Ex Parte Singh et al

Patent Trial and Appeal Board

Aug 4, 2017

13190698 (P.T.A.B. Aug. 4, 2017)

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.
13/190,698 07/26/2011 Sushant SINGH JCE-5524-31 2681
96355 7590 08/08/2017
NIXON & VANDERHYE, P.C. / Vonage
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSHANT SINGH, DANIEL KEIL, MARK LOESER,
MICHAEL SOUTH, and PASQUALE VILLANI
Appeal 2016-003569
Application 13/190,6981
Technology Center 2600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—6 and 8—23.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
INVENTION
The invention is directed to establishing voice over Internet protocol
communications session with a mobile device. Spec. 12. Claim 1 is
illustrative of the invention and is reproduced below:
1 According to Appellant, the real party in interest is Vonage Network, LLC.
App. Br. 3.
2 Claims 7 and 24—27 have been canceled.
Appeal 2016-003569
Application 13/190,698
1. A method of establishing a telephony link between
a calling party and a called party’s mobile device, comprising:
receiving, at a first proxy server, a request from a calling
party to establish a telephony link to a called party's mobile
device;
sending, to a third party server, a request that a first
message be sent to the called party’s mobile device;
receiving, at a second proxy server, an Internet Protocol
(IP) telephony system registration request from a software
application on the called party’s mobile device that was caused
to run in response to receipt of a push notification sent by the
third party server to the called party’s mobile device;
causing a second message identifying the second proxy
server to be delivered to the first proxy server; and
establishing a telephony link between the calling party and
the called party’s mobile device using information passing
between the first and second proxy servers.
REJECTIONS AT ISSUE
Claims 1, 8, 11—13, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Jung (U.S. Pat. App.
Pub. No. 2005/0266869 Al; published Dec. 1, 2005; hereinafter “Jung”),
Shigeta (U.S. Pat. App. Pub. No. 2009/0264144 Al; published Oct. 22,
2009; hereinafter “Shigeta”), and Taylor (U.S. Pat. App. Pub. No.
2002/0142769 Al; published Oct. 3, 2002; hereinafter “Taylor”). Final Act.
2-7.
Claims 2, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jung, Shigeta, Taylor, and Nomura
(U.S. Pat. App. Pub. No. 2004/0243629 Al; published Dec. 2, 2004). Final
Act. 7—8.
Claims 3, 9, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jung, Shigeta, Taylor, and
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Appeal 2016-003569
Application 13/190,698
Kennamer (U.S. Pat. App. Pub. No. 2002/0133601 Al; published Sept. 19,
2002). Final Act. 9-10.
Claims 4—6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jung, Shigeta, Taylor, and Haukilahti
(U.S. Pat. App. Pub. No. 2007/0004382 Al; published Jan. 4, 2007). Final
Act. 11-12.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jung, Shigeta, Taylor, and
Samarasinghe (U.S. Pat. App. Pub. No. 2008/0253362 Al; published Oct.
16,2008). Final Act. 11-12.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jung, Shigeta, Taylor, and
Hakkarainen (U.S. Pat. App. Pub. No. 2009/0106389 Al; published Apr. 23,
2009). Final Act. 11-12.
ANALYSIS
Rejections of Claims 1—6 and 8-23 under 35 U.S.C. § 103(a)
The Examiner finds Shigeta’s start notification of push to talk (PTT)
communication teaches the limitation “push notification” recited in
independent claims 1, 13, and 22. Final Act. 3^4; Ans. 3.
Appellants argue a push-to-talk service is technically different from a
push notification provided from a push notification service or third party
server as recited. App. Br. 12—13; Reply Br. 2—3. We agree with
Appellants.
To determine what claims 1,13, and 22 are directed to, the scope of
“push notification” must be decided under its broadest reasonable
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Appeal 2016-003569
Application 13/190,698
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citation omitted). Here, although the Specification
provides a non-limiting example of Apple Push Notification Service, the
Specification does state “push notifications are rigidly formatted messages
that can be received by such devices anytime they are running and connected
to either the Internet or a cellular data network.” Spec. 116. The
Specification notes, however, that other push notification services that have
different message formats and different capabilities could also be used. Id.
117.
We also turn to a dictionary definition to provide additional guidance
regarding the ordinary and customary meaning of the relevant terms as
understood in the art. A noted electrical engineering dictionary defines
“push technology” as “[d]ata distribution, such as that over the Internet, in
which users receive information, usually in the form of advertisements,
without requesting it.” Wiley Electrical & Electronics Engineering
Dictionary 615 (2004). A “push to talk operation,” however, is defined as
“[communication in which the talker must push or press a button for voice
transmission. Used, for instance, when both ends are utilizing the same
frequency.” Id.
After reviewing the Specification and the dictionary, we determine
that Shigeta’s “push to talk” start notification fails to teach the limitation
“push notification” as recited in claims 1,13, and 22. Although “push to
talk” does include the word “push,” the aforementioned Specification and
dictionary definitions illustrate that the Examiner’s construction eliminates
the reasonableness prong in the broadest reasonable construction. See
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MPEP § 2111 (“The broadest reasonable interpretation does not mean the
broadest possible interpretation. Rather, the meaning given to a claim term
must be consistent with the ordinary and customary meaning of the term
(unless the term has been given a special definition in the specification), and
must be consistent with the use of the claim term in the specification and
drawings.”).
To be sure, Shigeta’s PTT start notification in paragraphs 68 and 69 is
just that: a notification. But to say that this notification somehow constitutes
a push notification as the term is understood in the art by an ordinarily
skilled artisan simply strains reasonable limits on this record.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of (1) independent claim 1; (2) independent claims 13
and 22 that recite commensurate limitations; and (3) the dependent claims
for similar reasons.
DECISION
The Examiner’s decision rejecting claims 1—6 and 8—23 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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