GENBAND US LLC

Patent Trials and Appeals BoardNov 18, 2020

2019004058 (P.T.A.B. Nov. 18, 2020)

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. 14/472,688 08/29/2014 Alex Nerst 47856.126 1277 106874 7590 11/18/2020 Haynes and Boone, LLP (47856) 2323 Victory Avenue, Suite 700 Dallas, TX 75219 EXAMINER EDWARDS, JAMES A ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 11/18/2020 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEX NERST and BOAZ ZILBERMAN ____________ Appeal 2019-004058 Application 14/472,688 Technology Center 2400 ____________ Before NORMAN H. BEAMER, STEVEN M. AMUNDSON, and MICHAEL T. CYGAN, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 77–96, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest as Genband US LLC. Appeal Br. 3. Appeal 2019-004058 Application 14/472,688 2 STATEMENT OF THE CASE The Invention According to the Specification, the invention “relates to peer-to-peer networks and, more particularly, but not exclusively, to a battery operated device communicating over a peer-to-peer network.” Spec. 1:10–11.2 The Specification explains that a “typical peer-to-peer network requires each peer device to continuously present itself to other peers, and to continuously interrogate the presence of other peers.” Id. at 15:18–19. The Specification also explains that “[c]ontinuously performing peer operations would quickly drain the battery of a battery operated device, such as a mobile device, a portable cellular telephone, a cellular PDA, etc.” Id. at 15:28–29. Exemplary Claim Independent claim 77 exemplifies the claims at issue and reads as follows (with formatting added for clarity): 77. A method for use in a peer-to-peer network, the method comprising: registering a plurality of peer devices at a registration server; and registering a peer server at the registration server; facilitating communications between a first peer device of the plurality of peer devices and a second peer device of the plurality of peer devices by the peer server, and 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed August 29, 2014; “Final Act.” for the Final Office Action, mailed April 11, 2018; “Appeal Br.” for the Appeal Brief, filed November 7, 2018; “Ans.” for the Examiner’s Answer, mailed February 26, 2019; and “Reply Br.” for the Reply Brief, filed April 25, 2019. Appeal 2019-004058 Application 14/472,688 3 wherein the peer server registers the first peer device in the peer-to-peer network on behalf of the first peer device when the first peer device is in an off-line mode, and wherein the peer server identifies itself to other devices as the first peer device. Appeal Br. 13 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability under 35 U.S.C. § 103(a),3 the Examiner relies on the following prior art: Name Reference Date Emerson US 2003/0008682 A1 Jan. 9, 2003 Mukherjee et al. (“Mukherjee”) US 2004/0006708 A1 Jan. 8, 2004 O’Neill US 2004/0013099 A1 Jan. 22, 2004 Pabla et al. (“Pabla”) US 2004/0162871 A1 Aug. 19, 2004 Bradley et al. (“Bradley”) US 2005/0027871 A1 Feb. 3, 2005 The Rejections on Appeal Claims 77–79, 81–84, 86–90, and 92–96 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pabla, Bradley, and Mukherjee. Final Act. 4–14. Claim 80 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Pabla, Bradley, Mukherjee, and Emerson. Final Act. 14–15. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the effective filing date for Application 14/472,688 predates the AIA’s amendment to § 103, this decision refers to the pre-AIA version of § 103. Appeal 2019-004058 Application 14/472,688 4 Claims 85 and 91 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pabla, Bradley, Mukherjee, and O’Neill. Final Act. 15–16. ANALYSIS We have reviewed the rejections in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner’s conclusions concerning unpatentability under § 103(a). We adopt the Examiner’s findings and reasoning in the Final Office Action and Answer. See Final Act. 2–16; Ans. 4–10. We add the following to address and emphasize specific findings and arguments. The § 103(a) Rejection of Claims 77–79, 81–84, 86–90, and 92–96 CLAIM 77: REGISTERING WHEN IN AN OFF-LINE MODE As noted above, the § 103(a) rejection of claim 77 rests on Pabla, Bradley, and Mukherjee. See Final Act. 4–6. Appellant argues that the Examiner erred in rejecting claim 77 because the combination “does not teach” the following limitation in claim 77: “wherein the peer server registers the first peer device in the peer-to-peer network on behalf of the first peer device when the first peer device is in an off-line mode.” Appeal Br. 8; see Reply Br. 2. Appellant notes that the Examiner cites Mukherjee paragraph 40 as teaching or suggesting the disputed limitation. Appeal Br. 8; see Final Act. 4–6. Appellant