Ex Parte Culver

Board of Patent Appeals and Interferences

Sep 9, 2003

09007714 (B.P.A.I. Sep. 9, 2003)

1 The examiner’s Status of Claims in the answer is correct, whereas the appellant’s STATUS
OF THE CLAIMS in the brief incorrectly list claim 24 as pending in the appeal rather than canceled.
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was not written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TIMOTHY CULVER
____________
Appeal No. 2001-1569
Application No. 09/007,714
____________
ON BRIEF
____________
Before FLEMING, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-6,
20-23, 25 and 26.1
Claims 18 and 24 were canceled in amendment A (Paper No. 4, filed October 7,
1999) and claims 7-17 and 19 were withdrawn from consideration on page 1 of the
brief.
We REVERSE.
Appeal No. 2001-1569
Application No. 09/007,714
2
Appellant's invention relates to an internet telephony system with automated call
answering with retrieval by the called party via the internet telephony web site. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. A call answering and messaging system for an internet telephony
web site, comprising:
an internet telephony server for providing internet telephony
functionality through a web site, wherein the web site
enables a calling party to initiate and connect a voice call to
a called party over the internet;
a data storage system; and
a processor coupled to said data storage system, said processor
operative to receive a message from said calling party via
the internet telephony web site, and to store said message
in said data storage system for retrieval by said called party
via the internet telephony web site.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Hulen et al. (Hulen) 5,497,373 Mar. 05, 1996
Bowater EP 0 794 650 Sep. 10, 1997
(European Patent Application)
Appeal No. 2001-1569
Application No. 09/007,714
2 We note that the examiner has not recited claim 6 in the statement of the rejection in the
answer, but does include the claim in the final rejection which has been incorporated.
3 Additionally, we interpret the examiner’s listing of claim 16 to be claim 26 since claim 16 has
been withdrawn from consideration.
3
Claims 1, 2, 5, 6,2 20, 21, 23, 25, and 263 stand rejected under 35 U.S.C. § 102
as being anticipated by Bowater. Claims 3, 4, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bowater in view of Hulen.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 12, mailed Jan. 30, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 10, filed Dec. 5, 2000) and reply brief
(Paper No. 13, filed Mar. 21, 2001) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
With respect to independent claims 1 and 20, appellant argues that Bowater
does not anticipate claims 1 and 20 either by expressly or inherently teaching the
claimed invention as recited. (See brief at page 4.) Appellant argues that Bowater
Appeal No. 2001-1569
Application No. 09/007,714
4
does not teach a processor operative to receive a message from a calling party via the
internet telephony web site. (See brief at page 4.) We agree with appellant. We find
that while Bowater does teach the use of a telephony web site to connect a call from a
calling party to a called party, the DTMAIL 610 website attached to the Internet would
be the location/website which receives the message from the calling party and through
which the voicemail message would be retrieved by the called party. From our review
of the teachings of Bowater, we find many suggestions and variations of the basic
system and functionality, but we find no teaching of “a processor coupled to said data
storage system, said processor operative to receive a message from said calling party
via the internet telephony web site, and to store said message in said data storage
system for retrieval by said called party via the internet telephony web site.” (See brief
at page 6.) While the teachings of Bowater may be manipulated to define what the
telephony website is and what the limitation “via” can be interpreted as, we do not find
that the retrieval would be via the same telephony web site that connects the calling
party to the called party. Therefore, we do not find that the examiner has established a
prima facie case of anticipation, and we will not sustain the rejection of independent
claims 1 and 20 along with their dependent claims 2, 5, 21, 23, 25, and 26.
Appeal No. 2001-1569
Application No. 09/007,714
5
Since the examiner has not relied upon the teachings of Hulen to remedy the
deficiency noted above with the teachings of Bowater and we find no teaching to
remedy the deficiency, we will not sustain the rejection of dependent claims 3, 4
and 22.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 2, 5, 6, 20, 21, 23,
25, and 26. under 35 U.S.C. § 102 is reversed, and the decision of the examiner to
reject claims 3, 4, and 22 under 35 U.S.C. § 103(a) is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JLD/vsh
Appeal No. 2001-1569
Application No. 09/007,714
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