Ex Parte Bennett et al

Patent Trial and Appeal Board

Nov 29, 2012

11114427 (P.T.A.B. Nov. 29, 2012)

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.
11/114,427 04/26/2005 Jesse W. Bennett 2002-142 9820
54472 7590 11/29/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
BEHARRY, NOEL R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
11/29/2012 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 JESSE W. BENNETT, SURI MADDHULA,
and DON W. SCHOPPE

Appeal 2010-005015
Application 11/114,427
Technology Center 2400
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13 and 15-36. Claim 14 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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STATEMENT OF THE CASE
Appellants describe the present invention as a media client that
extends the capabilities of a network device, but can be partly or wholly
located in on one or more other network devices. Spec. ¶¶ [0028-30].
Claim 1 is illustrative:
1. A media client for a networked communication
device, executing on one or more host devices to enable
communication between the networked communication device
and a remote device, the media client comprising:
a user agent to communicate with a multimedia
application in the networked communication device;
a first network interface for communications between the
user agent and the multimedia application;
a signaling agent under the control of the user agent to
perform signaling operations to establish and terminate media
sessions between the multimedia application in the networked
communication device and a remote device; and
a media agent under the control of the user agent to send
multimedia messages and receive multimedia messages as part
of an established media session between the multimedia
application in the networked communication device and a
remote device.
The Examiner relies on the following as evidence of unpatentability:
Dyke US 2003/0145054 A1 Jul. 31, 2003
Lauzon US 7,050,861 B1 May 23, 2006

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THE REJECTIONS
The Examiner rejected claims 1-13, 15, and 17-25 under 35 U.S.C. §
102(b) as anticipated by Dyke. Ans. 4-12.1
The Examiner rejected claims 26-36 under 35 U.S.C. § 103(a) as
unpatentable over Dyke and Lauzon. Ans. 12-16.
The Examiner rejected claim 16 under § 103(a) as unpatentable over
Dyke. Ans.17.

ISSUE
Based upon our review of the record, the arguments proffered by
Appellants, and the findings of the Examiner, we address the following
issue:
Under § 102, has the Examiner erred in finding that
Dyke’s media server and conference participant device
constitute a networked communication device and remote
device, as defined by claim 1?

EXAMINER’S FINDINGS FOR DYKE
The Examiner finds that claim 1 is anticipated by the conferencing
architecture of Dyke’s Figure 1, reproduced below.

1 Throughout this opinion, we refer to the Appeal Brief filed July 27, 2009
and the Examiner’s Answer mailed November 16, 2009.
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Dyke’s Figure 1 is a block diagram of Dyke’s cited
conferencing architecture.
In finding so, the Examiner reads: the claimed networked
communication device (NCD) on Dyke’s media server 104; the claimed
remote device on Dyke’s conference participant device (CPD) (not
illustrated; contains the user agent 106); the claimed first network interface
on Dyke’s media session 118; the claimed user agent on Dyke’s user agent
106; the claimed signaling agent on Dyke’s application server 102; and, the
claimed media agent on Dyke’s media server 104 and/or user agent 106.
Ans. 5 and 21-23; cf., App. Br. 8-9 and 15.
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§ 102 REJECTION OF CLAIMS 1-13, 15, AND 17-25 OVER DYKE
Claim 1
As reflected by the issue statement, Appellants repeatedly contest the
Examiner’s finding that Dyke’s media server 104 and CPD respectively
constitute an NCD and remote device, as defined by claim 1. Appellants
argue in part:
This labeling conflicts with explicit limitations in claim
1, as understood in the context of Applicant’s specification.
Claim 1 recites “a media client for a networked communication
device.” That is, each networked communication device has a
media client for enabling it to communicate with a remote
device. This is shown in Figure 4, for example, where each
NCD A, B, and C have their own media client 200 (note that
Figure 4 shows multiple, stacked media clients in the network
so that NCD B and C each have their own).
In view of this understanding, [Dyke’s] conference
participant devices correspond to the [claimed] networked
communication devices, not remote devices, since each
conference participant device has a user agent 106.1, 106.2 ...
106.n for enabling it to communicate with the media server
104. The rejection, however, alleges just the converse. Yet it
doesn’t make any sense to state that one of the user agents
106.1, 106.2 ... 106.n is for the media server 104.
App. Br. 8-9 (bracketed language added). In sum, Appellants contend that,
because the claimed media client enables communication “for a networked
communication device” and Dyke’s user agent 106 enables communication
for a respective CPD, the claimed NCD should be read on Dyke’s CPD and
not the media server 104.
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Appellants’ argument is not persuasive. Dyke’s conferencing
architecture enables the user agent 106 and media server 104 to establish a
media session 118, thereby providing a two-way media data flow (e.g., play
and record) between the user agent 106 and media server 104. Dyke, ¶¶
[0025], [0066], and [0069]; Figs. 1-3. Thus, Dyke’s conferencing
architecture enables media communication for both the user agent 106 and
media server 104. As such, contrary to Appellants’ argument, Dyke’s
conferencing architecture constitutes a “media client for” the media server
104.
Note also that the asserted claim language – “media client for a
networked communication device” – is intended use language that merely
reflects the aim of the invention. The asserted claim language does not, for
example, locate the media client within the NCD or impose some other
structural restriction. Such intended use language is not limiting.2
Appellants further argue, with respect to claim 1:
Dyke does not relate to legacy devices that inherently
lack SIP or IMS capabilities. All devices in Dyke, for example,
are inherently capable of communicating using the SIP
protocol. Dyke, therefore, at most relates to the example
networked communication device A shown in Applicant’s
Figure 4, not to the networked communication devices that are
the focus of Applicant’s claims (ie., NCD B and C).

