Ex Parte Burke et al

Patent Trial and Appeal Board

Jan 3, 2018

11262097 (P.T.A.B. Jan. 3, 2018)

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.
11/262,097 10/28/2005 Paul M. Burke 82211867 8335
56436 7590 01/05/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
GOLDBERG, ANDREW C
ART UNIT PAPER NUMBER
2100
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL M. BURKE, GREGORY R. EVANS,
SCOTT McGLASHAN, DAVID R. ISAACSON,
SANDRA L. SHILLINGER, and GERALD W. WINSOR
Appeal 2016-003256
Application 11/262,097
Technology Center 2100
Before BRUCE R. WINSOR, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—24, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 25—27 are cancelled.
See Prelim. Amend. 10 (Oct. 15, 2013).
We reverse.
1 The real party in interest identified by Appellants is Hewlett-Packard
Development Company, LP, which is a wholly owned affiliate of Hewlett-
Packard Company, and is managed by HPQ Holdings, LLC. App. Br. 2.
Appeal 2016-003256
Application 11/262,097
RELATED APPEALS
Although not identified by Appellants (see App. Br. 3), the present
application was the subject of Appeal No. 2011-003630, in which a panel of
this Board affirmed the Examiner’s rejection of claims 1—25. The Decision
in that Appeal was mailed August 12, 2013, and is referred to herein as the
“’630 Decision” or “’630 Dec’n.”
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to coordinating telephony and
web services. Claim 1, which is illustrative, reads as follows:
1. A method for coordinating telephony and web
services, comprising:
creating, by a session manager in a device, a telephony
session for an incoming call, including assigning a session
identification (ID) to the telephony session;
generating, by the session manager, a call control XML
(ccXML) script based on information of the incoming call;
embedding a custom tag in the ccXML script to extend a
feature of the ccXML script to a web service application;
parsing, by a telephony scripting language parser in the
device, the ccXML script generated by the session manager,
including locating the custom tag in the ccXML script
associated with the web service application to identity a request
for the web service application;
using the session ID of the telephony session to store and
retrieve session context of the telephony session in a context
repository; and
invoking the web service application by using the session
ID to retrieve the session context of the telephony session and
using the retrieved session context as input to the web service
application to coordinate events between the telephony session
and the web service application.
2
Appeal 2016-003256
Application 11/262,097
Claims 1—242 stand rejected under 35 U.S.C. § 102(b)3 as being
anticipated by Putman et al. (US 2008/0086564 Al; filed Jan. 14, 2003;
published Apr. 10, 2008; hereinafter “Putman”).4 See Final Act. 3—10.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed June 26, 2015; “Reply Br.” filed Feb. 4, 2016) and the
Specification (“Spec.” filed Oct. 28, 2005, as amended Aug. 28, 2009) for
the positions of Appellants, and the Final Office Action (“Final Act.” mailed
Jan. 29, 2015) and Answer (“Ans.” mailed Dec. 9, 2015) for the reasoning,
findings, and conclusions of the Examiner.
DISPOSITIVE ISSUE
The dispositive issue presented by Appellants arguments is whether
the Examiner errs in finding Putman discloses
using the session ID of the telephony session to store and
retrieve session context of the telephony session in a context
repository; and invoking the web service application by using
2 Appellants’ arguments address claim 25. See, e.g., App. Br. 14. However,
claim 25 is cancelled. See Prelim. Amend. 10.
3 Ah rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011 (“pre-AIA”).
Final Act. 2.
4 The version of Putman published as US 2008/0086564 Al has a
publication date after the filing date of Appellants’ application. However,
Putman was also published as WO 2003/061242 Al on July 24, 2003, on the
same application (PCT/US03/01087) as US 2008/0086564 Al, more than
one year prior to Appellants’ filing date. Appellants do not traverse
Putman’s availability as prior art under § 102(b). See generally App. Br.;
Reply Br. Accordingly, we treat any apparent discrepancy as ministerial or
clerical. For consistency with Appellants’ and the Examiner’s articulated
positions, we refer herein to the figures and paragraphs of US 2008/0086564
Al when discussing Putman.
3
Appeal 2016-003256
Application 11/262,097
the session ID to retrieve the session context of the telephony
session and using the retrieved session context as input to the
web service application to coordinate events between the
telephony session and the web service application
(emphasis added) (the “using and invoking steps”), as recited in claim l.5
ANALYSIS
“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 Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). “The identical invention must be shown in as complete
detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868
F.2d 1226, 1236 (Fed. Cir. 1989), abrogated on other grounds as recognized
by Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1148 (Fed. Cir.
2011). “These elements must be arranged as in the claim under review, but
this is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990) (citations omitted).
The Examiner finds Putman discloses the invoking step. See Final
Act. 4 (using and invoking steps) (citing Putman || 170, 211, 216—234,
246); see also Ans. 10—11 (additionally citing Putman || 36, 75, 81, 144,
147, 150, 186—199, 213, 456, Fig. 5). The Examiner explains that, in order
to anticipate the using and invoking steps of claim 1, “Putman merely needs
to have a session ID and context as one of the inputs for the web service
application.” Ans. 10.
5 Appellants’ arguments raise additional issues. Because the identified issue
is dispositive of the appeal, we do not reach the additional issues.
4
Appeal 2016-003256
Application 11/262,097
Appellants contend as follows:
[T]he claim interpretation by the Examiner that “Putman merely
needs to have a session ID and context as one of the inputs for
the web service application” is incorrect. Claim 1 specifically
recites “invoking the web service application by using the
session ID to retrieve the session context of the telephony
session and using the retrieved session context as input to the
web service application to coordinate events between the
telephony session and the web service application.” As such, in
claim 1, the session ID is used to retrieve the session context of
the telephony session, and the retrieved session context of the
telephony session is used as input to the web service
application.
Reply Br. 10—11. We agree with Appellants.
The Examiner’s finding is based on an incorrect claim construction.
Claim 1 explicitly recites that the session ID is used to retrieve the session
context of the session. Although Putman discloses that context information,
including session IDs, may be stored in a persistent store (see Putman
11 170, 179, 200, 213, 223), none of the passages cited by the Examiner
explicitly discloses that the session ID is used to retrieve the session context
from the persistent store. Further, the Examiner has provided no explanation
as to why such a feature would be inherent in Putman’s disclosure.
Accordingly, we are constrained by this record to not sustain the
rejection of claim 1 for anticipation by Putman.6 For similar reasons, we do
not sustain the rejection of independent claims 7, 15, and 21, which recite
6 We have only considered the anticipation rejection before us. We express
no opinion as to whether any claims are obvious under 35 U.S.C. § 103(a)
over Putman alone, or in combination with other prior art such as
Bondarenko et al. (US 2004/0083479 Al; Apr. 29, 2004), Besaw et al. (US
6,567,852 Bl; May 20, 2003), and Skytt et al. (US 2004/0082346 Al; Apr.
29, 2004) (see ’630 Dec’n 2).
5
Appeal 2016-003256
Application 11/262,097
similar limitations to the using and invoking steps of claim 1, and claims 2—
6, 8—14, 16—20, and 22—24, which depend, directly or indirectly, from claims
1,7, 15, and 21, respectively.
DECISION
The decision of the Examiner to reject claims 1—24 is reversed.
REVERSED
6