Ex Parte Clark et al

Patent Trial and Appeal Board

Sep 23, 2016

11993616 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111993,616 12/21/2007
21028 7590 09/27/2016
Gowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTA WA, ON KIP 1C3
CANADA
FIRST NAMED INVENTOR
David William Clark
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.
86503-253 8633
EXAMINER
PHUNG,LUAT
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
Patprosec@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM CLARK,
JONATHAN ALLAN ARSENAULT, JEFFREY WILLIAM DAWSON
and ERIC JOHN WOLF
Appeal2015-005242
Application 11/993,616
Technology Center 2400
Before ROBERT E. NAPPI, THU A. DANG and
TERRENCE W. McMILLIN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1 through 42, 44 through 75, and 78
through 95, which constitute all the claims pending in this application. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We reverse.
Appeal2015-005242
Application 11/993,616
INVENTION
Appellants' invention relates to a method for use in a communication
system. The method comprises receiving, at a processing time, a request for
a communication session, the request comprising a destination network
identifier, the destination network identifier having been registered in
association with a plurality of communication clients; the request having
been originated by an originating party associated with an originating
identifier. The method further comprises identifying, based on at least one of
the originating identifier and the processing time, a subset of the plurality of
communication clients. The method further comprises delivering the request
to the subset of the plurality of communication clients. Abstract,
Specification 2-3.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the invention and reproduced below:
1. A method compnsmg:
receiving, at a processmg time, a request for a
communication session, said request comprising a destination
network identifier, said request having been originated by an
originating party associated with an originating identifier;
first identifying, based on the destination network
identifier, a plurality of communication clients registered to the
destination network identifier;
second identifying, based on at least one of said
originating identifier and said processing time, a subset of at least
two communication clients among the plurality of
communication clients identified as being registered to the
destination network identifier;
delivering said request to each communication client in
said subset of said plurality of communication clients.
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Appeal2015-005242
Application 11/993,616
REFERENCES AND REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 17, 31through34, 40
through 42, 44 through 62, 80 through 83, and 89 through 92 under 35
U.S.C. § 103(a) as unpatentable over Gibson (US 2007/0286391 Al; Dec.
13, 2007) and Wolter (US 7,881,455 B2; Feb. 1, 2011). Final Act. 3-15. 1
The Examiner has rejected claims 18 through 30, 63 through 75, and
78 through 79 under 35 U.S.C. § 103(a) as unpatentable over Gibson,
Wolter, and Balasuriya (US 2003/0041048 Al; Feb. 27, 2003). Final Act.
15-20.
The Examiner has rejected claims 35 through 39, and 84 through 88
under 35 U.S.C. § 103(a) as unpatentable over Gibson, Wolter, and Murai
(US 2003/0048892; Mar. 13, 2003). Final Act. 20-23.
The Examiner has rejected claims 93, 94, and 95 under 35 U.S.C. §
103(a) as unpatentable over Gibson, Wolter, and Wood (US 2003/0194078
Al; Oct. 16, 2003). Final Act 24.
ISSUES
Appellants argue, on pages 9 through 14 of the Appeal Brief that the
Examiner's rejection of independent claims 1, 44 and 92 is in error. The
dispositive issue presented by these arguments is whether the Examiner
erred in finding the combination of Gibson and Wolter teaches first
identifying a plurality of communication clients, based on a destination
identifier, of the received request for a communication session, and second
identifying a subset of at least two communication clients based upon one of
1 Throughout this opinion we refer to the Appeal Brief filed September 30,
2014, Reply Brief filed April 13, 2014, Final Office Action mailed June 5,
2014 and the Examiner's Answer mailed on March 3, 2015.
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Appeal2015-005242
Application 11/993,616
the originating identifier, of the received request n, and the processing time
of the received request?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to Appellants' arguments. We agree with Appellants'
contention that the Examiner erred in rejecting independent clams 1, 44 and
92 under 35 U.S.C. § 103.
The Examiner, in response to Appellants' arguments that the
references do not teach the second identifying, finds that Wolter teaches a
first and second identifying step and that Gibson teaches a call screening
where calls are forwarded based upon originating phone numbers. Answer
4--5. Specifically, the Examiner finds that Wolter's teaching of the user
defining an order among several phone numbers of the called party to be a
first identifying step and that the server determining an order during a
communication session is a second identifying step. Answer 4.
We disagree, within the context of the claim the first identifying is
based upon a destination identifier received as part of a request for a
communication session. Wolter' s teaching of the user defining an order
does not teach identifying based upon such a request.
As such we do not find that the Examiner has shown the combination
of the references teach the two identifying steps recited in each of the
independent claims. Accordingly, we do not sustain the Examiner's rejection
independent claims 1, 44, and 92. The Examiner has not shown the other
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Appeal2015-005242
Application 11/993,616
references used in rejecting the dependent claims make up for this
deficiency, accordingly, we similarly do not sustain the Examiner's rejection
of claims 2 through 42, 45 through 75, 78 through 91, and 93 through 95.
DECISION
We reverse the Examiner's rejections of 1 through 42, 44 through 75,
and 78 through 95 under 35 U.S.C. § 103.
REVERSED
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