D'Arcy, Paul et al.

Patent Trials and Appeals Board

Aug 11, 2020

2019002439 (P.T.A.B. Aug. 11, 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.
12/500,756 07/10/2009 Paul D'Arcy 909648-US-
NP/AVA025PA
2973
136582 7590 08/11/2020
STEVENS & SHOWALTER, LLP
Box AVAYA Inc.
7019 Corporate Way
Dayton, OH 45459-4238
EXAMINER
JOHNSON, JOHNESE T
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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):
pair_avaya@firsttofile.com
pto@sspatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL D’ARCY and SEAMUS HAYES
____________________

Appeal 2019-002439
Application 12/500,756
Technology Center 2100
____________________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–13 and 15–28. Appellant has canceled claim 14. See Amdt 9
(filed July 16, 2014). We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm in part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Avaya Inc. as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“contact center interfaces.” Spec. 1:4. More particularly, Appellant
describes using a search engine interface to request information (or
assistance) from a contact center wherein the returned data to the search
query includes links that “can directly initiate an interactive communications
session with a contact center resource.” Spec. 2:31–3:2.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer-implemented method of providing a user’s
computer system with access to a resource of a contact center,
comprising the steps of:
(a) serving, by a search engine system, a search engine
graphical user interface to the user’s computer system for
searching for information on one or more websites;
(b) receiving, by the search engine system, a search query
from the user’s computer system via said graphical user
interface;
(c) sending, by the search engine system, a request based
on said search query, to the contact center;
(d) receiving, by the search engine system from the contact
center in response to said request, data enabling a contact center
link comprising an indicator of a network address to be provided
to said user, wherein said contact center link, when activated by
said user’s computer system, initiates a voice or video telephony
session between the user’s computer system and the resource of
the contact center, wherein the user’s computer system was not
participating in a telephony session with the contact center before
activation of the link; and
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(e) returning, by the search engine system, said contact
center link to said user’s computer system as part of a response
to said search query.

The Examiner’s Rejections2
1. Claims 1, 4, 5, 7–13, and 15–28 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Higgins et al. (US
2009/0182810 A1; July 16, 2009 ) (“Higgins”) and Matthews et al. (US
2004/0139156 A1; July 15, 2004) (“Matthews”).3 Final Act. 3–23.
2. Claims 2, 3, and 6 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Higgins, Matthews, and Lu et al. (US
2007/0185858 A1; Aug. 9, 2007) (“Lu”). Final Act. 23–25.

2 The Examiner had rejected claims 1, 18, and 19 under pre-AIA 35 U.S.C.
§ 112, second paragraph, for lack of antecedent basis regarding “said contact
center link” and “the contact center.” Final Act. 2. In the Advisory Action
(mailed May 17, 2018), the Examiner states “[t]he examiner agrees that the
claims do contain antecedent basis for both of these phrases.” Adv. Act. 1.
In both the Appeal Brief and Reply Brief, Appellant states their
understanding that, in light of the Examiner’s comments in the Advisory
Action, the rejection of claims 1, 18, and 19 has been withdrawn. See
Appeal Br. 13 n.1; Reply Br. 2 n.1. This is consistent with the Examiner’s
statement in the Answer that the applicable rejections on appeal are the
rejections under pre-AIA 35 U.S.C. § 103(a). See Ans. 3, 22.
3 We note that the statement of rejection does not include claim 9, but that
the body of the rejection substantively includes claim 9. See Final Act. 12.
Appellant does not claim to have been prejudiced by the Examiner’s
omission of claim 9 in the statement of rejection. Accordingly, we treat the
Examiner’s typographical error as harmless.
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ANALYSIS4
Claims 1–10, 12, 13, and 15–19
In rejecting claim 1, inter alia, the Examiner relies on the combined
teachings and suggestions of Higgins and Matthews. Final Act. 3–5. In
particular, the Examiner finds Higgins teaches a search engine system that
presents a graphical user interface into which a user may provide a search
query and provides results (in response to the search query) that include
links that may initiate voice or video telephony sessions between the user’s
computer and a resource associated with the provided result. Final Act. 3–4
(citing Higgins ¶¶ 38–44, Fig. 2). Additionally, the Examiner finds
Matthews teaches a search engine sending a request based on a search query
to a contact center and receiving data enabling a contact center link
comprising an indicator of a network address to be provided to the user
submitting the search query. See Final Act. 4–5 (citing Matthews ¶ 96,
Fig. 3).
Appellant argues Matthews fails to teach a search engine sending a
request based on a search query or a contact center receiving, by the search
engine, data enabling a contact center link. Appeal Br. 13–16; Reply Br. 2–
4. Instead, Appellant asserts there is no search engine (or its equivalent)
taught by Matthews. Appeal Br. 15. Additionally, Appellant argues that
Figure 5 of Matthews, as relied on by the Examiner in the Answer, does not