quotes the following statements from Mukherjee paragraph 40: “In one embodiment, the subscriber may provide an offline list of members (e.g., names) that the subscriber wishes to authorize to use the [peer-to-peer virtual private network] P2P-VPN service. In this instance, the member list is registered with the service provider 102 prior to any group Appeal 2019-004058 Application 14/472,688 5 communications initiating.” Appeal Br. 8; see Mukherjee ¶ 40. Appellant then contends that “nowhere does it state that the members on the offline list of members are registered while offline.” Appeal Br. 8 (emphasis by Appellant). Appellant also contends that “being registered prior to group communications initiating does not teach or suggest anything about the online or offline state of those members” because “a member can be online and be registered before any group communications are initiated.” Id. Further, Appellant asserts that “the Examiner’s position on the cited portions of Mukherjee conflate users and peer devices so that the cited portions of Mukherjee do not address the first peer device is in an off-line mode.” Reply Br. 2 (emphasis by Appellant). Appellant also asserts that “Mukherjee refers to members and their names, rather than to any devices that may be associated with the members.” Id. at 3 (emphasis by Appellant). Appellant’s arguments do not persuade us of Examiner error because the Examiner correctly finds that: (1) Pabla discloses a peer server registering a first peer device in a peer-to-peer network on behalf of the first peer device; (2) Bradley discloses a peer server acting on behalf of a first peer device in a peer-to-peer network; and (3) Mukherjee discloses registering a first peer device when the first peer device is in an off-line mode. See Final Act. 2–6 (citing Pabla ¶¶ 491, 520; Bradley ¶ 118; Mukherjee ¶¶ 21, 40); Ans. 4–8 (citing Pabla ¶¶ 491, 520; Mukherjee ¶¶ 21, 40–41). Specifically, the Examiner finds that Mukherjee paragraphs 40 and 41 disclose offline registration and online registration, respectively. See Ans. 5–6. Paragraph 40 states, “In one embodiment, the subscriber may provide an offline list of members (e.g., names) that the subscriber wishes to Appeal 2019-004058 Application 14/472,688 6 authorize to use the [peer-to-peer virtual private network] P2P-VPN service.” Mukherjee ¶ 40. Paragraph 41 states, “In a second embodiment, the list of members may be registered online.” Id. ¶ 41. And consistent with those paragraphs, paragraph 48 states, “As discussed above, the member list may be added prior to the session occurring (i.e., at registration),” i.e., when offline, “or subsequently, for example, during a current session,” i.e., when online. Id. ¶ 48. Further, the Examiner finds that Bradley discloses a requesting peer delegating to a gateway peer “its identity and allow[ing] that gateway peer to negotiate and make decisions on its behalf.” Final Act. 5; see Bradley ¶ 118. Next, we turn to Appellant’s arguments about alleged differences between Mukherjee’s “members” and the claimed “devices.” Although Mukherjee describes registering “members,” Mukherjee explains that a member utilizes an end-user device, e.g., a mobile terminal, to participate in a peer-to-peer virtual private network. Mukherjee ¶¶ 18–21, 50, 56, code (57); see id. ¶¶ 5–6, Fig. 5. Mukherjee also explains that a network controller uses IP addresses to establish the peer-to-peer virtual private network. Id. ¶¶ 6, 16, 25, 28, 32–35, 42, 44–45, 47, 53–54, 63. In addition, Mukherjee discloses that in certain circumstances the network controller “already has an IP address” for a member’s end-user device when the member joins a session. Id. ¶ 53. If the network controller “already has an IP address” for a member’s end-user device when the member joins a session, the end-user device has been registered in an off-line mode. See Ans. 5–6. Hence, we disagree with Appellant’s assertion that Mukherjee does not refer to “any devices that may be associated with the members.” See Reply Br. 3; Mukherjee ¶¶ 18–21, 50, 53, 56, code (57). Appeal 2019-004058 Application 14/472,688 7 Thus, we agree with the Examiner’s determination that combining Mukherjee’s teachings about offline registration and Bradley’s teachings about identity delegation with Pabla’s teachings yields the disputed limitation. See Final Act. 4–6; Ans. 4–8. CLAIM 77: COMBINING THE TEACHINGS OF THE REFERENCES Appellant argues that the Examiner erred in rejecting claim 77 because the Examiner “has not provided any factual basis to support [the] reasons to combine Mukherjee with Pabla and Bradley.” Appeal Br. 9; see Reply Br. 4. Appellant also argues that the Examiner has offered conclusory reasoning by “merely stating that it would have been obvious to add a feature of Murkherjee [sic] for the sake of adding the feature of Mukherjee.” Appeal Br. 9. We disagree that the Examiner offers conclusory reasoning regarding a motivation to combine Mukherjee’s teachings with the teachings of the other references. See Final Act. 6; Ans. 9. In particular, the Examiner determines that an ordinarily skilled artisan would have been motivated to combine Mukherjee’s teachings with the teachings of the other references so that “audio, video, text, and data, may be communicated privately, as well as securely between those authorized users in a particular group” via a peer-to- peer virtual private network. Final Act. 9 (citing Mukherjee ¶ 19); see Mukherjee ¶ 19. Consistent with that determination, Mukherjee discloses a peer-to- peer virtual private network (P2P-VPN) that differs from and overcomes disadvantages with conventional services. See Mukherjee ¶¶ 5, 15, 37, 70, 74, 77. Mukherjee states that the P2P-VPN “allow[s] the owner of such service to have private and secure communication with other persons over Appeal 2019-004058 Application 14/472,688 8 the Internet.” Id. ¶ 36; see id. ¶¶ 17, 19. Mukherjee also states that the P2P- VPN “allow[s] any individual who has access to the Internet” from “any location to initiate and own a P2P-VPN.” Id. ¶ 37; see id. ¶ 47. Moreover, Mukherjee explains that the P2P-VPN “enables [secure group] communication to go over the Internet” for “significantly lower costs” than conventional services. Id. ¶ 70. The “law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). The motivation to combine may come “from the prior art reference itself, from the knowledge of one of ordinary skill in the art, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (citations omitted). For example, “an implicit motivation to combine” may result from a desire to make a product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Here, the motivation to combine comes from the reference itself, i.e., from Mukherjee’s disclosure that the P2P-VPN provides private and secure group communication and improves upon conventional services. See, e.g., Mukherjee ¶¶ 19, 36–37; see also id. ¶¶ 5, 15, 17, 70, 74, 77; Final Act. 6; Ans. 9. Appellant argues that providing private and secure group communication “says nothing regarding why” an ordinarily skilled artisan “would have modified the combination of Pabla and Bradley” with Mukherjee’s teachings about offline registration. Appeal Br. 9. Appeal 2019-004058 Application 14/472,688 9 In response, the Examiner explains that an ordinarily skilled artisan would have been motivated to apply Mukherjee’s teachings about offline registration to the other references because the skilled artisan would have “realize[d] that adding devices when they are still offline allows them to immediately use the services, saving time for the user.” Ans. 9. Thus, the Examiner provides “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellant asserts that the Examiner’s reasoning lacks support in Mukherjee because “Mukherjee does not teach ‘adding devices when they are still off-line,’ or the alleged technical benefit.” Reply Br. 4. We disagree with that assertion because, as discussed above, Mukherjee discloses registering devices in an off-line mode. See Ans. 5–6; Mukherjee ¶¶ 40–41, 48, 53. An ordinarily skilled artisan would have recognized the technical benefit because a “person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). SUMMARY FOR CLAIM 77 For the reasons discussed above, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 77 for obviousness based on Pabla, Bradley, and Mukherjee. Thus, we sustain the § 103(a) rejection of claim 77. INDEPENDENT CLAIMS 87 AND 96 AND DEPENDENT CLAIMS 78, 79, 81–84, 86, 88–90, AND 92–95 Appellant does not argue patentability separately for independent claims 87 and 96 or dependent claims 78, 79, 81–84, 86, 88–90, and 92–95. Appeal 2019-004058 Application 14/472,688 10 See Appeal Br. 7–11; Reply Br. 2–5. Thus, we sustain the § 103(a) rejection of these claims for the same reasons as claim 77. See 37 C.F.R. § 41.37(c)(1)(iv). The § 103(a) Rejections of Claims 80, 85, and 91 Appellant does not argue patentability separately for dependent claims 80, 85, and 91. See Appeal Br. 7–11; Reply Br. 2–5. Thus, we sustain the § 103(a) rejections of these claims for the same reasons as claim 77. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject claims 77–96. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 77–79, 81–84, 86–90, 92–96 103(a) Pabla, Bradley, Mukherjee 77–79, 81–84, 86–90, 92–96 80 103(a) Pabla, Bradley, Mukherjee, Emerson 80 85, 91 103(a) Pabla, Bradley, Mukherjee, O’Neill 85, 91 Overall Outcome 77–96 Appeal 2019-004058 Application 14/472,688 11 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED