Ex Parte Coulas et al

Patent Trial and Appeal BoardNov 17, 2016

11617021 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111617,021 124192 GOOGLE 7590 FILING DATE 12/28/2006 11/21/2016 C/O Faegre Baker Daniels LLP 311 S. Wacker Drive, Suite 4300 Chicago, IL 60606 FIRST NAMED INVENTOR MICHAEL F. COULAS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. GP-101167-00-US 3526 EXAMINER DEAN, JR, JOSEPH E ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 11/21/2016 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): googleusinternal@faegrebd.com inteas@faegrebd.com michelle.davis@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL F. COULAS and APOSTOLIS K. SALKINTZIS Appeal 2015-001848 1 Application 11/617 ,021 Technology Center 2600 Before BRUCE R. WINSOR, AMBER L. HAGY, and JOHN R. KENNY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 3, 7-11, and 13-16, which are all of the pending claims. We have jurisdiction over these claims under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify Motorola Mobility LLC as the real party in interest. (App. Br. 1.) Appeal2015-001848 Application 11/617 ,021 (Abs.) Introduction According to Appellants, the present claims are directed to: [a] system and method in which a notification is received of a call from a first device to a second device in a first domain. A context is created for the first type of call. A notification is received of initiation of a call from the second device to the first device in a second domain. The call context is utilized to notify the first device of the initiation of the call from the second device to the first device. Exemplary Claim Claim 1, reproduced below, is exemplary of the claimed subject matter: 1. A method, comprising: receiving a request in an IP telephony domain from a device to notify the device when a call is established in a CS domain with at least one other device; creating a call context in the IP telephony domain about the call established in the CS domain; sending a notification, based on the call context, in the IP telephony domain to the device when the call is established in the CS domain; and initiating an IP session in the IP telephony domain between the device and the at least one other device in response to the notification. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Eikkula Brown et al. Garcia-Martin et al. US 2003/0086410 Al US 2003/0112928 Al US 2004/0249887 Al 2 May 8, 2003 June 19, 2003 Dec. 9, 2004 Appeal2015-001848 Application 11/617 ,021 Newman et al. Longoni et al. Brass et al. US 2005/0152528 Al US 2005/0195762 Al US 2007/0105569 Al REJECTIONS July 14, 2005 Sept. 8, 2005 May 10, 2007 Claims 1, 3, and 11 stand rejected under 35 U.S.C. Â§103(a) as being unpatentable over Longoni, Garcia-Martin, and Brown. (Final Act. 3-5.) Claims 7, 8, 13, and 14 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Longoni, Garcia-Martin, Brown, and Newman. (Final Act. 6-9.) Claims 9 and 15 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Longoni, Garcia-Martin, Brown, Newman, and Brass. (Final Act. 9.) Claims 10 and 16 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Longoni, Garcia-Martin, Brown, Newman, and Eikkula. (Final Act. 9-10.) ISSUE2 The dispositive issue on appeal is whether the Examiner erred in finding Garcia-Martin teaches or suggests "receiving a request in an IP telephony domain from a device to notifj; the device when a call is established in a CS domain with at least one other device," and in also finding Longoni teaches or suggests "sending a notification, based on the call context, in the IP telephony domain to the device when the call is established in the CS domain," as recited in independent claim 1 and 2 Appellants' contentions present additional issues. Because the identified issue is dispositive of Appellants' arguments on appeal, we do not reach the additional issues. 3 Appeal2015-001848 Application 11/617 ,021 commensurately recited in independent claim 11. ANALYSIS Appellants' arguments are premised primarily on the Examiner's construction of the term "device" as recited in all of the independent claims. (App. Br. 11-13.) In particular, in connection with the limitation "sending a notification, based on the call context, in the IP telephony domain to the device when the call is established in the CS domain," as recited in independent claim 1, the Examiner maps "the device" to Longoni's circuit- switched media gateway ("CS MGW 406"). (Final Act. 4.) The Examiner finds Longoni teaches either the user equipment ("UE 401 ") or the IP Multimedia Subsystem ("IMS 405") sends a notification to the gateway, as required by claim 1. (Final Act. 4.) Appellants argue the Examiner's findings are in error because they are premised on an overly broad reading of "the device" as encompassing a "gateway" as disclosed in Longoni. (App. Br. 11-13.) Appellants argue their Specification provides specific examples of a "device" that do not include a gateway, which they characterize as a "network infrastructure entity." (App. Br. 12-13.) The Examiner counters that "[t]he claim states 'device' which is very broad. . . . It is interpreted that a device could be any type of device." (Ans. 5.) We agree with the Examiner that Appellants' Specification provides a broad description of"[ e ]xamples of devices" as including "but not limited to" many different types of electronic devices, such as "mobile data terminals" and "laptop computers." (Ans. 5 (citing Spec. 4:1-7).) But even if we were to agree with the Examiner that a "device" as used in the 4 Appeal2015-001848 Application 11/617 ,021 "sending" limitation of claim 1 may be afforded a broad meaning that could encompass network infrastructure, such as Longoni's gateway (CS MGW), the Examiner must apply that term consistently throughout the claim. See, e.g., Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997). In other words, whatever "the device" is in claim 1, it must be mapped consistently throughout the claim. Furthermore, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The term "device" is introduced in the first limitation of claim 1, which recites "receiving a request in an IP telephony device from a device to notify the device when a call is established in a CS domain with at least one other device .... " (Claims App 'x 1 (emphasis added).) The Examiner does not rely on Longoni for the "receiving" limitation, but finds Garcia-Martin teaches or suggests that limitation. (Final Act. 4.) In particular, the Examiner finds Garcia-Martin discloses user equipment ("UE 20") sends a SIP INVITE to a SIP server "requesting the setting up of a conversational bearer," whereupon "the gateway 25 is notified and allocates a 'call-back' number to the session," and then "the UE informs the gateway that CS call is now successfully established by sending the NOTIFY message and ... the gateway sends a response to the Notify to the terminating user device." 5 Appeal2015-001848 Application 11/617 ,021 (Ans. 7-8.) To the extent these findings are based on disclosure by Garcia- Martin that a "request" is received "from a device," they show the request is received/ram the user equipment. The Examiner does not find Garcia- Martin teaches or suggests a "request" being received/ram the gateway. (See Ans. 7-8.) In short, we conclude the Examiner's findings are premised on an inconsistent mapping of a/the "device" in claim 1. In connection with the "sending" and "initiating" limitations, the Examiner maps "the device" to a gateway, as taught in Longoni. (Ans. 6-7.) But, in connection with the "receiving" limitation of claim 1, the Examiner maps the antecedent basis "a device" to user equipment, as taught in Garcia-Martin. (Ans. 7 .) The Examiner also makes no findings to support combining the teachings of these references in a manner that maps "device" consistently or to adequately explain a skilled person's inferences and creative steps. We, therefore, do not sustain the Examiner's rejection of claim 1 or the rejection of independent claim 11, which recites limitations commensurate with the above-referenced limitations of claim 1. We also do not sustain the Examiner's rejections of 3, 7-10, and 13-16, which stand with their respective independent claims. DECISION For the above reasons, the Examiner's rejection of claims 1, 3, 7-11, and 13-16 is reversed. REVERSED 6