Adrianus VAN EWIJK et al.

Patent Trials and Appeals Board

Apr 29, 2021

2020000577 (P.T.A.B. Apr. 29, 2021)

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.
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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;
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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.

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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
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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.
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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.
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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