Ex Parte Poppitt et al

Patent Trial and Appeal Board

May 24, 2017

12670943 (P.T.A.B. May. 24, 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.
12/670,943 01/27/2010 Alan G. Poppitt RYM-36-2290 6479
23117 7590 05/26/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
OBEID, FAHD A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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 ALAN G. POPPITT and JAN-OLOF A. MANNBY
Appeal 2015-003515
Application 12/670,9431
Technology Center 3600
Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE (37 C.F.R. § 41.50(b)).
1 Appellants identify British Telecommunications pic as the real party in
interest. Br. 3.
Appeal 2015-003515
Application 12/670,943
THE INVENTION
Appellants’ “present invention is directed to an internet telephony
system and a method for the metering of calls in an internet protocol
telephony system” (Spec. 1).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method of metering a communication between users in an
internet protocol (IP) telephony system, including the steps of:
using SIP telephony control messages to control IP telephony
communication between two or more users; and
metering the communication on the basis of one or more SIP
metering control message from at least one of the users to control the
metering.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Altberg et al. US 2007/0162334 A1 July 12, 2007
(“Altberg”)
The following rejections are before us for review.
Claims 1—14 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Altberg.
Claims 15—27 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Altberg.
Claim 28 is rejected under 35 U.S.C. § 102(e) as being anticipated by
Altberg.
FINDINGS OF FACT
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1. Altberg discloses:
For example, the system may send a message (e.g., through
email, a web-based user interface for the callee (seller), a voice
mail, an instant message, etc) to the callee about the call and the
identified period of time (e.g., 4-hour time window) so that the
callee (seller) may indicate to the system within the identified
period of time (e.g., next 4 hours) that the callee (seller) is
ready for the call.
Altberg | 89.
2. Altberg discloses:
In one embodiment, the user devices/phones support one or
more real time communication capabilities, such as VoIP using
Session Initiation Protocol (SIP) which may support video and
instant-messaging applications, IP phone, regular phone over
VoIP service, Bluetooth wireless phone, USB phone, software
based phone, and other forms of IP telephony.
Altberg 1213.
3. Altberg discloses:
For example, once a call starts, the system metes out the time
that has been bought. When the time limit, for example, 60
minutes, is up, the system tells both parties on the phone that
the time is up. The system then prompts the buyer to add more
money to buy a second package, or go to per minute pricing, or
end the call, or let them talk further for free, according to the
continuation policy of the call which is specified by the callee
(seller) in the listing (e.g., specified during the creation of the
listing).
Altberg 1107 (emphasis added).
ANALYSIS
35 U.S.C. § 102 REJECTION
Each of independent claims 1,15, and 28 requires in one form or
another, “metering the communication on the basis of one or more SIP
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Application 12/670,943
metering control message from at least one of the users to control the
metering.”
The Examiner found that Altberg discloses, “using SIP telephony (See
Altberg: Para 213 (VoIP using Session Initiation Protocol (SIP) which may
support video and instant-messaging applications)) control messages to
control IP telephony communication between two or more users; (See
Altberg: Para 89, Fig 6, 7 and 8). . . Final Act. 4.
Appellants argue,
Although SIP is well known as a protocol for setting up and
managing IP telephone calls, it is not known to use SIP
messages for metering a communication. Appellant submits
that “metering the communication on the basis of one or more
SIP metering control message from at least one of the users to
control the metering” is not disclosed by Altberg. That is,
Altberg does not disclose this use of SIP.
(Br. 9).
We agree with Appellants. Claim 1 requires, “metering the
communication on the basis of one or more SIP metering control message
from at least one of the users to control the metering.”
We find error under an anticipation rejection (Final Act. 4) that the
messaging disclosed in paragraph 89 of Altberg meets the claim limitation of
“metering the communication on the basis of one or more SIP metering
control message from at least one of the users to control the metering.” That
is, Altberg at paragraph 89 discloses the system may send a message via,
e.g., an instant message “to the callee about the call and the identified period
of time (e.g., 4-hour time window) so that the callee (seller) may indicate to
the system within the identified period of time (e.g., next 4 hours) that the
callee (seller) is ready for the call.” (FF 1). But, this notification deals only
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Application 12/670,943
with when the call is to occur, and not how long, the latter of which would
