stands for Public Switched Telephone Network. Chen ¶ 22. 3 NAT stands for Network Address Translator. Chen ¶ 13. Appeal 2018-005125 Application 14/922,379 7 telephone numbers 901 in an IP-address record table 505. Chen ¶ 30. Chen’s Figure 3, below, shows table 505. Id. Figure 3, above, shows IP-address record table 505 with rows of IP-address data 903 and the corresponding telephone numbers 901. Id. When Chen’s device 1 receives the user-entered telephone number, it checks IP-address record table 505. Id. Device 1 compares user-dialed numbers with the telephone numbers stored in table 505. Id. A voice-transmission channel is then established to transmit voice packets 904. Id. In the rejection, the Examiner concludes that combining Chen’s system with Awada’s techniques would have predictably used prior-art elements according to their established functions. Final 6–9. We agree. In this combination, Chen’s devices 1 and 1carry out their established function of comparing numbers. Id. Likewise, Awada’s method performs the same function: comparing digits to telephone numbers. See id. Specifically, Awada teaches a method for comparing manually dialed phone numbers to pre-stored numbers. See, e.g., Awada ¶¶ 27–32, cited in Final. 5. Like Chen, Awada stores telephone numbers. Id. ¶ 25. With each digit entered, Awada’s invention continuously checks the stored list of Appeal 2018-005125 Application 14/922,379 8 numbers for a match. See id. ¶¶ 23, 27. And the predictable result of Awada’s method is a matched number. Final 8–9. The Examiner also concludes that using Awada’s matching in Chen’s exchange device would save time. See id. We agree. For instance, Awada’s search produces a result without the need to match all the digits of the called number. On this record, the Examiner has adequately supported the obviousness combination with articulated reasoning with rational underpinning. Thus, we are unpersuaded by Appellant’s argument that the rejection lacks such reasoning. See Appeal. Br. 20–21, 23; see also Reply Br. 7–8. II Appellant presents several unpersuasive arguments that are based on substituting Chen’s telephone 41 with Awada’s telephone—a modification not proposed by the Examiner. See Appeal Br. 15–17, 22–23. Specifically, Appellant argues that Awada’s telephone does not send an incomplete phone number to an exchange device, as recited in the claim, because the telephone uses the full number to initiate a call. Id. at 15; see also id. at 23. In Appellant’s view, a person of ordinary skill in that art only would have used Awada’s method to transmit the full number from Chen’s telephone 41 to Chen’s device 1. Id. at 16–17; see also id. at 22 (citing Chen ¶¶ 29–31, 38; Awada ¶ 23). Appellant argues that both references teach a telephone that transmits a full and complete number. Id. at 23. Also, Appellant argues that Awada does not teach an exchange device that converts the desired number as soon as it is identified. Id. at 17. According to Appellant, Awada’s user must press dial button 200 to initiate a call. Id.; see also id. at 23 (citing Awada ¶ 23, Figs. 4, 6). Appellant argues that eliminating user involvement indicates non-obviousness. Id. at 19. In Appeal 2018-005125 Application 14/922,379 9 Appellant’s view, Awada only suggests modifying Chen’s telephone 41, which would not result in an exchange device that anticipates a user’s desired call number. Id. at 18. These arguments are unpersuasive because the Examiner does not propose substituting one telephone for another. Rather, the Examiner proposes improving the number comparison in Chen’s exchange device with Awada’s method of comparing numbers. Final 8–9. That is, under the Examiner’s rationale, Chen’s device 1 matches numbers. Id. So Appellant’s arguments about what Awada’s telephone must transmit under Appellant’s hypothetical combinations do not squarely address the rejection. III Appellant argues that Awada teaches a solution to a problem of identifying a phone number. Appeal Br. 22. According to Appellant, the Examiner’s rationale for combining Chen and Awada is improper because Awada’s solution does not require any modification to Chen’s exchange device. Id. Appellant argues that Awada teaches that the telephone itself identifies the desired call number from the user’s input and then provides the full number. Id. at 21 (citing Awada ¶¶ 23–33, Figs. 4–6). In Appellant’s view, one of ordinary skill in the art would have applied Awada’s auto- complete feature to Chen’s telephone, not an exchange device, as recited. Id.; see also Reply Br. 5. To be sure, in one embodiment, Awada’s telephone can perform the lookup. See Awada ¶ 27. But Awada’s matching method does not require special processing that can only be performed on a phone. In fact, Awada states, “If a user has a telephone that does not incorporate the auto-complete feature, the user may subscribe to the telephone service that provides the feature.” Id. ¶ 33, cited in Appeal Br. 21. In that case, Awada’s service Appeal 2018-005125 Application 14/922,379 10 provider stores previously called numbers. Id. “When the user is entering digits of a number previously called, the service provider may detect the digits entered and provide numbers in a numerical order to the user.” Id. (emphasis added). Thus, the paragraphs of Awada that Appellant cite show that Awada’s method need not be performed by a telephone. Id. ¶ 33, Fig. 6, cited in Appeal Br. 21. IV According to Appellant, Awada and Chen actually teach away from an exchange device that converts before the user enters a full number. Appeal Br. 17–19; see