4 Throughout this Decision, we have considered the Appeal Brief, filed
July 17, 2018 (“Appeal Br.”); the Reply Brief, filed February 1, 2019
(“Reply Br.”); the Examiner’s Answer, mailed December 3, 2018 (“Ans.”);
and the Final Office Action, mailed January 11, 2018 (“Final Act.”), from
which this Appeal is taken.
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teach a search engine because the objects available for selection are already
tied to a specific product. Reply Br. 3–4.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee’s
invention to a person having ordinary skill in the art. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
As discussed above, we understand the Examiner’s rejection to rely
on the combined teachings of Higgins and Matthews. See Final Act. 3–5;
see also Adv. Act. 2 (“The examiner disagrees and maintains that the
combination of Higgins and Matthews teaches [the disputed limitations].”).
As the Examiner explains, “Higgins is cited for teaching a search engine
where the user submits a request and is provided with results and a contact
center link to a user, as seen in figure 2 [(of Higgins)].” Adv. Act. 2; see
also Appeal Br. 16 (acknowledging the teachings of Higgins). The
Examiner further explains that “[i]n combination with Matthews, sending a
request based on a query to the contact center and receiving a contact center
link via the search engine is taught.” Adv. Act. 2 (emphasis added). As
such, Appellant’s arguments do not apprise us of error as they relate to the
individual teachings of Higgins and Matthews rather than the combined
teachings of the references, as articulated by the Examiner.
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Moreover, the Examiner cumulatively finds Matthews also teaches a
search engine. Ans. 25–26 (citing Matthews ¶¶ 110–115, Figs. 5–8).5 The
Examiner explains Matthews describes a search engine “because it [(the
disclosed helptrain application)] is a program that searches for and identifies
items in a database that correspond to keywords or characters specified by
the user.” Ans. 26.
Figure 5 of Matthews is illustrative and is reproduced below.