2 See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or intended
use of the invention, then the preamble is of no significance to claim
construction because it cannot be said to constitute or explain a claim
limitation.”).
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App. Br. 5. Device A of Appellants’ Figure 4 includes all three agents of the
media client, while devices B and C of Figure 4 utilize agents within a
connected network 40. Appellants thus contend that Dyke fails to teach a
distributed media client, particularly insofar as providing all of the claimed
media client functionality (i.e., of the user agent, signaling agent, and media
agent) within the user agent 106 of the CPD.
Appellants’ argument is not persuasive. Claim 1 does not preclude
the remote device (Dyke’s CPD) from having the functionality of all three
agents, but rather recites that the user agent and multimedia application
communicate over a first network interface. The Examiner has met this
limitation in reading the claimed user agent and NCD respectively on
Dyke’s user agent 106 and media server 104. No further distribution of the
claimed features is required. Note also that, even assuming claim 1 required
a distribution of the agents, the Examiner has established a distribution of
agents in reading the claimed signaling agent on Dyke’s application server
102 (Ans. 23); the claimed media agent on Dyke’s media server 104 and/or
user agent 106 (Ans. 21); and the claimed user agent on Dyke’s user agent
106 (Ans. 23).
Appellants further argue that the claimed invention “locates the media
client in its entirety on host devices … that are distinct from the networked
communication device and the remote device.” App. Br. 6. Appellants’
argument is not persuasive. Claim 1 recites the media client as “executing
on one or more host devices.” This claim language merely clarifies that the
media client can be monolithic or distributed (cf., Spec. ¶ [0029]), not that
the media client must be separated from the NCD and remote device, as
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asserted. In other words, claim 1 does not preclude the NCD and remote
device from being “host devices” of the media client.
Appellants further argue that the rejection “ignores the claimed media
agent.” App. Br. 9. According to Appellants, the Examiner reads the
claimed NCD, remote device, user agent, and signaling agent on all three of
Dyke’s components 102, 104, 106 and, accordingly, “cannot label anything
else as the claimed media agent.” Id. Appellants’ argument is not
persuasive. The Examiner finds that the claimed media agent can be read on
Dyke’s user agent 106 and/or media server 104. Ans. 5 and 21‐22; cf., App.
Br. 15. Claim 1 does not preclude locating the media agent within the
remote device (Dyke’s CPD) or the NCD (Dyke’s media server 104).
Appellants further argue that the claimed signaling agent can only be
read on Dyke’s user agent 106, not the application server 102, because “the
user agent 106 … actually begins the SIP signaling to enable communication
with the media server 104” and “the application server 102 merely relays
SIP commands to the media server 104.” App. Br. 9. Appellants’ argument
is not persuasive. Claim 1 does not require the signaling agent to “begin”
the signaling that establishes the media session between the NCD and
remote device. Rather, claim 1 more broadly requires the signaling agent to
“perform signaling operations to establish and terminate media sessions.”
The Examiner correctly cites Dyke’s application server 102 as signaling the
user agent 106 and media server 104 so as to establish and terminate a media
session 118. Ans. 23 (citing Dyke, ¶ [0023]; see also Figs. 1-3).
For the foregoing reasons, we sustain the § 102 rejection of claim 1.
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Claim 2
Appellants’ arguments for claim 2 are similar to the arguments
addressed for claim 1. App. Br. 11. Accordingly, we sustain the § 102
rejection of claim 2.
Claim 3
Claim 3 depends indirectly from claim 1 and recites that “the user
agent is located in a network server.” Appellants argue:
When read in view of Applicant’s specification, this limitation
requires that the user agent be located in the communication
network separate from the endpoint devices that are
communicating via that network.
On the contrary, Dyke only discloses that the user agents
106 may be located in a conferencing application server 102
that is itself an endpoint in the communication with the media
server 104.
App. Br. 11. Appellants’ argument is not persuasive. A “server” was
generally understood to be a computer that supplies data or application
resources to other computers via a network. Appellants have not shown that
