Ex Parte Hu et al

Patent Trial and Appeal BoardJun 18, 2018

12849433 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/849,433 08/03/2010 83719 7590 06/18/2018 AT & T Legal Department - FKM AT & T LEGAL DEPARTMENT, ATTN: PATENT DOCKETING ROOM 2A-207 BEDMINSTER, NJ 07921 FIRST NAMED INVENTOR Qingmin J. Hu 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. 2009-1248(40147/16701) 7825 EXAMINER CATTUNGAL, AJAY P ART UNIT PAPER NUMBER 2467 MAIL DATE DELIVERY MODE 06/18/2018 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 QINGMIN J. HU and F AROOQ BARI Appeal2017-010158 Application 12/849,433 Technology Center 2400 Before DENISE M. POTHIER, JASON J. CHUNG, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-20, i.e., all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the real party in interest as AT&T Mobility II, LLC. App. Br. 2. Appeal2017-010158 Application 12/849,433 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns "receiving ... a legacy service request for a terminal disposed in an access area including a plurality of networks" and "determining ... an optimal delivery network from the plurality of networks to handle the legacy service request." Spec. ,r 3, Abstract. 2 Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows: 1. A method, comprising: receiving, by a policy manager, a legacy service request for a terminal disposed in an access area including a plurality of networks, wherein the legacy service request is a request for a telecommunication service that is not native to the plurality of networks due to the legacy service request being outdated; determining, by the policy manager, an optimal delivery network from the plurality of networks to handle the legacy service request; and transmitting, by the policy manager, the legacy service request to the optimal delivery network. App. Br. 14 (Claims App'x). 2 This decision uses the following abbreviations: "Spec." for the Specification, filed August 3, 2010; "Final Act." for the Final Office Action, mailed September 30, 2016; "App. Br." for the Appeal Brief, filed December 30, 2016; "Ans." for the Examiner's Answer, mailed May 24, 2017; and "Reply Br." for the Reply Brief, filed July 24, 2017. 2 Appeal2017-010158 Application 12/849,433 The Prior Art Supporting theÂ§ 103 (a) Rejections As evidence ofunpatentability, the Examiner relies on the following prior art: Bernath US 2008/0101340 Al May 1, 2008 Hawkins et al. US 2008/0148350 Al June 19, 2008 ("Hawkins") Forte-McRobbie et al. US 2008/0317008 Al Dec. 25, 2008 ("Forte-McRobbie") Ramachandran et al. US 2010/0099412 Al Apr. 22, 2010 (''Ramachandran'') Sharma et al. US 2011/0202270 Al Aug. 18, 2011 ("Sharma") (filed Dec. 28, 2010) Pawar et al. US 2011/0255516 Al Oct. 20, 2011 ("Pa war") (filed Apr. 15, 2010) The Rejections on Appeal Claims 1, 10, and 18 stand rejected under 35 U.S.C. Â§ 112 ,r 2 as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. 3 Final Act. 2-3. Claims 1, 2, 4, 7, 10, 14, 16, and 18-20 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Ramachandran and Bernath. Final Act. 4--5. Claims 3 and 15 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Ramachandran, Bernath, and Pawar. Final Act. 6. 3 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. Â§ 112, e.g., to renameÂ§ 112's subsections. Because Application 12/849,433 was filed before the AIA's effective date for applications, this decision refers to the pre-AIA version of Â§ 112. 3 Appeal2017-010158 Application 12/849,433 Claims 5, 6, and 17 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ramachandran, Bernath, and Forte-McRobbie. Final Act. 6-7. Claims 8 and 9 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ramachandran, Bernath, and Sharma. Final Act. 7-8. Claims 11-13 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ramachandran, Bernath, and Hawkins. Final Act. 8-9. ANALYSIS We have reviewed the rejections in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability underÂ§ 112 ,r 2 and Â§ 103(a). We adopt the Examiner's findings and reasoning in the Final Office Action and Answer. See Final Act. 2-9; Ans. 2--4. We add the following to address and emphasize specific findings and arguments. TheÂ§ 112 f 2 Rejection of Claims 1, 10, and 18 Section 112's second paragraph requires that the specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. Â§ 112 i12. Due to the need for "particular[ity ]" and "distinct[ ness ]," claim language that "is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention" warrants a rejection underÂ§ 112 ,r 2. In re Packard, 751 F.3d 1307, 1311, 1313 (Fed. Cir. 2014); see Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re 4 Appeal2017-010158 Application 12/849,433 Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that "[t]he legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope"); In re Moore, 439 F.2d 1232, 1235 (CCP A 1971) (requiring "a reasonable degree of precision and particularity" in claims). Here, independent claims 1, 10, and 18 include the following limitation: "wherein the legacy service request is a request for a telecommunication