Ex Parte Sparks

Patent Trial and Appeal BoardMar 22, 2018

12534762 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/534,762 08/03/2009 25297 7590 03/26/2018 Jenkins, Wilson, Taylor & Hunt, P.A. 3015 Carrington Mill Boulevard Suite 550 Morrisville, NC 27560 FIRST NAMED INVENTOR Robert J. Sparks 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. 1322/354/2 1198 EXAMINER FAN, HUA ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 03/26/2018 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): usptomail@jwth.com wehmig@jwth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ROBERT J. SPARKS Appeal2017-008608 Application 12/534,762 Technology Center 2400 Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and AARON W. MOORE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-008608 Application 12/534,762 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1, 3, 4, 6-13, 15, 16, and 18-27. Claims 2, 5, 14, and 17 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. THE INVENTION The claims are directed to session initiation protocol (SIP) dialog identification. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics and a disputed feature of the limitation in bold, is representative of the claimed subject matter: 1. A method for assigning and communicating a session initiation protocol (SIP) dialog identification (ID) in a communications network, the method comprising: at a first SIP entity: receiving a first SIP message associated with a SIP dialog; computing, using fields of the first SIP message, a dialog ID for identifj;ing the SIP dialog for a lifespan of the SIP dialog, wherein the dialog ID is a distinct value computed using a cryptographic hash function, wherein the first SIP message is an INVITE message; generating a second SIP message associated with the SIP dialog, wherein the second SIP message is a non-failure response message to the INVITE message; including the computed dialog ID in the second message; and transmitting the second message to at least one second SIP entity with the computed dialog ID positioned in the message in a manner that triggers the at least one second SIP entity to use the computed dialog ID to identify the SIP dialog for the lifespan of the SIP dialog without requiring the at least one second SIP entity to compute a new dialog ID for each message in the SIP dialog, wherein the computed dialog ID is included in subsequent SIP messages generated by the at least one second SIP entity or the first SIP entity that are associated with the SIP dialog. 2 Appeal2017-008608 Application 12/534,762 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sung Jackson US 2006/0189340 Al US 2009/0293123 Al REJECTIONS Aug. 24, 2006 Nov. 26, 2009 The Examiner made the following rejections: Claims 1, 3, 4, 6-13, 15, 16, and 18-27 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Final Act. 2. Claims 1, 3, 4, 6-13, 15, 16, and 18-27 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Sung and Jackson. Final Act. 3-9. ANALYSIS Appellant's arguments are unpersuasive of Examiner error. We adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-9) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 3-12) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. 35 US.C. Â§ 112, second paragraph The Examiner finds, as recited by the disputed limitation, "[t]he scope of the term 'distinct' is unclear because it is unclear which another value this dialog ID is distinct from." Final Act. 2. Appellant contends the disputed dialog ID finds support in Figure 1 of the drawings and at page 6, lines 18- 31 of the Specification. App. Br. 11. Appellant argues "a person possessing the ordinary level of skill in the art of network communications would know 3 Appeal2017-008608 Application 12/534,762 that a distinct value computed using a cryptographic hash function indicates that the computed value is 'distinguishable to the eye or mind as discrete.'" App. Br. 12 (citing https://www.merriam-webster.com/dictionary/distinct). According to Appellant, "the scope of the term 'distinct' is clear without reciting additional values to be distinct from since the computed Dialog ID is a distinct or discrete value that is included in SIP messages." Id. The Examiner responds, finding Appellant's references to the Specification fail to render the term "distinct" definite because "the scope of the examples cannot be read into the claims." Ans. 11. Appellant replies, arguing "the scope of the term 'distinct' in the claims is clear without reciting additional values to be distinct from." Reply Br. 3. Appellant analogizes the use of the term distinct in claim 1 to its use in the statutory language of 35 U.S.C. Â§ 112, second paragraph requiring "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention" as evidence that the term is definite standing alone. Reply Br. 3 (quoting 35 U.S.C. Â§ 112). We are not persuaded by Appellant's argument. The disputed phrase is that "the dialog ID is a distinct value." Claim 1. Although describing steps used to "compute[] a unique ID value" (Spec. p. 6, 11. 