5 To the extent Appellant asserts the Examiner’s reliance on Figure 5 of
Matthews constitutes an undesignated new ground of rejection (see Reply
Br. 3), that is a petitionable matter not properly before the Board. See
37 C.F.R. § 41.40(a) (“Any request to seek review of the primary examiner's
failure to designate a rejection as a new ground of rejection in an examiner’s
answer must be by way of a petition to the Director”); see also Manual of
Patent Examining Procedure (MPEP) § 706.01 (9th ed. Rev. 08.2017,
Jan. 2018) (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”).
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Figure 5 of Matthews shows a display screen of the helptrain
application. Matthews ¶ 110. Although shown as a list of supported
products displayed on the display screen (224, 226, 228, 230), Matthews
describes that the selection may be from various methods. Matthews ¶ 110.
In addition, we note that in the list of facilitator help features (222), there is a
button FAQ Search. See Matthews Fig. 5 (222). A search of frequently
asked questions (FAQs) also is suggestive of a search engine.
Appellant also argues that Matthews teaches away from being
combined with Higgins. Appeal Br. 16–17. Specifically, Appellant asserts
Higgins “includes a non-human intermediary between the person requesting
help and the person providing help” whereas Matthews states a goal of the
disclosed approach is to provide direct and instantaneous assistance to users.
Appeal Br. 16–17 (citing Matthews ¶¶ 15, 30). As such, Appellant argues
that one of ordinary skill in the art “would be discouraged from pursuing a
path that adds additional steps and/or entities between a user submitting a
request and the user connecting with a human based on the request.” Appeal
Br. 17.
“A reference may be said to teach 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 by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted).
“[T]he ‘mere disclosure of more than one alternative’ does not amount to
teaching away from one of the alternatives where the reference does not
‘criticize, discredit, or otherwise discourage the solution claimed.’”
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015)
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(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)); see also In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (explaining that “just because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes”) (quotation marks and
citations omitted).
Contrary to Appellant’s assertions, Matthews does not discredit or
discourage the use of a “non-human intermediary” between a user requesting
help and a resource providing help. As the Examiner finds, Matthews
describes the use of an application (the SOS or helptrain application)
“through which the user submits an initial search request and facilitates a
live help session.” Ans. 26. Accordingly, we are unpersuaded that
Matthews teaches away from being combined with Higgins.
Appellant also argues that the Examiner’s proposed combination
would change Higgins’ principle of operation. Appeal Br. 18–19; Reply
Br. 5–7. In particular, Appellant asserts links provided in the results to the
search query in Higgins (i.e., advertising halos) are not generated “based on”
a particular search query but are instead predetermined. Appeal Br. 18–19;
Reply Br. 5–7. Appellant argues that to provide links based on a particular
search query would require a substantial reconstruction of Higgins’ design
and operating environment. Appeal Br. 19; Reply Br. 6–7.
“‘The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.’”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
Here, we disagree with Appellant that the proposed combination
would change Higgins’ principle of operation. As an initial matter, we find
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Higgins’ links are in response to a request based on the search query. For
example, as shown in Figure 2 of Higgins, the returned links (e.g., a
particular marketing agent of a specified brand of motorcycles) are based on
the search query (e.g., BCZ Motors). See Higgins ¶ 38, Fig. 2. Moreover,
we note that Higgins’ halo population process, wherein an advertiser can
specify parameters regarding the delivery of links that provide a connection
to personnel, but is provided ahead of time (see Appeal Br. 19) is not
precluded by the language of the independent claims. Thus, Appellant’s
arguments are not commensurate with the scope of claim 1 and, as such, do
not demonstrate error in the Examiner’s rejection of those claims. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant relies on similar arguments with respect to the Examiner’s
rejection of independent claims 18 and 19. See Appeal Br. 20–21. Thus, for
similar reasons to those discussed regarding claim 1, we sustain the
Examiner’s rejection of independent claims 18 and 19. In addition, we
sustain the Examiner’s rejection of claims 2–10, 12, 13 and 15–17, which
depend directly or indirectly therefrom and were not argued separately with
particularity. See Appeal Br. 19, 28.

Claim 11
Claim 11 depends from claim 1 and recites “wherein said contact
center link when activated, initiates a voice or video telephony session
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between the user’s computer system and a predetermined queue of agents of
the contact center selected in response to said request.” (Emphasis added.)
Appellant argues that rather than identifying a “predetermined queue
of agents” in response to the particular request, Matthews, as relied on by the
Examiner, only selects one student (i.e., agent) for connection with each
user. Appeal Br. 19–20; Reply Br. 7–8.
As relied upon by the Examiner, Matthews describes a help or
information request is sent to a student or helper. See Matthews ¶ 96. The
student then sends an IP address to the user to establish a more direct
connection. Matthews ¶ 96, Fig. 3. Although Matthews also describes the
students or helpers are screened prior to being trained to provide assistance
(Matthews ¶ 100), such prescreening does not teach initiating a session
between a user’s computer system and a predetermined queue of agents, as
recited in claim 11.
Accordingly, we do not sustain the Examiner’s rejection of claim 11.

