Ex Parte Beckstrom et alDownload PDFPatent Trial and Appeal BoardJul 9, 201310675371 (P.T.A.B. Jul. 9, 2013) 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. 10/675,371 09/30/2003 Robert Beckstrom 6065/88622 5983 24628 7590 07/10/2013 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER DAYE, CHELCIE L ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 07/10/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte ROBERT BECKSTROM and ANTHONY DEZONNO _____________ Appeal 2011-002472 Application 10/675,371 Technology Center 2100 ______________ Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and DANIEL N. FISHMAN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002472 Application 10/675,371 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1 through 20. We reverse. INVENTION The invention is directed to method of monitoring a communication session between two parties which, based upon the monitoring, engages a third party. See paragraphs 12 and 30 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A method for improving transactions in a communication system, comprising: automatically monitoring an ongoing text data session between first and second parties in an established transaction in the communication system; and automatically conferencing a third party into the transaction as an additional participant in the transaction in response to the automatic monitoring of the data session between the first and second parties. REJECTIONS AT ISSUE The Examiner has rejected claims 1, 2, 4 through 9, 11, 12, and 14 through 20 under 35 U.S.C. § 103(a) as obvious over Fedorov (US 6,047,060; Apr. 4, 2000), Eilbacher (US 6,724,887 B1; Apr. 20, 2004, filed Jan. 24, 2000) and Shaffer (US 6,363,145 B1; Mar. 26, 2002). Answer 4- 121. 1 Throughout this opinion we refer to the Appeal Brief dated June 23, 2010, Reply Brief dated November 5, 2010, and the Examiner’s Answer mailed on September 1, 2010. Appeal 2011-002472 Application 10/675,371 3 The Examiner has rejected claim 3 under 35 U.S.C. § 103(a) as obvious over Fedorov, Eilbacher, Shaffer and Beck (US 6,138,139; Oct. 24, 2000). Answer 13. The Examiner has rejected claim 10 under 35 U.S.C. § 103(a) as obvious over Fedorov, Eilbacher, Shaffer and Miloslavsky (US 6,021,428; Feb. 1, 2000). Answer 14-15. The Examiner has rejected claim 13 under 35 U.S.C. § 103(a) as obvious over Fedorov, Eilbacher, Shaffer and Elazar (US 6,542,602 B1; Apr. 1, 2003). Answer 15-16. ISSUE Appellants argue on pages 8 through 12 of the Appeal Brief that the Examiner’s rejection of independent claims 1, 11, and 20 is in error because the references do not teach automatically conferencing (joining or engaging) a third party in response to monitoring as claimed. The issue raised by these arguments which is dispositive of the appeal is: did the Examiner err in finding that the combination of Fedorov, Eilbacher and Shaffer teaches or suggests automatically conferencing (joining or engaging) a third party to a text data session in response to an automatic monitoring of the session as recited in independent claims 1, 11, and 20? We note Appellants present additional arguments with respect to other dependent claims. We do not however reach these arguments as the issue presented with respect to the independent claims is dispositive of the Appeal. Appeal 2011-002472 Application 10/675,371 4 ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion the Examiner erred in finding that the combination of Fedorov, Eilbacher and Shaffer teaches or suggests automatically conferencing (joining or engaging) a third part to a text data session in response to automatic monitoring of the session, as recited in independent claims 1, 11, and 20. The Examiner interprets the term automatic as “acting or done as if by machine; mechanical” Answer 17. Appellants’ arguments, further, refine the meaning of automatic to differentiate an automatic operation from an operation which happens based upon a user decision. Brief 10. The Examiner finds that, based upon Fedorov’s teaching of an automatic call distribution system, “it would not be unheard of for other features within the system, such as monitoring and conferencing, to be performed automatically.” Answer 17. This finding appears to be based upon speculation and the Examiner has not provided any objective evidence to support the finding that automatic conferencing in response to monitoring is known. Further, the Examiner finds that Schaffer teaches automatic monitoring and conferencing of a third party. Answer 20-21. We concur, but the Examiner has not shown, nor do we find, that Schaffer teaches automatic conferencing in response to monitoring. Accordingly, we will not sustain the Examiner’s rejection of independent claims 1, 11, and 20 as the Examiner has not demonstrated that all of the claimed elements were known or obvious at the time of the invention. Neither has the Examiner found the other references of record teach this limitation. Accordingly we will not Appeal 2011-002472 Application 10/675,371 5 sustain the Examiner’s rejections based upon Fedorov, Eilbacher, and Shaffer in combination with the other references of record. DECISION The decision of the Examiner to reject claims 1 through 20 is reversed. REVERSED ke Copy with citationCopy as parenthetical citation