18-31 ), the cited portion of the Specification neither discloses what makes an ID value unique (e.g., unique with respect to what) nor does the Specification use the term distinct or phrase distinct value anywhere much less in describing an ID value that is unique. Appellant's proffered definition is also unavailing as it is unclear what is meant by a dialog ID that is "distinguishable to the eye or mind as 4 Appeal2017-008608 Application 12/534,762 discrete." App. Br. 12. For example, it is unclear what is meant by a discrete dialog ID as opposed to, for example, a non-discrete or continuous value and, to the extent appropriate, where in the Specification there is support for such an interpretation of the disputed distinct terminology. For the reasons discussed above, we sustain the rejection of claim 1 under 35 U.S.C. Â§ 112, second paragraph and, for the same reasons, we sustain the rejection of claims 3, 4, 6-13, 15, 16, and 18-27. 35 USCÂ§ 103(a) Appellant contends Sung's dialog ID includes tags having relative values that vary between agents such that the dialog ID is not for a lifespan of the SIP dialog as required by claim 1. App. Br. 14. The Examiner responds, concluding claim 1 does not require a unique session ID, only that at least one of the tags satisfies the disputed limitation. Ans. 11. We are unpersuaded of Examiner error. Appellant fails to explain why Sung's tags fail to identify the SIP dialog for a lifespan of the SIP dialog. For example, Appellant argues, in Sung, "the second dialog identifier is different from the first dialog identifier because the From and To tags are different (e.g., swapped)." App. Br. 15. However, Appellant fails to explain why either of the individual tags (i.e., the "To" or "remote tag" assigned by the final recipient of the message and, in particular, the "From" or "local tag" assigned by the sender of a message) is not properly interpreted as the disputed "dialog ID." Furthermore, Appellant does not explain why swapping the tags is antithetical to achievement of a use of the tag for identifying the SIP dialog "for a lifespan of the SIP dialog" as required by claim 1. Thus, with reference to Figures 6 and 7 of Sung, the tags "poc_client_a@domain.com" and "conf_uri_cfx@example.domain.com" 5 Appeal2017-008608 Application 12/534,762 are present in both REFER and INVITE messages. Although, as a whole, session connection information P2 differs from session information Q2, both include the same tag identification information, albeit in alternate (i.e., swapped) fields of the messages. Therefore, we disagree with Appellant that swapping the FROM and TO tags results in a failure of the tags to identify the SIP dialog. We are also unpersuaded by Appellant's' argument "a dialog identifier of Sung is not usable by another SIP entity to identify the SIP dialog for the lifespan of the SIP dialog." Appeal Br. 15. In particular, Appellant fails to explain what requirement of identifying a SIP dialog is absent from Sung's FROM and TO tags such that the tags do not perform an identification function. Furthermore, to the extent Appellant's argument is based on the individual tags not being self-sufficient for uniquely identifying a SIP dialog from other SIP dialogs, such argument is not commensurate in scope with claim 1. In particular, the argued limitation only requires "a dialog ID for identifying the SIP dialog for a lifespan of the SIP dialog" such that, for example, partial reliance on tag information in identifying the SIP dialog satisfies the limitation even if used in combination with additional information. Furthermore, Appellant fails to explain why one skilled in the art at the time of the invention would not have understood from Sung's tags, individually and collectively, to include information identifying the SIP dialog for some extended period of time such as the disputed SIP dialog lifespan. Jackson is relied upon by the Examiner for teaching the limitation of "a dialog ID being a distinct value computed using a cryptographic hash function." Final Act. 5. Appellant contends Jackson's cryptographic hash of 6 Appeal2017-008608 Application 12/534,762 call dialog identifiers varies for different messages of a given SIP dialog and, therefore, fails to teach identification of the SIP dialog for the lifespan of the SIP dialog. App. Br. 15-16. The Examiner responds that it is the combination of Sung and Jackson that teaches the disputed limitation, not either reference standing alone. Ans. 12. The Examiner further faults Appellant's argument based on a mechanical combination of the references rather than their combined teachings. Id. Appellant's argument is unpersuasive of error. As found by the Examiner, Sung, not the argued Jackson, teaches or suggests the disputed temporal relationship, i.e., a dialog ID for identifying the SIP dialog for a lifespan of the SIP dialog. Therefore, Appellant's argument that Jackson describes recalculating a cryptographic hash of call dialog identifiers during the lifespan of the SIP dialog rather than including the same hash value in subsequent messages associated with a SIP dialog (App. Br. 15) fails to address the Examiner's finding that Sung teaches the argued limitation (Final Act. 5). "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, we agree with the Examiner that, merely because Jackson discloses recalculating the cryptographic hash does not require that feature (i.e., recalculation of the hash value) be incorporated into the combination in a mechanical fashion. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the 7 Appeal2017-008608 Application 12/534,762 references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425. The artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Thus, contrary to Appellant's contention, the skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" because the skilled artisan is "a person of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007); see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) ("Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness."). Here, Appellant has not demonstrated the Examiner's proffered combination in support of the conclusion of obviousness would have been "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). We are also not persuaded by Appellant's assertions that the prior art teaches away from the combination "because a hash value of Jackson is computed using changing values, including a timestamp 328 and a current load 326." App. Br. 16 (emphases omitted). Teaching an alternative method does not teach away from the use of a claimed method. In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also Ex parte Shuping, No. 2008-0394, 2008 WL 336222, at *2 (BPAI Feb. 5, 2008) ("[T]eaching a way is not teaching away." (citation omitted)). 8 Appeal2017-008608 Application 12/534,762 In particular, "[ o ]bviousness may be defeated if the prior art indicates that the invention would not have worked for its intended purpose or otherwise teaches away from the invention." Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)). The prior art teaches away "when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken" in the claim. GaldermaLabs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). However, a reference that "merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into" the claimed invention does not teach away. Id. Although Jackson applies a cryptographic hash function to changing data, Appellant fails to provide persuasive evidence or argument that Jackson, as disclosed, is so limited as to be inapplicable to unchanging, constant data values or otherwise discourages use of a cryptographic hash function in a method and system according to Sung. Finally, we disagree "the hash value of Jackson is unsuitable for dialog identification purposes." App. Br. 16 (emphases omitted). As discussed above, Appellant's argument is based on an improper mechanical, wholesale incorporation of the teachings of Jackson, including Jackson's time-dependent parameters resulting in a changing hash value, into the teachings of Sung. See Keller, 642 F.2d at 425. For the reasons discussed above, Appellant's contentions in connection with the rejection of claim 1 (App. Br. 13-16) are not persuasive of Examiner error. Appellant's contentions of error in connection with 9 Appeal2017-008608 Application 12/534,762 independent claims 12, 13, 23, 24, and 27 (App. Br. 20-23, 23-27, 31-33, 34--38, and 39--42) are repetitious in substance to those presented in connection with claim 1 and are unpersuasive for similar reasons. Appellant does not provide separate arguments in connection with the rejection of dependent claims 4, 6-8, 11, 16, 18- 20, 25, and 26. App. Br. 17, 28-29, and 38-39. Accordingly, we sustain the rejection of claims 1, 4, 6-8, 11-13, 16, 18-20, and 23-27 under 35 U.S.C. Â§ 103(a) over Sung and Jackson. In connection with dependent claims 3 and 15, Appellant argues "a relative dialog identifier of Sung is not the same as a claimed computed dialog ID (e.g., a dialog ID that is a distinct value computed using a cryptographic hash function)." App. Br. 17, 28. This argument is unpersuasive because (i) the Examiner relies on Jackson, not Sung, for teaching a cryptographic hash function (Final Act. 5), and (ii) Appellant fails to provide sufficient evidence or explanation in support of their contention of non-equivalence. Merely citing a claim limitation and asserting it is not present falls short of identifying an error in the Examiner's rejection as required on appeal. See 37 C.F.R. Â§ 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to 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."). Appellant contends the rejection of claims 9 and 21 is improper for reasons similar to those argued in connection with dependent claims 3 and 10 Appeal2017-008608 Application 12/534,762 15, i.e., Sung "discloses dialog identifier components (e.g., a From tag, a To tag, and a call-ID) in SIP message headers, but not a distinct value computed using a cryptographic hash function." App. Br. 18, 29. This argument is unpersuasive for the reasons discussed above, e.g., the Examiner relies on Jackson, not Sung, for teaching the argued cryptographic hash function. Appellant's contentions of error in the rejection of claims 10 and 22 (App. Br. 18-19, 30) are unpersuasive for similar reasons. Accordingly, we sustain the rejection of claims 9, 10, 21, and 22. DECISION We affirm the Examiner's decision to reject claims 1, 3, 4, 6-13, 15, 16, and 18-27 under 35 U.S.C. Â§ 112, second paragraph We affirm the Examiner's decision to reject claims 1, 3, 4, 6-13, 15, 16, and 18-27 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(f). AFFIRMED 11