support the claim requirement of “metering.” The Examiner also found that
Altberg discloses using SIP telephony to send instant messages. (Final Act.
4; FF 2). But, nothing in these passages discloses, either explicitly or
inherently, that when the system “tells both parties on the phone that the
time is up,” that that message is a SIP telephony message. (FF 3). “A claim
is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987), cert, denied, 484 U.S. 827 (1987).
Since claims 2—14 and 16—27 depend from one of claims 1 and 15,
and since we cannot sustain the rejection of claims 1 and 15, the rejection of
the dependent claims likewise cannot be sustained.
Pursuant to 37 C.F.R. § 41.50(b) (2006) we enter a new grounds of
rejection.
We reject claims 1—28 as unpatentable under 35 U.S.C. § 103(a) as
being obvious over Altberg.
The messaging disclosed in paragraph 107 (FF 3) of Altberg meets the
claim limitation of “metering the communication on the basis of one or more
SIP metering control message from at least one of the users to control the
metering.” Nothing in claim 1 requires that the metering be accomplished
by a server. Altberg at paragraph 107 discloses “once a call starts, the
system metes out the time that has been bought. When the time limit, for
example, 60 minutes, is up, the system tells both parties on the phone that
the time is up.” (FF 3). The Examiner also found that Altberg discloses
using SIP telephony to send instant messages. (Final Act. 4; FF 2). We find
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the one having ordinary skill in the art would know to use SIP telephony to
tell the parties that their time is up by using, for example, an instant
message, since it will give the parties effective notice while also allowing
the call to continue uninterrupted.
Claims 2 and 16.
We adopt the Examiner’s finding (Final Act. 5, 10) concerning the
disclosure by Altberg charging/not-charging to the buyer in the user
interface as disclosed in paragraph 80 and the converted call change status in
paragraph 249.
Claims 3 and 17.
Appellants’ Specification does not specifically define the term,
“single logical SIP session,” nor does it utilize the term contrary to its
customary meaning. We thus construe the term “single logical SIP session”
to mean software which one-time binds two logic units. We find that
Altberg discloses such a session by disclosing “[w]hen the time limit, for
example, 60 minutes, is up, the system tells both parties on the phone that
the time is up.” (FF 3). That message is metering-related and is sent when
both parties/logic units are bound by the server in a single telephony session.
Claims 6 and 19.
We adopt the Examiner’s findings concerning Altberg “(See Altberg:
Para 67 (a purchased call with a time limit is interrupted/dropped before the
time limit is reached, the caller can continue the call by requesting a re­
connection with a time window))” (Final Act. 6). We further find that in
paragraph 107, a metering control message is sent to both users notifying
“both parties on the phone that the time is up. The system then prompts the
buyer to add more money . . . .” (FF 3). Thus, if no action is taken “in
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response to” the metering control message notification, the communication
may be terminated, i.e., “time is up”.
Claims 11 and 24.
We adopt the Examiner’s analysis citing to Altberg’s paragraphs 66,
107, 138, 213. (Final Act. 7). Also, the Specification does not specifically
define the term, SIP INFO message, nor does it utilize the term contrary to
its customary meaning. We thus construe this term as a message sent via
SIP containing information. We find that the instant message sent on SIP
would thus meet the limitation of SIP INFO.
Claims 4, 5, and 7.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
on claims 4, 5, and 7 under 35 U.S.C. § 112, 2nd paragraph.
As further explained below, we enter a new ground of rejection on
claim 4 under 35 U.S.C. § 112, second paragraph, on the ground that claim 4
is indefinite. Therefore, the prior art rejection made under 35 U.S.C. § 102
(b) to claims 4, 5, and 7 must fall because it is necessarily based on
speculative assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862—63 (CCPA 1962). We reverse the rejection of claim 4
pro forma because there is considerable speculation into the scope of the
claim. See id. at 862.
Claim 4 recites the definite article “the” in stating, “which the server
receives and examines one or more metering control message . . . .” But,
nowhere in claim 1, on which claim 4 depends is there any recitation of a
server. We will not imply such a device given the myriad of system
configurations which could be possible under the claims as presently recited.
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We thus find claim 4 indefinite. Accordingly, claims 5 and 7
dependent thereon, are rejected under 35U.S.C. § 112, second paragraph, as
indefinite.
Concerning the remaining dependent claims, we adopt the Examiner’s
citations as set forth in the Final Action on pages 5—14.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1—28 under
35 U.S.C. § 102(e).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
REVERSED: 37 C.F.R, $ 41.50(b).
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