service that is not native to the plurality of networks due to the legacy service request being outdated." App. Br. 14--16 (Claims App'x). The Examiner determines that "[i]t's not clear if it is the 'legacy service' that is outdated or the legacy service 'request' that is outdated." Final Act. 3; see Ans. 2-3. Appellants argue that "the claim language and Specification make it abundantly clear to one skilled in the art that there is not an outdated 'request' (such as a request made too long ago)" and "the request is associated with an outdated service." App. Br. 4. More particularly, Appellants contend the Specification makes clear that: (1) "the limitation 'legacy service' means a circuit switched, non-Internet Protocol (IP), service that may be carried out over a 2G/3G network"; and (2) "an Internet Protocol (IP) packet switched service may be carried out over a L TE network and is distinct from a legacy service." Reply Br. 4. Further, Appellants assert that the Specification "clearly defines the scope of the 'legacy service' limitation by clearly outlining what is meant by the term 'legacy service' (e.g. circuit switched, non-IP) and what is not meant by the term 'legacy service' (e.g. IP packet switched)." Id. 5 Appeal2017-010158 Application 12/849,433 The Examiner identifies two plausible constructions for the "wherein" limitation, i.e., as relating to an "outdated" service or an "outdated" request. Final Act. 3; see Spec. ,r,r 1-2, 15-16, 19, 31-35, 44--46, 56, Title, Figs. 1 a-1 d, 3--4. If a claim limitation is "amenable to two or more plausible claim constructions, the US PTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable ... as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). Consequently, we sustain the Â§ 112 ,r 2 rejection of claims 1, 10, and 18. 4 TheÂ§ 103(a) Rejection of Claims 1, 2, 4, 7, 10, 14, 16, and 18-20 INDEPENDENT CLAIMS 1, 10, AND 18 Appellants argue that the Examiner erred in rejecting claims 1, 10, and 18 because Bernath fails to disclose or suggest the "wherein" limitation. App. Br. 5-7; see Reply Br. 6-7. More specifically, Appellants assert that Bernath "use[s] legacy, or outdated networks to work with new services," while the claimed invention "use[ s] a plurality of networks to handle legacy, 4 We note that the Specification does not include the word "outdated." Thus, in the event of continued prosecution, the Examiner should consider whether the Specification provides written-description support for the "wherein" limitation, i.e., the phrase "legacy service request being outdated," and the applicability of a rejection under 35 U.S.C. Â§ 112 ,r 1. Moreover, according to Appellants, "legacy service request being outdated" ( emphasis added) is purportedly supported by paragraphs 2, 29, 31, and 44 of the Specification. App. Br. 2 (citing Spec. ,r,r 2, 29, 31, 44). Although other portions of the Specification may support this limitation, we note the cited paragraphs do not support this limitation. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane) (explaining that a description that merely renders the invention obvious does not satisfy the written-description requirement). 6 Appeal2017-010158 Application 12/849,433 or outdated service requests." App. Br. 6. In addition, Appellants contend that Bernath discloses "allowing the new service request of the new [push- to-talk] PTT devices to access services or functions that are part of an outdated, legacy network system" and "fails to disclose a situation where the network is attempting to handle an outdated or legacy service request." Id. at 6-7 (citing Bernath ,r,r 9, 49). Appellants' arguments do not persuade us of Examiner error because the Examiner finds that Bernath discloses push-to-talk (PTT) devices that "access[] outdated legacy services and functions." Ans. 3 (citing Bernath ,r,r 9, 49); see Final Act. 4--5 (citing Bernath ,r,r 9, 49). Bernath describes PTT devices as "packet switched end-user devices" with IP addresses. Bernath ,r,r 1, 39. Bernath distinguishes PTT services from "circuit-switched cellular services." Id. ,r 4. Bernath discloses an embodiment where an enhanced proxy provides PTT devices with services "from legacy telecommunications networks," for example, a public switched telephone network (PSTN) with operator and voicemail services. Id. ,r,r 6-9, 32, 48--49, Figs. 1, 2A-2B. Consequently, Bernath teaches or suggests the "wherein" limitation in claims 1, 10, and 18. Hence, we sustain theÂ§ 103(a) rejection of the independent claims. In the Reply Brief-and for the first time on appeal-Appellants attempt to distinguish the claims from Bernath by arguing that the claims require handling a request for a legacy service "among a plurality of networks when the corresponding legacy network is not included in the plurality of networks." Reply Br. 6-7. This new argument is not responsive to an argument in the Answer, and Appellants have not shown good cause 7 Appeal2017-010158 Application 12/849,433 for us to consider it. See Reply Br. 6-7. Thus, we decline to consider the argument. See 37 C.F.R. Â§ 41.4I(b )(2); see also Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative) (discussing procedural difficulties with belated arguments). We note, however, that Appellants' belated claim interpretation excludes the preferred embodiments. See Spec. ,r,r 15-56, Figs. la-Id, 3-6. "Such an interpretation is rarely, if ever, correct." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). DEPENDENT CLAIMS 2, 4, 7, 14, 16, 19, AND 20 Claims 2, 4, and 7 depend directly from claim 1; claims 14 and 16 depend directly from claim 1 O; and claims 19 and 20 depend directly or indirectly from claim 18. Appellants do not argue patentability separately for these dependent claims. App. Br. 4--7; Reply Br. 6-7. Because Appellants do not argue the claims separately, we sustain theÂ§ I03(a) rejection of these dependent claims for the same reasons as the independent claims. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). TheÂ§ 103(a) Rejection of Claim 5 Claim 5 depends indirectly from claim 1 and reads as follows (with formatting added for clarity): 5. The method of claim 4, wherein when the service data is incompatible with the optimal delivery network, the method further comprises: redirecting the service data to a network component to configure the service data into a compatible format. App. Br. 14 (Claims App'x). Appellants argue that the Examiner erred in rejecting claim 5 because Forte-McRobbie "fails to show any determination regarding whether any 8 Appeal2017-010158 Application 12/849,433 service data is 'incompatible"' and "fails to show any 'redirection' of service data." App. Br. 10. In particular, Appellants contend that Forte-McRobbie discloses "converting data between different IP and non-IP formats" and "is merely concerned with data format conversion." Reply Br. 8-9 ( citing Forte-McRobbie ,r,r 74--81, Fig. 2). Further, Appellants assert that the Examiner "improperly interpret[ s] F orte-McRobbie to teach limitations it does not describe." Id. at 9. Appellants' arguments do not persuade us of Examiner error because the Examiner finds that Forte-McRobbie discloses that: (1) "IP voice traffic can be converted to a current circuit switched format via [a] VoIP channelized router"; and (2) "voice traffic in a circuit switched format can be converted to an IP format by [the] VoIP channelized router." Ans. 3 (quoting Forte-McRobbie ,r 64); see Final Act. 7 (citing Forte-McRobbie ,r 64). The Examiner explains that "the determination is being made that the circuit switched format is incompatible with the IP format and as a result of the determination[,] the circuit switched format is being converted to IP format and vice versa." Ans. 3--4. An obviousness analysis "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). A person of ordinary skill "must be presumed to know something" about the art "apart from what the references disclose." In re Jacoby, 309 F.2d 513,516 (CCPA 1962). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int 'l, 550 U.S. at 421. Accordingly, a person of ordinary skill would appreciate that Forte-McRobbie's conversions occur due to incompatibilities between IP traffic and non-IP traffic. 9 Appeal2017-010158 Application 12/849,433 Further, Forte-McRobbie discloses that the VoIP channelized router communicatively couples (1) IP network telephones to one another in a local IP network and (2) IP network telephones to non-IP network telephones in a remote non-IP network, e.g., a circuit-switched network. Forte-McRobbie ,r,r 64, 66, Fig. 1. The VoIP channelized router includes various components, and when the router forwards IP traffic to a non-IP network, the data are directed to the components in the router that accomplish conversion instead of the components that do not. Id. ,r,r 67----69. Consequently, F orte-McRobbie teaches or suggests claim 5 's "redirecting" limitation. See Final Act. 7; Ans. 3--4; see also Spec. ,r,r 32, 37, 45. Because Appellants' arguments do not persuade us of Examiner error, we sustain theÂ§ 103(a) rejection of claim 5. TheÂ§ 103(a) Rejections of Claims 3, 6, 8, 9, 11-13, 15, and 17 Claims 3, 6, 8, and 9 depend directly or indirectly from claim 1; and claims 11-13, 15, and 17 depend directly or indirectly from claim 10. For these dependent claims, Appellants assert that the additionally cited secondary references do not "cure the deficiencies of Ramachandran and Bernath discussed above" for the independent claims. App. Br. 8-9, 11-12. Appellants' assertions do not amount to a separate patentability arguments. The rules "require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (citing 37 C.F.R. Â§ 4I.37(c)(l)). Because Appellants do not argue the claims separately, we sustain the Â§ 103(a) rejections of these dependent claims for the same reasons as the independent claims. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 10 Appeal2017-010158 Application 12/849,433 DECISION We affirm the rejection of claims 1, 10, and 18 under 35 U.S.C. Â§ 112 if 2. We affirm the rejections of claims 1-20 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 11