Ex Parte Corliss

Board of Patent Appeals and Interferences

Mar 8, 2004

09169757 (B.P.A.I. Mar. 8, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JAMES R. CORLISS

Appeal No. 2002-1761
Application No. 09/169,757

ON BRIEF

Before THOMAS, KRASS and GROSS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-6 and 8-26.
The invention is directed to providing short message
services (SMS). In particular, the invention permits a voice
mail subscriber to be notified in a timely and efficient manner
that a voice message has been left even when the subscriber is
not near the telephone. A SMS message notification is made to
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the subscriber outside of the wireline and wireless networks.
The SMS message notification is routed through the Internet to
the voice mail subscriber at one or multiple locations or message
receiving devices. It is alleged that SMS is conventionally
operable only within a wireless network.
Representative independent claim 1 is reproduced as follows:
1. A method for providing voice messaging notification to a
voice mail subscriber over the Internet, the voice mail
subscriber having a telephone serviced by one of a wireless and
wireline switch, the method comprising:
receiving a voice message from a calling party for the
telephone associated with the voice mail subscriber;
forwarding the voice message to a mailbox for storage
therein;
generating a Short Message Services message notification
upon receipt of the voice message;
transmitting the message notification to a messaging service
node; and
routing the message notification to the voice mail
subscriber over a local Internet gateway to provide indication to
the voice mail subscriber of the stored voice message.
The examiner relies on the following references:
Pepe et al. (Pepe) 5,742,905 Apr. 21, 1998
Amin 6,014,559 Jan. 11, 2000
(filed Apr. 10, 1997)
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Claims 8-14 and 16-26 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Pepe.
Claims 1-6 and 15 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner offers Pepe, alone, with
regard to claim 15, adding Amin with regard to claims 1-6.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.
OPINION
An anticipatory reference is one which describes all of the
elements of the claimed invention so as to have placed a person
of ordinary skill in the art in possession thereof. In re Spada,
911 F.2d 205, 15 USPQ2d 1655 (Fed. Cir. 1990).
It is the examiner’s position that Pepe anticipates claims
8-14 and 16-26. With regard to claim 8, for example, the
examiner makes the following observations regarding the portions
of the reference meeting the claim language:
providing at least one Internet gateway in communication with a
communication network: Figure 1, elements 29, 40.
providing an adjunct processor in communication with a messaging
service node and the Internet gateway: Figure 3, elements 46, 44,
42, 40.
providing at least one database in communication with the adjunct
processor, the database including at least one designated
destination server corresponding to the subscriber: Figure 3,
elements 46, 44, and column 5, lines 51-67.
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detecting at the service node a Short Message Services message
notification from the subscriber’s voice mailbox: Figure 3,
elements 46, 44, 42, 40 and column 4, lines 57-67.
transmitting the message notification to the adjunct processor:
Figure 3, service provider 40, and column 5, lines 51-67.
determining at the adjunct processor the at least one designated
destination server for the subscriber: Figure 3, service provider
40.
routing the message notification to the at least one local
Internet gateway: Figure 3, service provider 40.
transmitting from the adjunct processor to the local Internet
gateway the at least one designated destination server for the
subscriber: Figure 3, elements 44, 42, 40.
routing the message notification to the at least one designated
destination server: column 5, lines 51-67.
For his part, appellant argues that many claimed limitations
are not disclosed by Pepe. In particular, appellant cites
“detecting at [a] service node a Short Message Services message
notification from the subscriber’s voice mailbox” and
“transmitting the message notification to adjunct processor.”
Appellant urges that Pepe cannot disclose these claim limitations
because Pepe’s PCI network does not use Short Message Services,
but uses AMIS-Analog Protocol instead.
Appellant also argues that Pepe makes no determination at
the adjunct processor of the at least one designated destination
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server for the subscriber, as claimed. Instead, appellant urges
that Pepe’s PCI network includes a PCI server which must be used
in order for Pepe’s system to be operational.
We will not sustain the rejection of claims 8-14 and 16-26
under 35 U.S.C. § 102(b) because the burden of establishing
anticipation rests, in the first instance, with the examiner and
it is our opinion that the examiner has not carried his burden.
In applying Pepe to the claims, the examiner points, broadly
to general portions of the reference, as in “Figure 3" or “Figure
2," elements “44, 42, 40,” etc. However, the examiner never sets
forth a one-to-one correspondence between the claimed elements
and what, exactly, is deemed to correspond to those elements in
the reference. For example, what is the claimed “adjunct
processor” in the reference? The examiner does not expressly
say. Where is the claimed “messaging service node” in the
reference? The examiner does not expressly say. What, in the
reference, corresponds to the claimed “designated destination
server”? Again, the examiner does not expressly say.
Thus, while Pepe certainly is very relevant to the instant
claimed invention in its communications network, providing an
Internet gateway, detecting message notifications, and optionally
routing message notifications, it is hard to follow the
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examiner’s exact reasoning for concluding that the reference
discloses each and every claimed element and/or step.
Moreover, appellant reasonably questioned the claimed step
of “determining at the adjunct processor the at least one
