Ex Parte Brunson

Patent Trial and Appeal Board

Dec 21, 2016

13894129 (P.T.A.B. Dec. 21, 2016)

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.
13/894,129 05/14/2013 Gordon R. Brunson 4366YDT-143 8382
48500 7590 12/23/2016
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
SHAH, ANTIM G
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON R. BRUNSON
Appeal 2016-002413
Application 13/894,1291
Technology Center 2600
Before JOHN A. EVANS, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—3 and 5—22, which constitute all of the claims pending in this
application. Claim 4 has been cancelled. Amended Claims App’x 2.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Avaya, Inc. as the real party in interest. App. Br. 2.
2 The Amended Claims Appendix was submitted on June 6, 2015 in
response to a Notification of Non-Compliance. All citations to the Appeal
Brief refer to the Appeal Brief filed on March 23, 2015.
Appeal 2016-002413
Application 13/894,129
THE INVENTION
The disclosed and claimed invention is directed to a “chained parallel
forking contact resolution process.” Abstract.
Claim 1, reproduced below with the disputed limitation emphasized,
is illustrative of the claimed subject matter:
1. A method, comprising:
receiving, by a communication server authoritative for a
second user, a request from a first user to establish a
communication session between at least a first communication
device associated with the first user and a second communication
device associated with a second user;
determining, by the communication server authoritative
for the second user, that an address of record of a third user
different from the first and second users is referenced in a set of
contact resolution preferences of the second user; and
sequencing or bypassing one or more applications in a set
of contact resolution preferences for the third user based on the
address of record of the third user referenced in the contract
resolution preferences of the second user.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Brunson US 2010/0325249 A1 Dec. 23,2010
(hereinafter “Brunson”
or “Brunson ’249”)3 US 2011/0066707 A1 Mar. 17, 2011
Brunson
(hereinafter “Brunson
’707”)
3 Both designations are used by the Examiner. Compare Final Act. 2
(Brunson), with Ans. 3 (Brunson ’249).
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Appeal 2016-002413
Application 13/894,129
REJECTIONS
Claims 1—3 and 5—22 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Brunson ’249 in view of Brunson ’707. Final
Act. 2-9.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 1—3, 6—13, 15—
20, and 22. However, Appellant persuaded us that the Examiner erred in
rejecting claims 5,14, and 21 on the current record.
Claims 1—3, 6—13, 15—20, and 22
Appellant argues the Examiner erred in finding Brunson ’707 teaches
the “sequencing or bypassing” step recited in claim 1. App. Br. 7—10; Reply
Br. 4—6. Although “Appellant agrees that Brunson [’]707 does disclose that
a terminal side application sequence for the called party is based on the
called party’s preferences,” Appellant argues the Examiner erred in finding
Brunson ’707 teaches “a set of contact resolution preferences for the third
user [that] is based on the address of record of the third user.” App. Br.
8; see also Reply Br. 5—6 (arguing Brunson ’707 has only two users).
The Examiner finds Brunson ’249 teaches the “determining” step
recited in claim 1, including the “address of record of a third user different
from the first and second users.” Final Act. 2—3 (emphasis added); see also
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Appeal 2016-002413
Application 13/894,129
Ans. 3^4. The Examiner further finds Brunson ’707 teaches “sequencing or
bypassing,” as recited in claim 1. Final Act. 3^4; Adv. Act. 2-4; Ans. 4—6.
The Examiner determines “it would have been obvious to a person of
ordinary skill in the art to modify Brunson to have [the] feature of
sequencing or bypassing one or more applications in a set of contact
resolution preferences for the third user based on the address of record of the
third user referenced in the contact resolution preferences of the second user
as taught by Brunson ’707.'” Final Act. 4.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellant’s argument focuses on Brunson ’707
and not the combined teachings of both prior art references—including the
Examiner’s uncontested finding4 that Brunson teaches a third user—we are
not persuaded by Appellant’s argument that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of claims 10 and 19, which are argued on the same
grounds (App. Br. 10), and dependent claims 2, 6—9, 11—13, 15—19, 20 and
22, which are not argued separately (App. Br. 12).
4 “If an appellant fails to present arguments on a particular issue ... the
Board will not, as a general matter, unilaterally review those uncontested
aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential).
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Appeal 2016-002413
Application 13/894,129
Claim 3
Appellant argues the Examiner erred in rejecting claim 3. See App.
Br. 10—11. The vast majority of Appellant’s argument focuses on the
teachings of Brunson ’707 with only a single sentence directed toward
Brunson ’294: “[ljikewise, Brunson [’]294 fails to disclose this element of
claim 3.” Id.
The Examiner finds Brunson ’294 teaches the additional limitation
recited in dependent claim 3. Final Act. 4—5.
Because Appellant devotes a single sentence to the prior art reference
relied on by the Examiner and that sentence is no more than a general denial,
we are not persuaded by Appellant’s argument the Examiner erred. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); 37 C.F.R. § 41.37(c)(l)(vii); cf. In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”).
Accordingly, we sustain the Examiner’s rejection of claim 3.
Claims 5, 14, and 21
Claim 5 recites that “the one or more chaining parameters define at
least one application for the third user should be bypassed and wherein the at
least one application that is bypassed for the third user is sequenced in
response to determining that the second user’s communication preferences
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Appeal 2016-002413
Application 13/894,129
require the at least one application.” Amended Claims App’x 2—3 (emphasis
added).
Appellant argues the Examiner erred in finding Brunson ’249 teaches
“that at least one application for the third user be bypassed.” App. Br. 11.
Specifically, Appellant contends “[n]one of the cited paragraphs in Brunson
[’]249 disclose bypassing an application . . . .” Id.
The Examiner concludes that claim 5 does not require bypassing;
instead, the claim limitation requires bypassing or sequencing and the
Examiner’s finding that the prior art teaches sequencing is sufficient. Ans.
7—8. Specifically, the Examiner concludes:
[cjlaims 1 and 14 recite limitations of “sequencing OR bypassing
one or more applications ... [.]” Dependent claims 5, 14 and 21
recite “wherein the at least one application that is bypassed for
the third user is sequenced . . . [.]” In the scenario, where the
claims 1 and 14 are only sequencing one or more applications,
the bypassing application will not happen.
Ans. 7.
Although we agree with the Examiner’s construction with regard to
claims 1 and 14, we conclude the Examiner erred in construing claim 5.
Specifically, although we construe claim 1 to cover either bypassing or
sequencing, claim 5 limits the scope of claim 1 to only bypassing. Because
the Examiner did not make any findings on bypassing, we are persuaded by
Appellant’s argument that, on the current record, the Examiner erred.
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 5, along with the rejections of claims 14 and
21, which recite a limitation commensurate in scope to the disputed
limitations discussed above.
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Appeal 2016-002413
Application 13/894,129
DECISION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1—3, 6—13, 15—20, and 22.
For the above reasons, we reverse the Examiner’s decision rejecting
claims 5, 14, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED-IN-PART
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