VOIP-PAL.COM, INC.

Patent Trials and Appeals Board

Mar 30, 2021

2020000223 (P.T.A.B. Mar. 30, 2021)

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.
15/421,058 01/31/2017 JOHAN EMIL VIKTOR BJ¿RSELL 4278-003.PCT.US.CON2 5817
20551 7590 03/30/2021
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
VAN, JENKEY
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHAN EMIL VIKTOR BJÖRSELL and
MAKSYM SOBOLYEV
____________

Appeal 2020-000223
Application 15/421,058
Technology Center 2400
____________

Before JOHN A. JEFFERY, BETH Z. SHAW, and
SCOTT E. BAIN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–15. 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. Appellant identifies the real party in interest as VOIP-
PAL.COM, INC. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention handles emergency calls from a caller in a voice
over IP system. To this end, the invention produces a routing message
including an emergency response center identifier and the temporary Direct
Inward Dialing (DID) identifier for receipt by a routing controller that
establishes a route between the caller and the emergency response center.
See Abstract. Claim 1 is illustrative:
1. A process for routing emergency communications having a caller
identifier associated with a caller and a callee identifier associated with a
callee, the process comprising:

receiving a routing request including the caller identifier and the
callee identifier;

using the caller identifier to identify a dialing profile associated with
the caller from among a plurality of dialing profiles that are persistently
stored in a memory, each dialing profile including a username associated
with a particular caller, and the dialing profile including an emergency call
identifier and an emergency response center identifier associated with the
caller;

wherein the emergency call identifier and the emergency response
center identifier are stored in the dialing profile prior to any emergency call
being made;

when the callee identifier matches the emergency call identifier:

producing a routing message for receipt by a call controller operable
to cause a route to be established between the caller and an emergency
response center, the routing message having a first portion and a second
portion, the first portion including the emergency response center identifier;
and

initiating a search of a database for a record associated with the caller,
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wherein each of the records stored in the database comprise a username
and a pre-associated identifier, and

when the search finds a record having the same username as included
in the dialing profile of the caller and a pre-associated identifier, causing the
second portion to include the pre-associated identifier from the record, and

when the search does not find a record having the same username as
included in the dialing profile of the caller, associating a temporary identifier
with the caller and causing the second portion to include the temporary
identifier.

THE REJECTIONS
The Examiner rejected claims 1–4, 6–9, and 11–14 under 35 U.S.C. §
103 as unpatentable over Krivorot (US 2008/0063153 Al; published Mar.
13, 2008) and Ryan (US 6,744,858 Bl; issued June 1, 2004). Ans. 3–15.2
The Examiner rejected claims 5, 10, and 15 under 35 U.S.C. § 103 as
unpatentable over Krivorot, Ryan, and Sin (US 2007/0121884 Al; published
May 31, 2007). Ans. 15–16.

THE OBVIOUSNESS REJECTION OVER KRIVOROT AND RYAN
Regarding independent claim 1, the Examiner finds that Krivorot
routes emergency communications by, among other things, (1) receiving a
routing request including caller and callee identifiers; (2) using the caller
identifier to identify a dialing profile associated with the caller from among
plural dialing profiles stored in a subscriber database; (3) producing the

2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 30,
2019 (“Appeal Br.”); (2) the Examiner’s Answer mailed August 6, 2019
(“Ans.”); and (3) the Reply Brief filed October 7, 2019 (“Reply Br.”).
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recited routing message; and (4) performing the recited steps when a
database search does and does not find a record with the same username in
the caller’s dialing profile. Ans. 3–6. Although the Examiner acknowledges
that each of Krivorot’s dialing profiles does not include (1) a username
associated with a particular caller; (2) an emergency call identifier, and (3) a
emergency response center identifier associated with the caller, where the
latter two identifiers are stored in the dialing profile before any emergency
call is made, the Examiner cites Ryan as teaching these features in
concluding that the claim would have been obvious. Ans. 6–7.
Appellant argues that the cited prior art does not disclose the recited
plural dialing profiles, each of which is not only associated with a particular
caller, but also includes an emergency call identifier associated with the
caller that is stored in the dialing profile before any emergency call is made.
Appeal Br. 10–14; Reply Br. 3–5. According to Appellant, the recited
emergency call identifier can be different for different callers and, therefore,
configurable for each user via the caller’s specific dialing profile unlike the
cited prior art that uses “911” system wide. Appeal Br. 11–13; Reply Br. 3–
5.
Appellant also argues that the recited combination must follow the
recited order of steps where the caller identifier is used to identify an
associated dialing profile before determining whether the callee identifier
matches the particular caller’s emergency call identifier in that profile.
Appeal Br. 14–15; Reply Br. 5–9. According to Appellant, Krivorot’s
emergency call is detected at the IP-PBX softswitch before the 911 call
server receives the call and determines whether the incoming call matches
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the “9-1-1 rule,” and, therefore, any dialing profile identification occurs after
the “9-1-1” matching step. Appeal Br. 14–15; Reply Br. 7–9.
Appellant further contends that there is no motivation to provide the
missing claim elements or re-order the recited steps to render the claimed
invention obvious. Appeal Br. 15–17; Reply Br. 9. According to Appellant,
the cited prior art systems do not need to store an emergency call identifier
in a profile or record because the identifier value of “911” is fixed and
universal for all users. Appeal Br. 16. Appellant adds that given Krivorot’s
(1) detecting that the fixed emergency call identifier “911” was dialed, and
(2) forwarding the call to a server to apply the “9-1-1 rule” to that call, there
is no reason to perform Krivorot’s “9-1-1 rule” matching step based on a
caller’s dialing profile and, therefore, no reason to reorder the recited steps
under the proposed combination. Appeal Br. 16–17.

