Adrianus VAN EWIJK et al.Download PDFPatent Trials and Appeals BoardApr 29, 20212020000577 (P.T.A.B. Apr. 29, 2021) 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. 11/923,540 10/24/2007 Adrianus Johannes VAN EWIJK 29250A-000057/US 9739 30594 7590 04/29/2021 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER CATTUNGAL, AJAY P ART UNIT PAPER NUMBER 2467 NOTIFICATION DATE DELIVERY MODE 04/29/2021 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): dcmailroom@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ADRIANUS JOHANNES VAN EWIJK, and JOHAN ANDRE DE VRIENDT ____________________ Appeal 2020-000577 Application 11/923,5401 Technology Center 2400 ____________________ Before MARC S. HOFF, JOHN A. EVANS, and CARL L. SILVERMAN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1, 4–6, and 8–15.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention resolves a Uniform Resource Identifier (URI) for use in routing messages in or between IP Multimedia Subsystem (IMS) networks. A query is sent to a first processor in a private name server to 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Alcatel Lucent. Appeal Br. 1. 2 Claims 2, 3, and 7 have been cancelled. Appeal 2020-000577 Application 11/923,540 2 resolve the URI. If the private name server fails to resolve the URI, the inventive method sends a second query originating at the private name server directly to a public name server. The public name server sends a response to the first processor, which then resolves the URI based upon the response and transmits the URI. See Abstract. Claims 1 and 6 are reproduced below: 1. A method for resolving a Uniform Resource Identifier (URI) for use in routing messages in or between IP Multimedia Subsystem (IMS) networks comprising the following steps: receiving, by at least one first processor of a private name server, a first query for resolving said Uniform Resource Identifier (URI) from a device capable of sending messages to said IP Multimedia Subsystem networks, the private name server having a limited set of known domains, managed by an organization and separated from domain name server infrastructure available to the public in the Internet; resolving, by the at least one first processor, said URI; sending, by the at least one first processor, a second query for resolving said URI to a public name server in the Internet if resolving said URI by said private name server fails, the second query originating at the private name server and being sent directly to the public name server; Appeal 2020-000577 Application 11/923,540 3 receiving, by the at least one first processor, a response to the second query; resolving, by the at least one first processor, said URI based on the response to the second query; and transmitting, by the at least one first processor, the URI to said device. 6. A device for routing messages in an IP Multimedia Subsystem network, said device comprising: means able to formulate a query for resolving a Uniform Resource Identifier (URI); means for sending said query to a private name server with a limited set of known domains, managed by an organization and separated from domain name server infrastructure available to the public in the Internet; and means for interpreting a response to said query; wherein the Uniform Resource Identifier is an identifier for a receiving node in a second IP Multimedia Subsystem network, the second IP Multimedia Subsystem network being a network that is foreign to the IP Multimedia Subsystem network of the device. Appeal Br. 15, Claims App. Appeal 2020-000577 Application 11/923,540 4 The prior art relied upon by the Examiner as evidence is: Name Reference Date Adamczyk US 2004/0003114 A1 Jan. 1, 2004 Soo et al. (“Soo”) US 2007/0165613 A1 July 19, 2007 Maxwell et al. (“Maxwell”) US 7,660,584 B2 Feb. 9, 2010 Claims 1, 6, and 8–15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Soo and Maxwell. Final Act. 4–6. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Soo, Maxwell, and Adamczyk. Final Act. 6–7. Throughout this decision, we make reference to the Appeal Brief filed June 17, 2019 (“App. Br.”); the Reply Brief filed Nov. 1, 2019 (“Reply Br.”); and the Examiner’s Answer mailed Sept. 30, 2019 (“Ans.”) for their respective details. ISSUE Does the combination of Soo and Maxwell teach all the limitations of independent claim 1 when the conditional limitation in the claim is not satisfied? PRINCIPLES OF LAW Conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable construction, the method need not invoke the steps. Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *3–6 (PTAB April 28, 2016) (precedential) (Concluding Appeal 2020-000577 Application 11/923,540 5 the broadest reasonable interpretation of a claim encompassed situations in which conditional method steps “need not be reached.”). ANALYSIS Claims 1, 8, 10, 12, and 13 Independent claim 1 recites, in pertinent part, the conditional step of “sending, by the at least one first processor, a second query for resolving said URI to a public name server in the Internet if resolving said UR by said private name server fails . . . receiving, by the at least one first processor, a response to the second query; [and] resolving by the at least one first processor, said URI based on the response to the second query.” Construing claim 1 including its conditional limitation, the broadest reasonable interpretation of claim 1 encompasses the situation in which the attempt to resolve the URI by the private name server does not fail. See Schulhauser, at *3–6. In that situation, the conditional step of claim 1 need not be reached, and the claim merely recites the first processor resolving the URI and transmitting the URI to a device capable of sending messages to IP Multimedia Subsystem networks. The Examiner finds that Soo teaches the non-conditional limitations of claim 1. Final Act. 4. Appellant’s arguments are entirely concerned with the conditional portion of the claim where a second query is sent to a public name server, a response to that query is received by the first processor, and the first processor resolves the URI. Appeal Br. 9–10. Appellant does not dispute that Soo teaches these claim limitations. Appeal 2020-000577 Application 11/923,540 6 We thus find that the Examiner did not err in combining Soo and Maxwell to obtain the invention recited in independent claim 1. We sustain the Examiner’s § 103(a) rejection of claims 1, 8, 10, 12, and 13. Claim 6 Appellant argues that claim 6 is patentable for the same reasons given with respect to claim 1, which we have analyzed supra. Appeal Br. 12. In distinction from independent claim 1, independent claim 6 is a device claim, rather than a method claim, and does not recite either a second query for resolving the URI nor a public name server to which to direct such a query. Claim 6 recites, in pertinent part, “means able to formulate a query for resolving” a URI; “means for sending said query to a private name server;” and “means for interpreting a response to said query.” Appellant’s entire argument on appeal, however, is that Soo does not teach sending a (second) query to a public (“external”) name server, receiving a response to that query, and resolving, by the first processor, said URI based on the response to that second query. Appeal Br. 11. None of those limitations are present in claim 6. Appellant makes no separate argument for the patentability of claim 6, based on limitations actually present in claim 6. See Appeal Br. 12. Because Appellant makes no argument directed to Examiner error in rejecting claim 6, we sustain the Examiner’s § 103(a) rejection of independent claim 6, as well as claims 9, 11, 14, and 15 dependent therefrom. Appeal 2020-000577 Application 11/923,540 7 Claims 4 and 5 We sustain the rejection of claim 1, from which claims 4 and 5 depend, supra. Appellant does not separately argue the patentability of any limitations present in dependent claims 4 and 5. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 4 and 5 over Soo, Maxwell, and Adamczyk, for the reasons given supra with respect to the rejection of independent claim 1. CONCLUSION The combination of Soo and Maxwell teaches all the limitations of independent claim 1 when the conditional limitation in the claim is not satisfied. The Examiner’s decision to reject claims 1, 4–6, and 8–15 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 8–15 103(a) Soo, Maxwell 1, 6, 8–15 4, 5 103(a) Soo, Maxwell, Adamczyk 4, 5 Overall Outcome 1, 4–6, 8– 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f) AFFIRMED Copy with citationCopy as parenthetical citation