also Appeal Br. 20–21 (citing Awada ¶ 23). Appellant argues that Awada does not convert as soon as the desired call number is identified and before a full number is received. Id. at 17. Appellant argues that the exchange device in these references only acts after a telephone provides a full phone number, none act on an incomplete number. Id. at 17–18, id. at 23. Appellant’s teaching-away argument is also based on substituting Chen’s telephone 41 with Awada’s telephone. Yet this is not the Examiner’s proposed combination. Instead, as discussed above, the Examiner’s combination is based on Chen’s exchange device acting on an incomplete number. Final 8–9. In particular, the Examiner proposes using Awada’s matching of an incomplete number on Chen’s device. Id. So under this rationale, Chen’s exchange device is separate from—but communicates with—the telephone. See, e.g., Chen, Fig. 1. And Awada’s method need not be performed by a telephone. See Awada ¶ 33, cited in Appeal Br. 21. Rather, Awada teaches that the method can be performed elsewhere. See id. (discussing a service provider that performs the matching). Appeal 2018-005125 Application 14/922,379 11 A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Yet “even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.” Polaris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (citing Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc)). Here, Appellant has not shown that Awada or Chen criticizes, discredits, or otherwise discourages investigation into the claimed invention. See Appeal Br. 17–19; see also Appeal Br. 20–21. Thus, we find Appellant’s teaching-away argument unpersuasive. V Appellant argues that the Examiner’s proposed modification would be contrary to the principle of operation of Awada and Chen. Id. at 19; see also id. at 20. In Appellant’s view, it would be contrary to Awada’s principle of operation to require an exchange device not to consult with a user before (1) identifying a full number and (2) converting the number into an IP address as soon as the number is identified. Id. at 19. Appellant’s arguments here are based on substituting Chen’s telephone 41 with Awada’s telephone, which is not the basis for the Examiner’s obviousness rationale. And we also note that “the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Because the Examiner does not propose simply substituting one phone with another, Appellant’s arguments here Appeal 2018-005125 Application 14/922,379 12 (Appeal Br. 19–20) do not squarely address the Examiner’s obviousness rationale. On this record, we are unpersuaded that the Examiner erred in rejecting claim 29. Thus, we sustain the rejection. Obviousness Rejection of Claim 34 over Chen, Awada, and Sun Claim 34 recites, The method of claim 29, wherein the exchange device sending the inquiry to the server to learn what IP address corresponds to the desired call number occurs as soon as the desired call number is identified and prior to the complete number of digits of the desired call number being entered. Appeal Br. 40 (emphasis added). According to the Examiner, claim 34 would have been obvious over the Chen-Awada-Sun combination. Final 9–10. The Examiner finds that Awada teaches the number identification, Sun teaches a server, and Chen teaches the exchange device. Id. at 9. Appellant argues that Awada’s auto-complete feature displays a number or name on LCD 205, and the user only has to “depress dial button 200 to complete dialing the number.” Appeal Br. 24 (quoting Awada ¶ 23). According to Appellant, Awada’s “telephone provides a full call number for initiation of a call by use of the auto-complete feature of the telephone.” Id. In Appellant’s view, “The exchange device is not attempting to anticipate what a call number may be based on any partial phone number entry.” Id. Appellant argues that Chen operates in the same way. Id. Like the arguments about claim 29, these arguments are unpersuasive because they attack the references individually instead of addressing the Examiner’s proposed combination. Here, the Examiner proposes improving Appeal 2018-005125 Application 14/922,379 13 the number comparison in Chen’s exchange device with Awada’s method of comparing numbers. Final 9–10. So Appellant’s arguments about what Awada’s telephone must transmit under Appellant’s hypothetical combinations do not squarely address the rejection. Appellant further argues that the Examiner has not provided a rational underpinning for modifying Chen with Awada. Appeal Br. 25. Appellant argues that the Examiner’s rationale about saving time is conclusory. Id. We disagree, as discussed above with respect to claim 29, because Awada’s search for a match may conclude without matching all the digits of the called number, which would save time. Also, as discussed above, the Examiner explains that combining Chen’s system with Awada’s techniques would have predictably used prior- art elements according to their established functions. Final 6–9. The Examiner’s rationale demonstrates that, under the proposed combination, Chen’s devices 1 and 1carry out their established function of comparing numbers, and Awada’s method, likewise, compares digits to telephone numbers. See id. Appellants further argue that “[t]he conclusory rationale provided in the Final Office Action only suggests a modification of a telephone 41 in Chen’s system be provided so that a full telephone number can be provided to Chen’s non-server device by a user via the auto-complete feature disclosed by Awada.” Appeal Br. 25 (citing Chen ¶¶ 22, 29–31, Awada ¶¶ 23–33). We disagree. For