ISSUES
I. Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Krivorot and Ryan collectively would have taught or suggested (1)
using a caller identifier in a received routing request to identify a dialing
profile associated with the caller from among plural stored dialing profiles,
where each dialing profile includes (a) a username associated with a
particular caller; (b) an emergency call identifier, and (c) a emergency
response center identifier associated with the caller, where the latter two
identifiers are stored in the dialing profile before any emergency call is
made; and (2) performing the remaining recited steps, including producing
the recited routing message, when the callee identifier matches the
emergency call identifier?
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II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
We begin by noting the key sequence of events that occurs in claim 1.
First, a routing request with two identifiers, namely those of a caller and
callee, is received. The caller identifier in this received request is then used
to identify a dialing profile associated with the caller from among plural
stored dialing profiles. This identified dialing profile includes (1) a
username associated with a particular caller; (2) an emergency call
identifier; and (3) an emergency response center identifier associated with
the caller—the latter two identifiers stored in the profile before any
emergency call is made.
After the caller’s dialing profile is identified, the recited process then
determines whether the received callee identifier matches the emergency call
identifier in that profile. When there is a match, the remaining steps of
claim 1 are performed, including producing the recited routing message and
initiating the recited database search for a caller-associated record.
Based on this functionality, the routing request must be received
before the caller identifier in that request is used to identify that caller’s
dialing profile. Then, the emergency call identifier in that identified profile
is compared with the received callee identifier to determine whether they
match. In other words, this match determination must occur after the
caller’s dialing profile is identified.
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We emphasize this sequence, for the Examiner’s statements in
Answer that the recited steps are “not directly tied to each other” and,
therefore, ostensibly do not require a specific order (Ans. 20, 23) are
problematic for the reasons noted above. Nevertheless, the Examiner’s error
in this regard is harmless, for the Examiner’s findings and conclusions in the
rejection nonetheless reasonably comport with the recited sequence. See
Ans. 3–7.
Notwithstanding the Examiner’s aforementioned inartful statements in
the Answer, the Examiner nonetheless correctly identifies a key conditional
limitation in claim 1, namely that associated with the first “when” clause.
See Ans. 20–21 (noting that the claim recites a condition such that when a
callee identifier matches the emergency call identifier, emergency call
procedures in the rest of the claim are performed). That is, under the terms
of claim 1, various recited steps, including (1) producing the recited routing
message, and (2) initiating the recited database search, are performed when
the callee identifier matches the emergency call identifier.
Our emphasis on the term “when” underscores this conditional
limitation whose subsequent steps are performed only upon satisfying that
condition, namely when the callee identifier matches the emergency call
identifier. We emphasize this point since conditional limitations need not be
met to satisfy a method claim. See Ex parte Schulhauser, Appeal 2013-
007847 (PTAB Apr. 28, 2016) (precedential), at 6–10, 14–15; see also
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MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed.
Rev. 10.2019, June 2020) (citing Schulhauser).3
Therefore, to the extent Appellant contends that the cited prior art
does not teach or suggest the recited steps following the first “when” clause,
including (1) producing the recited routing message, and (2) initiating the
recited database search, when the callee identifier matches the emergency
call identifier (see Appeal Br. 14; Reply Br. 4), such arguments pertain to
limitations that need not occur to satisfy claim 1 and are, therefore, not
commensurate with the scope of the claim.
The same cannot be said, however, for independent claims 6 and 11
that recite an apparatus and computer readable medium whose structure is
capable of performing commensurate steps when the condition is satisfied.
That is, claims 6 and 11 still require structure for performing these functions
should the condition occur. See Schulhauser at 6–10, 14–15; see also MPEP
§ 2111.04(II) (citing Schulhauser).
Nevertheless, we see no error in the Examiner’s reliance on Krivorot
and Ryan for collectively at least suggesting the limitations of claim 1 even
if the recited identifier match condition had to be satisfied to meet the
claim—which it does not. As noted in the Abstract, Krivorot’s system
places emergency calls in a VoIP system. As shown in Krivorot’s Figure 1,
a 911 Service Provider includes a call server that is responsible for setting up
911 calls by, among other things, looking up the customer location in a
subscriber database that maintains data related to emergency responder

3 Although the limitations at issue in Schulhauser were rendered conditional
by reciting the term “if,” we discern no meaningful distinction between the
recitation of “if” and “when” in this context.
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locations (ERLs) and associated endpoints, including phone numbers. See
Krivorot ¶¶ 42, 46, 48.
Krivorot’s system applies certain rules to calls that (1) dial “9-1-1,”
and (2) arrive from IP addresses that are registered as “911 Enable” clients.
Krivorot ¶¶ 74–75. If a call matches the 9-1-1 rule, certain actions are taken
to establish the call between the IP phone and a Public Safety Answering
Point (PSAP). See Krivorot ¶¶ 76–82. As shown in Krivorot’s Figure 2(A),
after receiving a “911” call, the call is routed to “911 Provider Call Server”
that, among other things, (1) identifies the associated endpoint, and (2) looks
up and inserts the caller’s location key in the “From” field. See Krivorot ¶¶
74–82. As shown in Krivorot’s Figures 2(A) and 2(B), the call is then
forwarded to various points within the system infrastructure, and ultimately
to the appropriate PSAP. See Krivorot ¶ 82.
In the rejection, the Examiner maps the recited routing request with its
caller and callee identifiers to the invite message shown in step 2 of
Krivorot’s Figure 2(A). See Ans. 3. The Examiner also finds that this caller
identifier is used to identify a dialing profile associated with the caller from
among plural stored dialing profiles in a subscriber database. Ans. 4 (citing
Krivorot ¶¶ 82, 46, 48).
That this database is a subscriber database as noted in Krivorot’s
paragraph 48 at least suggests that it contains data associated with various
subscribers, including callers. Notably, the subscriber database maintains
data related to ERLs and associated endpoints, including phone numbers.
See Krivorot ¶¶ 42, 46, 48. Therefore, because the 911 call server (1)
identifies the endpoint associated with a particular caller’s 911 call, and (2)
looks up and inserts the caller’s location key—a key that is used to identify
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and index the ERL as noted in Krivorot’s paragraph 71—Krivorot at least
suggests using the caller identifier to identify a dialing profile associated
with the caller from among plural stored dialing profiles in the subscriber
database. See Krivorot Fig. 2(A).
To be sure, Krivorot does not state explicitly that the dialing profiles
in the subscriber database have the recited particulars, namely (1) a
username associated with a particular caller; (2) an emergency call
identifier; and (3) an emergency response center identifier associated with
the caller. Nevertheless, we see no error in the Examiner’s reliance on Ryan
for at least suggesting these stored identifiers, particularly given the
subscriber records in a server database include the subscriber’s name,
address, telephone number, and Emergency Service Number (ESN), which is
something related to 911 that indicates, among other things, the particular
PSAP, police department, EMS service, etc. serving that subscriber when the
subscriber dials 911. See Ryan col. 7, ll. 14–25.
Our emphasis underscores that the subscriber record in this database
includes the ESN associated with that particular subscriber and, therefore,
data that is at least related to the emergency call identifier “911.” That this
data is related to “911” at least suggests that it can include that emergency
call identifier along with its associated information, at least as an obvious
variation. That the information provided in connection with Ryan’s ESN is
an open-ended list that ends with the term “etc.” in Ryan’s column 7, line 24
only underscores the non-limiting forms of information pertaining to an
ESN. To the extent Appellant contends that a subscriber’s stored ESN
somehow cannot include a “911” emergency call identifier in conjunction
with its exemplary related information stored for that particular subscriber
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(see Appeal Br. 12), there is no persuasive evidence on this record to
substantiate such a contention.
We reach this conclusion even assuming, without deciding, that Ryan
assumes that the emergency call identifier is “911” for every subscriber as
Appellant contends (Appeal Br. 12), for nothing in the claim requires that
emergency call identifiers stored in callers’ respective dialing profiles be
different. Accord Ans. 18 (noting this point). Rather, all the claim requires
is each dialing profile has an emergency call identifier—an identifier that
could the same for each caller. That the dialing profile in Appellant’s Figure
9 indicates that the value for the “Emergency Short#” field can be, for
