Ex Parte Burke et alDownload PDFPatent Trial and Appeal BoardJun 22, 201611262118 (P.T.A.B. Jun. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/262,118 10/28/2005 Paul M. Burke 56436 7590 06/24/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82211849 9012 EXAMINER NGUYEN, TUX ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 06/24/2016 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): hpe.ip.mail@hpe.com mkraft@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, DAVID R. ISAACSON, SANDRA L. SHILLINGER, and GERALD W. WINSOR Appeal2015-001113 Application 11/262, 118 Technology Center 2600 Before THU A. DANG, JAMES R. HUGHES, and JEFFERYS. SMITH, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-001113 Application 11/262, 118 l. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-33, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. INVENTION According to Appellants, the invention provides for "systems and methods based on Web Services standards that allow application to be chained, i.e., linked, together using the context of one application as input to another application" (Spec. 3, 11. 5-7). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary and is reproduced below: 1. A method for telephony service chaining, comprising: invoking a first application to establish a telephony session of a telephone call between participants; in response to the establishing of the telephony session, creating a session ID and session context for the telephony session, wherein the session context includes a list of the participants and is stored in a data storage; during the telephony session, receiving a request from one of the participants in the telephony session for information related to another participant in the telephony session; identifying the session ID of the telephony session from the request; using the identified session ID to retrieve an identifier of the other participant from the session context stored in the data storage; using the retrieved identifier of the other participant as an input to invoke a web service; 2 Appeal2015-001113 Application 11/262, 118 retrieving from the web service information related to the other participant in the telephony session; and during the telephony session, providing the retrieved information related to the other participant to the participant that requested the information. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Putman et al. ("Putman") US 2008/0086564 Yoon et al. ("Yoon") US 20060046759 Mar. 2, 2006 Apr. 10, 2008 Claims 1-3, 7-10, 17-19, 21-25, 28, 29, and 31-33 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Putman. Claims 4---6, 11-16, 20, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Putman and Yoon. Claims 30 and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Putman. II. ISSUES The dispositive issues before us are whether the Examiner has erred in finding Wood discloses "during the telephony session, receiving a request from one of the participants in the telephony session for information related to another participant in the telephony session;" "identifying the session ID of the telephony session from the request;" and "using the identified session ID to retrieve an identifier of the other participant from the session context stored in the data storage" (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. 3 Appeal2015-001113 Application 11/262, 118 Putman Putman discloses a click-to-connect service (i-f453; Fig. 23), wherein a user "Joe" associated with end-point accesses the click-to-communicate service of a communication application server (CAS) by first sending a request to a web-server to obtain access to a procurement portal, and thereafter, generates a merchandise order via a web page (i-1453). The order requires and approval, and thus, the web page includes a "Get Approval" button that triggers access (id.). The CAS attempts to access an approver, for example "John," by initiating a call communication task which results in the placement of a telephone call to the endpoint device (i-1454). IV. ANALYSIS As for the rejection of claims 1-3, 7-10, 17-19, 21-25, 28, 29, and 31-33 under 35 U.S.C. § 102(e), Appellants contend "the server of Putman clearly contacts one of the approvers for Joe during an online merchandise order, and not during a telephony session" (App. Br. 10). Further, Appellants contend "the approvers (John, Curly, and Moe) are people that Joe may contact to get approval to procure the merchandise" but "John, Curly, and Moe are not participants in a telephony session with Joe" (id.). Based on the record before us, we agree with Appellants. Putman discloses a user Joe accessing a procurement portal, and thereafter, generating a merchandise order via a web page, wherein the CAS attempts to access an approver "John" by placing a telephone call to the endpoint device (FF). Although the Examiner finds that Putman's "'click-to connect'/'click- to-communicate' is not solely associated with Web only activity" but "could be a telephone communication ... "(Ans. 3, emphasis added), we cannot find any clear disclosure in the sections of Putman referenced by the 4 Appeal2015-001113 Application 11/262, 118 Examiner of "during the telephony session, receiving a request from one of the participants in the telephony session for information related to another participant in the telephony session" (claim 1, emphasis added), as required in an anticipation rejection under 35 U.S.C. § 102(e). Here, Joe places an order and then the CAS contacts John (FF). We agree with Appellants that the server of Putman contacts approver, Joe, "during an online merchandise order, and not during a telephony session" wherein "the approvers, such as John, "are not participants in a telephony session with Joe" (App. Br. 10, emphasis omitted). Although the Examiner references the Board's Decision affirming the Examiner dated September 4, 2013 (Ans. 4--5), as Appellants point out, "the independent claims of the present application have been substantially amended since the Board Decision ... "(Reply Br. 7). We find the preponderance of evidence on this record fails to support the Examiner's finding that Appellants' claim 1 as set forth before us in this Appeal is anticipated by Putman under 35 U.S.C. § 102(e). We are of the view that the Examiner has not fully developed the record to show express or inherent anticipation regarding the disputed limitations of claim 1 pursuant to 35 U.S.C. § 102(e). 1 Therefore, we are constrained to reverse 1 Although the Examiner finds "the Prior Art, When Viewed as a Whole and as Combined in the Rejection, Suggests All the Limitations of the Claims" (Ans. 2), the question of whether a reference when "combined," "suggests" the contested limitation is not before us. In the event of further prosecution, we leave it to the Examiner to consider whether claims 1-3, 7-10, 17-19, 21-25, 28, 29, and 31-33 should instead be rejected under 35 U.S.C. § 103(a) and to explain how the above-discussed deficiencies of Putman would have been obvious to one of ordinary skill in the art. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference 5 Appeal2015-001113 Application 11/262, 118 the Examiner's rejection of representative claim 1 and independent claims 8, 18, 24, and 28 standing therewith (App. Br. 16), as well as claims 2, 3, 7, 9, 10, 17, 19, 21-23, 25, 29, and 31-33 respectively depending therefrom, over Putman. Regarding the§ 103 rejections of dependent claims 4---6, 11-16, 20, 26, 27, 30, and 33, the Examiner has not shown how the above-discussed deficiencies of Putman would have been obvious, or how Yoon overcomes the deficiencies of Putman. Therefore, we also reverse the Examiner's § 103 rejection of dependent claims 4---6, 11-16, 20, 26, and 27 over Putman in further view of Yoon, and of dependent claims 30, and 33 over Putman. V. CONCLUSION AND DECISION The Examiner's rejections of claims 1-3, 7-10, 17-19, 21-25, 28, 29, and 31-33 under 35 U.S.C. § 102(e) and of claims 4---6, 11-16, 20, 26, 27, 30, and 33 under 35 U.S.C. § 103(a) are reversed. REVERSED should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 6 Copy with citationCopy as parenthetical citation