example, in the paragraph cited by Appellant, Awada states, “If a user has a telephone that does not incorporate the auto-complete feature, the user may subscribe to a telephone service provider that provides the feature.” Awada ¶ 33, cited in Appeal Br. 25. In that case, Awada’s service Appeal 2018-005125 Application 14/922,379 14 provider stores previously called numbers. Id. “When the user is entering digits of a number previously called, the service provider may detect the digits entered and provide numbers in a numerical order to the user.” Id. (emphasis added). Thus, this paragraph shows that Awada’s method need not be performed by a telephone. Id. ¶ 33, Fig. 6, cited in Appeal Br. 25. Under the Examiner’s proposed combination, the partial string of digits must be sent from the telephone, where the numbers are dialed, to another device, where the numbers are compared. Specifically, Chen’s exchange device 1 is separate from the telephone 41. Chen Fig.1. So the telephone must send an incomplete string if exchange device 1 is to perform the comparison. Appellant’s argument (Appeal Br. 25) is unpersuasive because it fails to account for the combined teachings of Awada and Chen. On this record, we are unpersuaded that the Examiner erred in rejecting claim 34. Thus, we sustain the rejection. Obviousness Rejection of Claim 15 over Chen, Awada, and Sun. Claim 15 is an independent claim. It recites similar limitations to those in independent claim 34. Appellant’s arguments about claim 15 are similar to the arguments for claim 34. See Appeal Br. 26–27. For instance, Appellant argues that “Awada’s telephone does not suggest any type of modification of Chen” to arrive at the recited matching and converting steps. Id. at 26. According to Appellant, “Awada only teaches a modification to Chen’s telephone 41.” Id. at 27. And Appellant argues that “no time saving or efficiency occurs at an exchange device” in Awada. Id. So, for the same reasons discussed for claim 34, we find Appellant’s arguments here (id. at 26–27) unpersuasive. As discussed above, Appellant’s Appeal 2018-005125 Application 14/922,379 15 arguments are based on substituting Chen’s telephone 41 with Awada’s telephone, which is not the Examiner’s proposed modification. Also, as discussed above, Awada’s method does not require a telephone to match numbers. See, e.g., Awada ¶ 33, Fig. 6, cited in Appeal Br. 25. Thus, we sustain the rejection of claim 15. Obviousness Rejection of Claim 16 over Chen, Awada, and Sun. The Examiner rejects claim 16 as obvious over Chen, Awada, and Sun. Final 5–6, 9–10. Appellant’s arguments about claim 16 are similar to the arguments about claim 34. See Appeal Br. 27–30. For instance, Appellant argues that Awada is directed to entering a full telephone number. Id. at 28. Appellant argues that “no time saving or efficiency occurs at an exchange device” in Awada. Id. But we disagree with these arguments because Awada’s method may conclude without matching all the digits of the called number, which would save time. Appellant also argues that there is no rational underpinning for the rejection. Id. at 29–30. In Appellant’s view, Awada’s principle of operation would be impermissibly changed by requiring the exchange device to provide the service and function of Awada’s telephone. Id. at 29. But this argument is unpersuasive because Awada’s method does not require a telephone to match numbers. See, e.g., Awada ¶ 33, Fig. 6, cited in Appeal Br. 25. Appellant also argues that both Awada and Chen are directed to sending a full number with a telephone. Appeal Br. 30. As discussed above, we disagree. Under the Examiner’s proposed combination, the partial string Appeal 2018-005125 Application 14/922,379 16 of digits must be sent from the telephone, where the numbers are dialed, to another device, where the numbers are compared. This is similar to Awada’s service that provides the matching feature. Awada ¶ 33, cited in Appeal Br. 30. Thus, we sustain the rejection of claim 16. Obviousness Rejection of Claim 23 over Chen, Awada, and Sun. Claim 23 is an independent claim. It recites similar limitations to those in independent claim 29. Appellant’s arguments about claim 23 raise the same issues as the arguments that we addressed above in connection with claim 29. See Appeal Br. 31–33. As discussed above, those arguments are unpersuasive. Thus, we sustain the rejection of claim 23. Obviousness Rejections of Claims 17–22, 24–28, and 30–33 The Examiner rejects claims 17–22, 24–28, and 30–33 over various combinations of Chen, Awada, Cisco, Theis, Sun, and Ambrose. Final 10– 13. In the briefs, Appellant does not separately discuss the limitations found in these claims. See generally Appeal Br.; Reply Br. Nor does Appellant substantively address the Cisco, Theis, Sun, and Ambrose references. See Appeal Br. 13–33; Reply Br. 4–9. Rather, Appellant groups the claims with the independent claims and discusses the Chen and Awada references. Id.; Appeal Br. 13–33; Reply Br. 4–9. Because we find these arguments unpersuasive, as discussed above, we sustain the rejections of 17–22, 24–28, and 30–33. Appeal 2018-005125 Application 14/922,379 17 CONCLUSION The Examiner’s decision to reject claims 15–34 is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15, 16, 23, 28, 29, 34 103 Chen, Awada, Sun 15, 16, 23, 28, 29, 34 17, 22, 24, 27, 32, 33 103 Chen, Awada, Cisco 17, 22, 24, 27, 32, 33 18–21, 25, 26, 30 103 Chen, Awada, Sun, Theis 18–21, 25, 26, 30 31 103 Chen, Awada, Sun, Ambrose 31 Overall Outcome 15–34 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation