Ex Parte Chakra et al

Patent Trial and Appeal Board

Feb 17, 2017

13566066 (P.T.A.B. Feb. 17, 2017)

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.
13/566,066 08/03/2012 A1 Chakra RSW920120068US1 (776) 9342
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
DEANE JR, WILLIAM J
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL CHAKRA, LI CHEN,
EDWARD C. FLICKINGER, and LIN SUN
Appeal 2016-006019
Application 13/5 66,0661
Technology Center 2600
Before LARRY J. HUME, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 5, 8, 12, 14, and 18. Appellants have canceled
claims 2-4, 6, 7, 9-11, 13, 15—17, 19, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 3.
Appeal 2016-006019
Application 13/566,066
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "relate[] to audio
teleconference management and more particularly to activating an audio
teleconference." Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method for threshold activation of an audio
teleconference, the method comprising:
reserving an audio conference for a specified set of
callers;
setting a pre-determined threshold number of calls for
activating the audio conference;
receiving calls into a conference bridge for the reserved
audio conference;
adjusting the pre-determined threshold number of calls
responsive to receipt of a pre-specified event other than a
number of calls received;
determining whether or not the adjusted pre-determined
threshold number of calls have been received into the
conference bridge; and
initiating the audio conference responsive to the adjusted
pre-determined threshold number of calls that have been
received into the conference bridge, but prohibiting initiation of
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 2, 2015); Reply Brief ("Reply Br.," filed May 24, 2016); Examiner's
Answer ("Ans.," mailed Mar. 24, 2016); Final Office Action ("Final Act.,"
mailed May 6, 2015); and the original Specification ("Spec.," filed
Aug. 3, 2012).
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Application 13/566,066
the audio conference until the adjusted pre-determined
threshold number of calls have been received into the
conference bridge unless it is determined that the audio
conference is of a particular importance or urgency, then
initiating the audio conference once a single caller has called
into the audio conference regardless of the adjusted pre­
determined threshold number of calls that have been received
into the conference bridge.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Jurkevics et al. ("Jurkevics")
Bondy et al. ("Bondy")
Chaney et al. ("Chaney")
Palakkal et al. ("Palakkal")
Gartner et al. ("Gartner")
Kirchmeier et al. ("Kirchmeier")
US 5,978,463
US 2002/0051518 Al
US 2003/0108002 Al
US 2007 /0264989 Al
US 2011/0103568 Al
US 2013/0035055 Al
Nov. 2, 1999
May 2, 2002
June 12, 2003
Nov. 15,2007
May 5, 2011
Feb. 7,2013
Rejection on Appeal
Claims 1, 5, 8, 12, 14, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Gartner, Chaney, Jurkevics,
and either Bondy or Kirchmeier in view of Palakkal. Final Act. 2.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 6—20), we decide the
appeal of the obviousness rejection of claims 1, 5, 8, 12, 14, and 18 on the
basis of representative claim 1.
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Application 13/566,066
ISSUE
Appellants argue (App. Br. 6—20; Reply Br. 2—7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Gartner, Chaney, Jurkevics, and either Bondy or Kirchmeier
in view of Palakkal is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method for threshold activation of an audio teleconference,"
that includes, inter alia, the steps of:
adjusting the pre-determined threshold number of calls
responsive to receipt of a pre-specified event other than a
number of calls received . . . [and]
initiating the audio conference responsive to the adjusted
pre-determined threshold number of calls that have been
received into the conference bridge, but prohibiting initiation of
the audio conference until the adjusted pre-determined
threshold number of calls have been received into the
conference bridge unless it is determined that the audio
conference is of a particular importance or urgency, then
initiating the audio conference once a single caller has called
into the audio conference regardless of the adjusted pre­
determined threshold number of calls that have been received
into the conference bridge,
as recited in claim 1?
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 1, 5, 8, 12, 14, and 18 for the specific reasons discussed
below. We highlight and address specific findings and arguments regarding
claim 1 for emphasis as follows.
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Application 13/566,066
Appellants contend "[ijntegral to claim 1 as well as claims 8 and 14,
which recite similar operative portions, is the adjusting of a pre-defmed
threshold number of calls responsive to receipt of a pre-specified event other
than a number of calls received." App. Br. 8. Appellants further contend the
Examiner erred in rejecting claim 1 under § 103 because the "complex . . .
set of features" recited in the "initiating" step of claim 1 "is missing from the
combination of the cited art." Id.
We first note the Examiner has not provided a detailed mapping of the
claim limitations of claim 1 (or any of the independent claims) to the cited
prior art. Instead, the Examiner merely provides non-specific narrative
related to only portions of the recited claim limitations. Final Act. 2—A\ and
see Ans. 2 et seq.
The Examiner makes further findings 'Twlith respect to the additional
language, 'other than a number of calls received;', such would have been
obvious to one of ordinary skill in the art. That is, 'a number of calls
received' is an event. Substituting one event for another would have been
obvious to one of ordinary skill in the art." Ans. 2—3. The Examiner further
finds, "[wjith respect to 'an event', it is noted that Appellant never discloses
how an event is defined or described or gives an example of an event. The
closest Appellant comes to disclosing 'an event' is in paragraph 0010 and
0019 of the printed publication 2014/0037080." Ans. 4. We disagree with
the Examiner's findings.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
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Application 13/566,066
127 F.3d 1048, 1054 (Fed. Cir. 1997). While we are cautioned by our
reviewing court not to import limitations from the Specification into the
claims, our reviewing court guides that our claim construction must not be
overly broad, unreasonable, or inconsistent with Appellants' Specification.
Claim 1 recites, in pertinent part, "adjusting the pre-determined
threshold number of calls responsive to receipt of a pre-specified event other
than a number of calls received." (Emphasis added). Under the broadest
reasonable interpretation standard, we must interpret the recited "pre­
specified event other than a number of calls received" to not be inconsistent
with Appellants' Specification, which discloses "the threshold conference
initiation logic 130 can be configured to adjust the threshold number
responsive to a particular event 150 (or series of events) received in the
conference bridge 120, for example a change in urgency of the audio
conference." Spec. 118. While we generally eschew relying upon
exemplary embodiments and examples as providing a "definition" for
purposes of claim construction, we find the Examiner's position that "'a
number of calls received' is an event" is overly broad, unreasonable, and
inconsistent with both Appellants' Specification, as well as the actual claim
recitation which, on its plain language, requires the event be "other than a
number of calls received."
Accordingly, based upon the findings above, on this record, and in
light of the deficient mapping of the claim limitations to the cited prior art,
as well as the Examiner's claim construction that is directly contrary to the
plain language of the claim, we are persuaded of at least one error in the
Examiner's reliance on the combined teachings and suggestions of the cited
prior art combination to teach or suggest the disputed limitations of claim 1,
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such that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we cannot sustain the Examiner's obviousness
rejection of independent claim 1, and grouped claims 5, 8, 12, 14, and 18
which fall therewith. See Claim Grouping, supra?
CONCLUSION
The Examiner erred with respect to the obviousness rejection of
claims 1, 5, 8, 12, 14, and 18 under 35 U.S.C. § 103(a) over the cited prior
art combination of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1,5,8, 12, 14,
and 18.
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).
REVERSED
3 We note independent claims 8 and 14, not argued separately,
commensurately recite the contested limitations, such that we cannot sustain
the Examiner's rejections of these claims, and claims 12 and 18, depending
therefrom.
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