VOIP-PAL.COM, INC.Download PDFPatent Trials and Appeals BoardMar 30, 20212020000223 (P.T.A.B. Mar. 30, 2021) Copy Citation 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): patentdocket@tnw.com warren.archibald@tnw.com 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. Appeal 2020-000223 Application 15/421,058 2 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, Appeal 2020-000223 Application 15/421,058 3 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.”). Appeal 2020-000223 Application 15/421,058 4 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 Appeal 2020-000223 Application 15/421,058 5 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? Appeal 2020-000223 Application 15/421,058 6 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. Appeal 2020-000223 Application 15/421,058 7 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 Appeal 2020-000223 Application 15/421,058 8 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. Appeal 2020-000223 Application 15/421,058 9 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 Appeal 2020-000223 Application 15/421,058 10 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 Appeal 2020-000223 Application 15/421,058 11 (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 Appeal 2020-000223 Application 15/421,058 12 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. Appeal 2020-000223 Application 15/421,058 13 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 Appeal 2020-000223 Application 15/421,058 14 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 Copy with citationCopy as parenthetical citation