example, “911” underscores that the value of “911” can be used for all
users’ profiles. Nevertheless, even assuming, without deciding, Appellant’s
disclosure contemplates storing different values for different callers in their
respective profiles by using the term “e.g.” in connection with the local
emergency number stored in the dialing profile in Figure 9 as Appellant
contends (Appeal Br. 12), the claim still does not preclude storing the same
emergency call identifier, namely “911,” for all callers in their respective
profiles. Appellant’s arguments in this regard are, therefore, unavailing and
not commensurate with the scope of the claim.
On this record, we see no error in the Examiner’s reliance on Ryan for
teaching the recited dialing profile particulars, and that providing such a
dialing profile for each caller in connection with Krivorot’s subscriber
database would have been at least an obvious variation, particularly since
this database maintains data related to ERLs and their associated endpoints
for subscribers. See Krivorot ¶ 48. That new database records are created
for new subscribers in Ryan’s column 7, lines 18 to 20 at least suggests that
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the associated information in the respective subscriber profiles, including
associated emergency identifiers, is stored before emergency calls are made.
Accord Ans. 6 (noting this point).
We reach this conclusion despite the fact that Krivorot’s “9-1-1 rule”
is applied to 911 calls that are received at a call server as shown in Figure
2(A). See Krivorot ¶¶ 46, 74–75. As shown in connection with step 5 of
Krivorot’s Figure 2(A), after receiving the incoming 911 call, the 911 call
server, among other things, (1) identifies the associated endpoint; (2) looks
up the caller’s location key; and (3) inserts that key in the “From” field. See
Krivorot ¶¶ 74–82. Our emphasis underscores that by identifying the
associated endpoint, Krivorot at least suggests identifying an endpoint
associated with an ERL—endpoints that can include phone numbers
associated with ERLs. See Krivorot ¶¶ 46, 48, 82; Fig. 2(A).
Given this functionality considered in light of Ryan, the cited prior art
at least suggests determining whether the callee identifier matches the
emergency call identifier stored in the caller’s dialing profile as claimed.
That Krivorot’s system applies the “9-1-1 rule” not only to calls that dial
“911,” but also those calls arriving from IP addresses that are registered as
“911 Enable” clients as noted in Krivorot’s paragraph 75 only underscores
this point. See Ans. 21 (noting this caller registration requirement). Given
this requirement, using the caller identifier to (1) identify an associated
dialing profile that includes the emergency call identifier, namely “911,” and
(2) compare that identifier with that of the callee would at least contribute to
verifying whether the caller is authorized to use the “911” service (i.e., the
caller is “911 enabled”) before routing the call.
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Appellant’s contentions regarding Krivorot’s alleged lack of clarity
regarding calls arriving from “911 Enable” clients, as well as Appellant’s
theories regarding Krivorot’s possible implementations of this functionality
(Reply Br. 8–9), are merely speculative and, therefore, unavailing. Where,
as here, Appellant’s contentions and conclusory statements are unsupported
by factual evidence, they have little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe,
Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no
substitute for evidence.”).
Lastly, despite Appellant’s arguments to the contrary (Appeal Br. 15–
17; Reply Br. 9), the Examiner’s proposed combination of Krivorot and
Ryan is supported by articulated reasoning with some rational underpinning
to justify the Examiner’s obviousness conclusion. See Ans. 6–7. In short,
enhancing Krivorot’s dialing profile to include the particular information
recited in claim 1, including the emergency call identifier, in light of Ryan as
the Examiner proposes uses prior art elements predictably according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–4, 6–9, and 11–14 not argued separately with
particularity.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejections of claims 5,
10, and 15. Ans. 15–16. Because this rejection is not argued separately with
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particularity, we are not persuaded of error in this rejection for the reasons
previously discussed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 6–9,
11–14
103 Krivorot, Ryan 1–4, 6–9, 11–
14

5, 10, 15 103 Krivorot,
Ryan, Sin
5, 10, 15
Overall
Outcome
1–15

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