Vonage Network LLC

Patent Trials and Appeals Board

Nov 2, 2020

14580714 - (D) (P.T.A.B. Nov. 2, 2020)

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.
14/580,714 12/23/2014 John Riley Y2108-00248 DIV 4142
39290 7590 11/02/2020
Duane Morris LLP
Duane Morris LLP
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
11/02/2020 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 JOHN RILEY, DANIEL THOMAS SMIRES, and
MARY GRIKAS
____________________

Appeal 2019-003992
Application 14/580,7141
Technology Center 2400
____________________

Before MARC S. HOFF, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 9–16.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention is a system and method for provisionable multi-
modal communications. A communications mode is selected (from among
three usage modes) based on a detected provisioning condition. A first usage

1 Appellant states that the real party in interest is Vonage Holdings
Corporation. Appeal Br. 1.
2 Claims 1–8 have been cancelled.
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Application 14/580,714

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mode supports first communication data consisting of instant messaging
(IM) and in-network voice data. A second usage mode supports second
communications data consisting of IM, in-network voice data, and out-of-
network voice data. A third usage mode supports third communication data
comprising video data. Abstract.
Claim 9 is reproduced below:
9. A method for providing for provisioning, multi-modal
communications, comprising:
providing a plurality of communications capability sets to
a communication device, wherein the plural sets of
communications capabilities comprise:
a first set of communications capabilities for a defined
domain;
a second set of communications capabilities for out of the
defined domain communications; and,
a third set of communications capabilities for enhanced
video communications;
receiving a provisioning signal;
determine a provisioning condition based on the
provisioning signal; and
providing an authentication mechanism to unlock one or
more of the plural sets of communications capabilities on the
communication device.

The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Luna US 2002/0123335 A1 Sept. 5, 2002
Tuoriniemi US 2004/0005876 A1 Jan. 8, 2004
Deakin US 2006/0129638 A1 June 15, 2006

Claims 9–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tuoriniemi and Deakin.
Appeal 2019-003992
Application 14/580,714

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Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tuoriniemi, Deakin, and Luna.

Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Oct. 18, 2018) and the Examiner’s Answer (“Ans.,”
mailed Feb. 25, 2019) for their respective details.
ISSUES
1. Does Tuoriniemi teach a first set of communications capabilities for
a defined domain and a second set of communications capabilities for out of
the defined domain communications?
2. Does the combination of Tuoriniemi and Deakin teach or suggest a
third set of communications capabilities for enhanced video
communications?
3. Does the combination of Tuoriniemi and Deakin teach or suggest
displaying an interface corresponding to the unlocked one or more plural
sets of communications on the communications device?
ANALYSIS
Claims 9–12 and 14
Appellant argues that Tuoriniemi does not teach a first set of
communications capabilities for a defined domain, and a second set of
communications capabilities for out of the defined domain communications
and second set of communications capabilities. Appeal Br. 4. Appellant
contends that Tuoriniemi fails to disclose capabilities restricted to the
claimed “defined domain” and “out of a defined domain.” Id.
We are not persuaded that the Examiner erred. Appellant does not
present evidence regarding the meaning of “domain” in the appealed claims.
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Appellant’s specification refers to communications that are restricted to an
“in-network domain 205” in a first mode. Spec. ¶ 22. Appellant’s disclosure
of the second mode makes no mention of capabilities out of a defined
domain, but Appellant does disclose that the second mode “further enables a
user at a client to dial other numbers outside of a restricted network.” Spec.
¶ 26.
The Examiner finds that “optional capabilities for user’s device” in
Tuoriniemi are the claimed set of communications capabilities for out of the
defined domain communications. Id.; Tuoriniemi ¶ 37. The Examiner further
finds that Tuoriniemi discloses Bluetooth (TM) communications, “a
communication of exchanging data over short distances using short-
wavelength,” as an optional capability. We agree with the Examiner’s
finding that, as the user device involved is a mobile device, placing and
receiving cellular calls can be equated to the first communication capability
for a defined domain; we further agree that communications using
BLUETOOTH capability corresponds to the claimed second
communications capabilities that are “out of the defined domain” of purely
cellular calling.
Appellant further argues that Deakin does not disclose providing a
third set of communications capabilities for enhanced video communications
or determine a provisioning condition based on the provisioning signal.
Appeal Br. 5.
We are not persuaded by Appellant’s argument. Deakin teaches a
server that communicates with network infrastructure to detect the presence
of mobile devices, and detect the presence of additional capability features
on those devices. Deakin ¶ 56. We agree with the Examiner that such
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Application 14/580,714

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detection corresponds to the claimed provisioning signal. Ans. 6; Deakin
¶¶ 56, 68. We further agree with the Examiner that Deakin’s teaching that its
server detects and keeps an inventory of additional downloaded applications,
including video streaming, fairly suggests the claimed third set of
communications capabilities for enhanced video communication. Ans. 6;
Deakin ¶¶ 56, 68.
Appellant’s argument that the Examiner has not set forth a prima facie
case of obviousness is not persuasive. Appeal Br. 5–6. As discussed supra,
the Examiner has identified teachings in Tuoriniemi and Deakin that
correspond to each of the claim limitations. The Examiner states a rationale
for combining the references, “to enable the users mobiles to communicate
with external servers for provision of third party content,” and “to enhance
the experience of the user of mobiles by giving the user the option to add
more capabilities to the mobile,” having a rational underpinning to support
the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
We find that the Examiner did not err in rejecting claims 9–12 and 14
over Tuoriniemi and Deakin. We sustain the Examiner’s § 103 rejection.
Claim 13
Appellant argues that the Examiner erred in citing Tuoriniemi element
10d and Deakin ¶ 68 as corresponding to the claimed “interface
corresponding to the unlocked one or more plural sets of communications on
the communication device.” Appeal Br. 6. According to Appellant,
Tuoriniemi’s interface 10d is “a user interface without a display,” and
Deakin (¶¶ 68, 129) indicates a display of pushed marketing materials and
nothing related to the unlocked communications of the device. Id.
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We are not persuaded by Appellant’s argument. Deakin teaches that a
mobile consumer can check through a provisioning interface and display
information about applications “that have registered to receive information
about their capabilities” on the consumer’s mobile device. Deakin ¶ 68. We
further find that Deakin teaches that a web interface is used for this display.
See id.
Accordingly, we find that the Examiner did not err in rejecting claim
13 over Tuoriniemi and Deakin, and we sustain the § 103 rejection.
Claims 15 and 16
We sustain supra the rejection of independent claims 9 and 14, from
which claims 15 and 16 depend respectively. Appellant argues only that
Luna does not remedy the deficiencies argued in the rejection of claims 9
and 14. Because we do not agree that such deficiencies exist, we sustain the
rejection of claims 15 and 16 over Tuoriniemi, Deakin, and Luna, for the
reasons expressed supra with respect to claims 9 and 14.
CONCLUSIONS
1. Tuoriniemi teaches a first set of communications capabilities for a
defined domain and a second set of communications capabilities for out of
the defined domain communications.
2. The combination of Tuoriniemi and Deakin suggests a third set of
communications capabilities for enhanced video communications.
3. The combination of Tuoriniemi and Deakin suggests displaying an
interface corresponding to the unlocked one or more plural sets of
communications on the communications device.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
9–14 103 Tuoriniemi,
Deakin
9–14
15, 16 103 Tuoriniemi,
Deakin, Luna
15, 16
Overall
Outcome

9–16

ORDER
The Examiner’s decision to reject claims 9–16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED