Ex Parte 7937081 et al

Patent Trial and Appeal BoardMar 30, 2016

95001899 (P.T.A.B. Mar. 30, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE PATENT TRIAL AND APPEAL BOARD ____________ XILINX, INC. Requester and Respondent v. INTELLECTUAL VENTURES MANAGEMENT, OF WHICH INTELLECTUAL VENTURES I LLC IS AN AFFILATE, Patent Owner, Cross-Appellant, and Respondent ____________ Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 B21 Technology Center 3900 ____________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) This Decision under 37 C.F.R. § 41.77(f) incorporates the PTAB Decision entered April 25, 2014 in Appeal 2014-001131 (“the Decision”). 1 Patent 7,937,081 B2 (hereinafter “’081 patent”) was granted on May 3, 2011, based on Application 12/720,862, filed on March 10, 2010, as a divisional of Application 09/802,861, filed on March 12, 2001 (now Patent No. US 7,769,374 B2, issued August 3, 2010). Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 2 In the Decision, another panel reversed the Examiner’s decision to withdraw the rejections of (1) claims 7, 8, 13, 20, 21, 26, 27, 32, 37, and 38 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, and Gustafson; and (2) claims 9 and 22 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, Gustafson, and Foti III. These rejections were designated as new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). Decision 70. In response to the rejections, Patent Owner elected to reopen prosecution under 37 C.F.R. § 41.77(b)(1). See Patent Owner Response Requesting Reopening of Prosecution in Inter Partes Reexamination Pursuant to 37 C.F.R. § 41.77(b), dated May 27, 2014 (hereinafter “PO Resp.”).2 Requester filed a notice on May 8, 2014 indicating that Requester no longer intends to participate in the present reexamination. See Notice of Non-participation in Inter Partes Reexamination, filed May 8, 2014. An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued on October 14, 2014. (Hereinafter, “Ex. Det.”). In the Examiner’s Determination, the Examiner rejected claims 7, 8, 13, 20, 21, 26, 27, 32, 37, and 38 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, and Gustafson; and claims 9 and 22 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, Gustafson, and Foti III. We are not persuaded of error in the Examiner’s determination. 2 Patent Owner additionally submits the Supplement Declaration of Dr. Eric Burger (hereinafter “Supp. Burger Decl.”). Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 3 DISCUSSION Patent Owner contends that Foti, Gallant, and Gustafson combined fails to teach “‘receiving a home address of the subscriber at the S-CSCF from the UMS.’” PO Resp. 11–17. Patent Owner specifically asserts that Foti only teaches receiving a transport address that is limited to a care-of address, not a home address as recited in illustrative claim 7, of the called subscriber. PO Resp. 11. We disagree. Figure 2 (collectively shown as Figures 2A and 2B) of Foti teaches obtaining a transport address from a location server. As the Examiner explains, Foti also teaches a non-roaming embodiment where the transport address provided by the Home Subscriber Server (HSS) would be the home address. See, e.g., Ex. Det. 4–7 (citing Landauer Decl. at ¶ 24); see also Decision 50, 56–57. For example, as shown in Figure 1 of Foti, a home Call State Control Function (CSCF) will obtain the transport address when the called subscriber is in the home area and, thus, the received transport address is the home address. We note that these teachings are considered together with Gallant’s teaching of finding alternative routing. In other words, obtaining the home address from the HSS instead of the care-of address would be an obvious alternative route. Patent Owner fails to persuasively respond to these findings. As such, we agree with the Examiner that Foti together with Gallant and Gustafson teach the disputed limitation. Moreover, as identified in the Decision, Foti, Gallant, and Gustafson combined, even without relying on a non-roaming embodiment of Foti, teach receiving a home address of the subscriber at the S-CSCF from the Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 4 UMS. In particular, Foti teaches receiving a transport address from a location server and that Foti’s home network HSS (Home Subscriber Server) 27 stores the called subscriber’s home address. Foti, Figures 1 and 2; Decision 64–65. Gallant teaches “that is it well known in SIP [Session Initiation Protocol] call setup to choose alternative SIP servers when a desired one has crashed” and Gustafson teaches routing calls through a CSCF to a home agent. RAN 81; Ex. Det. 7–9. Considering these teachings together, it would have been obvious in view of Gallant and Gustafson to modify Foti to enable the Visited CSCF (corresponding to the claimed S-CSCF) to route a call request to the called subscriber’s home agent (which knows the care-of address) in the event a crash prevents the Visited CSCF from obtaining the care-of address (i.e., transport address 49) from Location Server 33 (in Serving Network 31). More particularly, it would have been obvious to accomplish this result by having the Visited CSCF (i.e., S-CSCF): (i) obtain the called mobile subscriber’s home address from HSS 27 (corresponding to the claimed “UMS”) in Home Network 23 and then (ii) use the home address to send a call setup message to the subscriber’s home agent for forwarding to the subscriber at the care-of address (known to the home agent). Ex. Det. 9–10; see also Decision 64–65. In other words, it would have been obvious to modify Foti, in view of Gallant and Gustafson, to obtain the home address of the called subscriber from the HSS in the event that the location server crashes. As such, Foti, Gallant, and Gustafson teach the recited receiving limitation. Patent Owner’s arguments with respect to Gallant and Gustafson are likewise unavailing. Namely, these arguments similarly do not consider the teachings of Foti, Gallant, and Gustafson combined, but instead challenge Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 5 each reference individually. For example, Patent Owner asserts that “Gallant is entirely silent with respect to a home address of a subscriber or of receiving such a home address at an S-CSCF from a UMS.” PO Resp. 12 (quotations omitted); see also Burger Decl. ¶ 27. Patent Owner also maintains that Gustafson does not teach that the CSCF 875 received a home address of the subscriber from a user mobility server. PO Resp. 13; see also Burger ¶ 25. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As such, for the reasons discussed above, we are not persuaded of error in the Examiner’s determination. Patent Owner further contends that the rejection fails to recognize that because a CSCF has a “home address” or uses a “home address” says nothing about from where the “home address” was received. Similarly, simply because a CSCF has possession or knowledge of a “home address” does not mean that the CSCF obtained that “home address” from a specific entity, e.g., a “UMS.” PO Resp. 14 (underlining in original); see also PO Resp. 19–21. Additionally, according to Patent Owner, “there is no reason in Gustafson for the ‘CSCF 875’ to retrieve a home address from a ‘UMS,’ since the ‘home address’ is already known in Gustafson . . . .” PO Resp. 13; see also PO Resp. 14–17; Burger Decl. ¶ 23. These arguments, however, fail to consider that Foti’s home network stores the called subscriber’s home address. See Decision 65. Gustafson likewise expressly teaches a home location register (HLR) that stores the user’s subscription information as well as dynamic information relating to Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 6 the location of a particular subscriber. Gustafson, col. 5, ll. 21–26. Gustafson also discloses that the CSCF “can itself exchange signaling with the HLR), and, thus, would at least suggest to a skilled artisan that Gustafson’s CSCF would obtain the home address information from the HLR. As such, Patent Owner’s arguments are unconvincing. Finally, Patent Owner contends that a skilled artisan would not be motivated to combine Foti, Gallant, and Gustafson. See PO Resp. 17–23. Patent Owner’s arguments depend, in part, on the alleged failure of the combination to teach the disputed limitations. See, e.g., PO Resp. 18–20 (asserting that there is no motivation to combine the reference because none of the references teach the receiving limitation). As discussed above, we are not persuaded that the cited combination fails to teach the receiving limitation. Patent Owner also asserts that even if the combination did teach the disputed limitation, the cited combination is improper because it would modify the function of Foti’s CSCF. In particular, Patent Owner maintains that “the Requester’s combination would have required [a] combination of the operation and functionality of a CSCF from a home network as in Gustafson with the operation and functionality of a CSCF from a visited, non-home network as in Foti” (PO Resp. 22) and One of skill in the art would recognize that the operation of a CSCF in a home network is different from the operation of a CSCF in a visited, non-home network. (See, e.g., Burger Supp. Dec., pars. 20, 24.) Accordingly, the combination would require the CSCF to perform different operations and have different functionalities that are not seen in a CSCF in a home network. (See id.) Accordingly, in combination, the CSCF from the home network in Gustafson and the CSCF from the non-home, visited Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 7 network in Foti would not have “merely perform[ed] the same functions as [they did] separately,” as required for a finding of a motivation to combine pursuant to MPEP Section 2143(I)(A). PO Resp. 22–23; see also Burger Decl. ¶¶ 16–21, 24. This argument lacks merit. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425. See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, section 2143(I)(A) of the MPEP is limited to discussing one exemplary way to support a prima facie case of obviousness, namely combining prior art elements according to known methods to yield predictable results. This section does not suggest that any modification of an element’s function is never permissible when establishing a case of obviousness as suggested by the Patent Owner (see PO Resp. 21). See, e.g., MPEP § 2143(I)(B)–(G). Therefore, Patent Owner’s arguments are unpersuasive. Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 8 For the reasons discussed above and by the Examiner, we are not persuaded of any error in the Examiner’s Determination. Accordingly, we agree with the Examiner that the rejections of (1) claims 7, 8, 13, 20, 21, 26, 27, 32, 37, and 38 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, and Gustafson and (2) claims 9 and 22 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, Gustafson, and Foti III should be maintained. CONCLUSION The Examiner’s determination to reject (1) claims 7, 8, 13, 20, 21, 26, 27, 32, 37, and 38 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, and Gustafson; and (2) claims 9 and 22 under 35 U.S.C. § 103(a) for obviousness over Foti, Gallant, Gustafson, and Foti III is affirmed. This is a new decision under 37 C.F.R. § 41.77(f) and incorporates our earlier decision (2014-001131). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 9 and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). AFFIRMED; 37 C.F.R. § 41.77(f) Appeal 2015-007844 Reexamination Control 95/001,899 Patent 7,937,081 10 PATENT OWNER: FOLEY & LARDNER LLP 3000 K Street N.W. Suite 600 Washington, DC 20007-5109 THIRD-PARTY REQUESTER: HAYNES & BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219