designated destination server for the subscriber,” arguing that
Pepe makes no such determination because one must always use the
PCI server in Pepe. Yet, the examiner makes no response,
preferring to remain silent in the response section of the
answer. Since the examiner never particularly pointed out, in
Pepe, what the examiner considers to be the claimed “designated
destination server” and the claimed “adjunct processor,” and now
remains silent in the face of appellant’s argument that the
claimed “determining” step is not disclosed by Pepe, we are at a
loss as to adopting any reasoning which would sustain the
examiner’s position.
Accordingly, we will not sustain the rejection of claims 8-
14 and 16-26 under 35 U.S.C. § 102(b) because to do so, we would
need to speculate as to the whether Pepe does, in fact, provide
for each and every claimed step, and we would need to speculate
as to the examiner’s rationale with regard to how Pepe allegedly
meets these claim limitations. A proper rejection under
35 U.S.C. § 102(b) may not be based on such speculation.
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With regard to the rejection of claim 15 under 35 U.S.C.
§ 103, the examiner now appears to take the view that Pepe does
not disclose SMS for message notification, but contends that it
would have been obvious because “SMS is well known, using for
sending or receiving, short alphanumeric messages to or from
mobile telephones.”
We will not sustain the rejection of claim 15 under
35 U.S.C. § 103 because, in our view, the examiner has not
established a case of prima facie obviousness.
Initially, we note the inconsistency of the examiner’s
rationale, first contending, at page 4 of the answer, that Pepe
teaches the routing of SMS notification to the subscriber
Internet gateway to provide an indication to the subscriber of
the stored voice mail message, citing Figure 1, elements 26, 29,
40, 39 and 32, and column 5, lines 51-67, and then, in the very
next sentence, apparently conceding that Pepe does not disclose
message notification by SMS, but holding that since SMS is well
known, it purportedly would have been obvious to use SMS in Pepe
for sending or receiving short alphanumeric messages to or from
mobile telephones.
The examiner has not adequately come to grips with the SMS
limitation of the claim. Appellant does not deny that SMS was
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known, but contends that it was “presently operable only within
the wireless network” (brief-page 3) and that the invention is in
SMS message notification to a subscriber outside of the wireline
and wireless networks, wherein the SMS message notification is
routed through the Internet to a voice mail subscriber at one or
multiple locations or message receiving devices. Thus, it
appears that the examiner is alleging obviousness at the very
heart of appellant’s alleged invention without pointing to an
adequate showing of why the claimed subject matter would have
been obvious.
The examiner does point to column 5, lines 51-67, along with
elements 26, 29 and 40 of Figure 1 of Pepe. However, reference
to that portion of the reference offers no clear suggestion of
SMS message notification since that portion relates only to PCI
communication and that a subscriber may have options in selecting
“cross-media notification of incoming messages...” To the extent
that Pepe mentions “short text message” at column 21, line 49,
and to the extent that this may suggest some type of SMS message
notification (since this is what the examiner refers to in his
response, at page 7 of the answer), we would note that this
portion of the reference appears to relate to messages to the
caller rather than notification to the subscriber that a voice
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mail message has been left for the subscriber. Accordingly, the
examiner has not successfully pointed to anything in Pepe which
would have suggested to the artisan the SMS message notification
set forth in the instant claims. Therefore, we will not sustain
the rejection of claim 15 under 35 U.S.C. § 103.
We now turn to the rejection of claims 1-6 under 35 U.S.C.
§ 103.
It is the examiner’s view that Amin discloses the claimed
invention but for routing the message notification over a local
Internet network. The examiner then turns to Pepe for a
disclosure of a personal communications Internet network for
routing messages over the Internet gateway to provide indication
to the subscriber of stored voice mail messages, specifically
pointing to Figure 1, elements 26, 29, 40, 39 and 32, and to
column 5, lines 51-67 of Pepe. The examiner then concludes that
it would have been obvious to use “Pepe’s technique in Amin’s
invention to send voice information messages over Internet in
order to increase the use of delivering voice mail message in log
distance system [sic]” (answer-pages 3-4).
Again, we will not sustain the examiner’s rejection under
35 U.S.C. § 103 because the examiner has not established a prima
facie case of obviousness of the instant claimed subject matter.
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As explained supra, the portion of Pepe cited by the examiner
does not teach or suggest the routing of messages over an
Internet gateway for informing a subscriber that there is a voice
mail message waiting. That portion of Pepe does disclose that a
subscriber may receive a message regarding receipt of a voice
mail message, but that notification appears to come from a pager,
i.e., a wireless network, not, necessarily, via the Internet.
Most certainly, there is no suggestion in that portion of Pepe on
which the examiner relies, of generating a Short Message Service
message notification and routing that type of message over a
local Internet gateway, as required by independent claim 1.
Accordingly, the examiner’s combination of Pepe with Amin will
not result in the instant claimed subject matter.
Appeal No. 2002-1761
Application No. 09/169,757
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The examiner’s decision rejecting claims 1-6 and 15 under
35 U.S.C. § 103 and claims 8-14 and 16-26 under 35 U.S.C.
§ 102(b) is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
EK/RWK
Appeal No. 2002-1761
Application No. 09/169,757
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