this generally understood meaning, or another meaning required by the claim
or Specification, precludes the claimed “network server” from also being a
communication “endpoint.” Further, Dyke provides contrary evidence
insofar as teaching that the user agent 106 and application server 102 may be
located within the same SIP phone or desktop computer. Dyke ¶ [0023].
Accordingly, we sustain the § 102 rejection of claim 3.
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Claims 4-7
Appellants’ arguments for claims 4-7 are similar to the arguments
addressed for claim 1. App. Br. 12-14. Accordingly, we sustain the § 102
rejection of claims 4-7.
Claim 8
Claim 8 indirectly depends from claim 1 and recites the client as
“comprising a third network interface for communications between the user
agent and media agent.” Appellants argue:
[A] user agent 106 in Dyke is also analogous to the claimed
media agent because it communicates with the media server
104 using the RTP or MSRP protocol to send and receive
audio/video. Thus, as the media agent and user agent in Dyke
are logically performed by the same entity, Dyke fails to
disclose a third network interface for communication between
those agents.
App. Br. 14. Appellants’ argument is not persuasive. As noted supra, the
Examiner finds that the claimed media agent can be read on Dyke’s media
server 104 (Ans. 5 and 21‐22) and, in turn, that Dyke’s RTP session 118
constitutes a third network interface as claimed (Ans. 7). Appellants fail to
show that the claimed media agent functions are not performed the media
server 104, as found by the Examiner. Appellants merely contend that the
claimed media agent is more analogous to Dyke’s user agent 106 than the
media server 104. Even assuming Appellants are correct, there is simply no
requirement for the Examiner to read the claimed agents on the Dyke’s most
analogous features. The argument therefore fails to present a reason why the
claimed media agent cannot be read on Dyke’s media server 104.
Accordingly, we sustain the § 102 rejection of claim 8.
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Claims 9-11
Claim 9 depends from claim 8 and recites the media agent as “located
remotely from the multimedia application.” Appellants argue:
Indeed, the rejection appears to cite either a user agent 106 as
the claimed media agent (Applicant agrees with this), or
incorrectly labels the media server 104 as the claimed media
agent. Yet with the media server 104 as both the networked
communication device and the claimed media agent, Dyke still
fails to disclose that the media agent is located remotely from
the multimedia application.
App. Br. 15. Appellants’ argument is persuasive. As noted by Appellants,
the Examiner finds that the claimed media agent can be read on Dyke’s user
agent 106 and/or media server 104. Ans. 5 and 21‐22. However, the
claimed media agent must communicate with the user agent over a network
interface (claim 8) and be located remotely from the multimedia application
of the NCD (claim 9). Thus, contrary to the Examiner’s findings, the
claimed media agent must be located remotely from the user agent (Dyke’s
user agent 106) and the NCD (Dyke’s media server 104). Accordingly, we
do not sustain the § 102 rejection of claim 9 or its dependent claims 10-11.
Claim 12
Appellants’ arguments for claim 12 are similar to the arguments
addressed for claims 1 and 8. App. Br. 16. Accordingly, we sustain the §
102 rejection of claim 12.
Claim 13
Claim 13 depends from claim 1 and recites “wherein the user agent,
signaling agent and media agent reside within a network server within a
communication network, and wherein the multimedia application resides in
a networked communication device and remotely accesses the media client.”
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Appellants’ arguments for claim 13 are similar to the arguments addressed
for claim 3 and, thus, not persuasive. App. Br. 17. We note also that the
Examiner found the claimed user agent and signaling agent can be read on
Dyke’s application server 102 (Ans. 23) and the media agent can be read on
Dyke’s user agent 106 and media server 104 (Ans. 5 and 21‐22). Under this
application of Dyke, each of the claimed agents is read at least partly on a
network server 102 and/or 104.
Appellants additionally argue:
Claim 13 also explicitly recites that the media client and
all its components are remote from the networked
communication device. The arguments mentioned above with
respect to claim 1, therefore, are particularly applicable to claim
13.
App. Br. 17. Appellants’ argument is not persuasive. Claim 13 does not
require all components of the claimed media client to be remotely located
from the NCD. Rather, claim 13 requires that at least some part of the media