Claims 20–23, 27, and 28
Claim 20 is reproduced below with the disputed limitation
emphasized in italics:
20. A computer-implemented method of providing a user’s
computer system with access to a resource of a contact center,
comprising the steps of:
(a) receiving, by a contact center system, from a search
engine, a request based on a search query submitted to the search
engine by the user’s computer system;
(b) determining, by the contact center system from said
request, an identity of at least one selected resource of the
contact center based on stored rules;
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(c) sending, by the contact center system, to the search
engine, in response to said request, data enabling a contact center
link comprising an indicator of a network address, to be provided
to said user’s computer system, whereby said contact center link,
when activated by said user’s computer system, will initiate a
voice or video telephony session between the user’s computer
system and said selected resource of the contact center, wherein
the user’s computer system was not participating in a telephony
session with the contact center before activation of the link;
(d) receiving, by the contact center system from said user’s
computer system, a telephony session initiation from which said
selected resource may be identified; and
(e) directing, by the contact center system, said telephony
session to said selected resource.
Thus, independent claim 20 (as well as independent claims 27 and 28)
is similar to independent claim 1 (and independent claims 18 and 19,
respectively) but is from the perspective of the contact center.
Appellant asserts that Higgins, as relied on by the Examiner, does not
teach a contact center system determining an identity of a selected resource
of the contact center based on stored rules. Appeal Br. 21–22; Reply Br. 9–
10. Instead Appellant argues Higgins teaches a service provider selects
advertisers whose links are provided to the user and that the service provider
is not associated with the advertisers. Appeal Br. 21–22. In other words,
contrary to the claim language that requires an entity (i.e., a contact center)
to determine the identity of one of that entity’s resources (i.e., a resource of
the contact center) based on stored rules, Higgins teaches a different entity
(i.e., a service provider) identifying a resource (i.e., advertiser) of a contact
center.
The Examiner does not respond to Appellant’s argument. See Ans. 25
(grouping together the responses related to all of the independent claims).
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Further, in the rejection of claim 20, the Examiner relies on paragraph 56 of
Higgins to teach the disputed limitation. Final Act. 16 (citing Higgins ¶ 56).
The cited portion of Higgins describes evaluating advertisers based on
various sub-categories. We understand the evaluation of advertisers to be
part of the halo population process described in Higgins. See Higgins,
Fig. 5. Moreover, we understand the halo population process to be
performed by the advertisers and not by the service provider (i.e., search
engine) of Higgins. Also, the Examiner does not provide persuasive
technical reasoning or explanation how Higgins’ evaluation of advertisers in
combination with the teachings of Matthews teaches the disputed limitation.
Based on this record and for the reasons discussed supra, we are
persuaded by Appellant’s arguments. Accordingly, we do not sustain the
Examiner’s rejection of independent claim 20. For similar reasons, we do
not sustain the rejection of independent claims 27 and 28, which recite
commensurate limitations. In addition, we do not sustain the Examiner’s
rejections of claims 21–26, which depend directly or indirectly therefrom.

Claims 24–266
Claim 24 depends from claim 20 and recites an additional step
“carried out after having received a voice or video telephony session
initiation from the user's computer system, of amending, by the contact
center system, the stored rules.”

6 Although we do not sustain the Examiner’s rejection of base claim 20, we
address Appellant’s arguments regarding dependent claims 24–26 in the
interest of compact prosecution.
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In rejecting claim 24, the Examiner finds Matthews discussion of
application and data store nodes being used to intelligently route help
requests to the proper helper (i.e., contact center agent), as well as other
operating system type selection rules teaches the limitation of claim 24. See
Final Act. 21 (citing Matthews ¶ 130).
Appellant argues there is no teaching or suggestion that any selection
rules are amended after a communication session has been initiated. Appeal
Br. 25; Reply Br. 12–13.
We agree with Appellant that based on this limited disclosure of
Matthews, there is no teaching of amending the “operating system type
selection rules” after a telephony session has been successfully initiated.
Moreover, the Examiner does not substantively respond to Appellant’s
argument or provide persuasive evidence or technical reasoning that
Matthews amends the selection rules.
Accordingly, we do not sustain the Examiner’s rejection of claim 24.
For similar reasons, we do not sustain the Examiner’s rejection of claims 25
and 26, which each depend from claim 24.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–10, 12, 13 and
15–19 under pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 11 and 20–28
under pre-AIA 35 U.S.C. § 103(a).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7, 8–
13, 15–28
103(a) Higgins, Matthews 1, 4, 5, 7,
8–10, 12,
13, 15–19
11, 20–28
2, 3, 6 103(a) Higgins, Matthews,
Lu
2, 3, 6
Overall
Outcome
1–10, 12,
13, 15–19
11, 20–28

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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED IN PART