client is remotely accessed by the multimedia application of the NCD.
Appellants have not shown that the multimedia application of Dyke’s media
server 104 (NCD) fails to access the application server 102 and user agent
106. Accordingly, we sustain the § 102 rejection of claim 13.
Claim 15
Claim 15 depends from claim 1 and recites “wherein the media agent
further comprises one or more media player(s), and wherein the media agent
selectively routes media streams between the multimedia application and at
least one of the one or more media player(s) responsive to commands from
the multimedia application.” The Examiner cites Dyke at paragraph [0023],
which teaches a media player of the user agent 106, as teaching the above
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limitations. Ans. 8‐9. Appellants argue that “[p]aragraph 23 is completely
silent as to any routing of media streams between the media player and a
multimedia application[.]” App. Br. 17. Appellants’ argument is not
persuasive. As noted, Dyke describes the user agent 106 as including a
media player. Dyke, ¶ [0023]. Dyke also describes the media server 104 as
generating multimedia data and, in turn, passing the data via a Real Time
Transport Protocol (RTP) “media flow” to the user agent 106. Dyke, ¶
[0025]. Given these teachings, a skilled artisan would have reasonably
inferred that a multimedia application of the media server 104 routes a
media stream to a media player of the user agent 106. Accordingly, we
sustain the § 102 rejection of claim 15.
Claims 17 and 18
Appellants’ arguments for claims 17 and18 are similar to the
arguments addressed for claim 1. App. Br. 10 and 16. Accordingly, we
sustain the § 102 rejection of claims 17 and 18.
Claims 19-24
Appellants’ arguments for claims 19-24 are similar to the arguments
addressed for claim 1. App. Br. 18-20. Accordingly, we sustain the § 102
rejection of claims 19-24.
Claim 25
Claim 25 depends indirectly from claim 17 and recites that “the media
agent is located in another networked communication device and is
accessible via the communication network.” Appellants argue:
At no point does Dyke suggest that the user agent 106 in one
conference participant device communicate[s] with the user
agent 106 in a different conference participant device.
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App. Br. 22 (emphasis removed). Appellants’ argument is not persuasive.
As noted supra, the Examiner finds that the claimed media agent can be read
on Dyke’s user agent 106 of the CPD. Ans. 5 and 21‐22. Under this
application of Dyke, the claimed NCD is still read on Dyke’s media server
104, while the “another” NCD is read on Dyke’s CPD. Note that claim 1
does not preclude reading the claimed remote device and “another” NCD on
the same device. Accordingly, we sustain the § 102 rejection of claim 25.
§ 103 REJECTION OF CLAIMS 26-36
OVER DYKE AND LAUZON
Claim 26
Appellants describe the rejection of independent claim 26 and its
dependent claims 27-36 as follows:
Claims 26-36 are directed explicitly to networked
communication devices that comprise mobile devices. …
[B]ecause the media server in Dyke is admittedly not a mobile
device, the rejection now relies on the argument that it would
have been obvious to replace the media server in Dyke with a
mobile device disclosed in Lauzon.
App. Br. 22 (original emphasis). Appellants argue that the rejection is
improper because: a skilled artisan would replace Dyke’s CPD, not the
media server 104, with Lauzon’s mobile devices; and, Dyke and Lauzon are
not analogous art. App. Br. 23-24.
We find that it would have been mere common sense to locate Dyke’s
media server 104 within a laptop computer and, in support, note that the
application server 102 can be located with an SIP phone or desktop
computer. Dyke, ¶ [0023]. Appellants’ Specification and figures confirm
that the claimed “mobile device” can be a laptop computer, particularly by
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illustrating the “mobile terminal 100” as a laptop computer (Figs. 1 and
11‐12). Accordingly, we sustain the § 103 rejection of claim 26.
Claims 27-36
Appellants’ arguments for claims 27-36 are similar to the arguments
addressed for claim 1. App. Br. 24-29. Accordingly, we sustain the § 103
rejection of claims 27-36.

§ 103 REJECTION OF CLAIM 16 OVER DYKE
Appellants’ arguments for claim 16 are similar to the arguments
addressed for claims 1 and 26. App. Br. 29. Accordingly, we sustain the
§103 rejection of claim 16.

ORDER
The Examiner’s decision rejecting claims 1-8, 12, 13, and 15-36 is
affirmed.
The Examiner’s decision rejecting claims 9-11 is reversed.
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).

AFFIRMED-IN-PART

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