Ex Parte Dow

Patent Trial and Appeal Board

Jan 30, 2013

10091651 (P.T.A.B. Jan. 30, 2013)

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.
10/091,651 03/05/2002 Brady R. Dow 000110 9164
63614 7590 01/31/2013
HAMILTON, DESCANCTIS & CHA (GENERAL)
8601 W. CROSS DRIVE
F5-301
LITTLETON, CO 80123
EXAMINER
BADII, BEHRANG
ART UNIT PAPER NUMBER
3667
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRADY R. DOW
____________________

Appeal 2010-009215
Application 10/091,651
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009215
Application 10/091,651

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s non-final rejection of twice-rejected claims 2-4 and 6-25. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We reverse.

BACKGROUND
Appellant’s invention is directed to systems and methods for
interacting with a recipient (Spec., para. [10]).
Claim 12 is illustrative:
12. A method for controlling a network of conversation
control systems, the method comprising:
initiating contact with a human recipient via an initiator;
selecting a conversation control system, wherein the
conversation control system is accessible to a human operator;
routing information received from the human recipient to
the conversation control system;
outputting the information received from the human
recipient in the form of an audio communication via an output
device of the conversation control system to the human
operator;
receiving an indication from the human operator of a
preformed script item to respond to the information received
from the human recipient; and
presenting the script item to the human recipient.

Appellant appeals the following rejections:
Claims 6-23 and 25 are rejected under 35 U.S.C. § 101 as claiming
ineligible subject matter.
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Application 10/091,651

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Claims 12, 24, and 25 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 2-4, 6-8, 12-17, 20-23, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hirni (US 6,731,609 B1, iss. May 4, 2004)
and Hayashi (US 6,722,989 B1, iss. Apr. 20, 2004).
Claims 9-111 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hirni, Hayashi, and Atsmon (US 6,607,136 B1, iss. Aug. 19, 2003).
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hirni, Hayashi2, and Borman (US 6,748,055 B1, iss. Jun.
8, 2004).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The Specification describes that a conversation control system 110
includes computer 120, medium 130, input/output devices 190,
connection control device 140, audio interface 150, and telephone
interface 160. (Spec., para. [45]).
2. Hirni discloses a “method for conducting multimedia telephonic
conferences over a packet-based network.” (Col. 1, ll. 66-67).

1 We take as inadvertent error the statement that only claims 9 and 10 are
rejected under 35 U.S.C. § 103(a) over Hirni and Atsmon, because claim 11
is included in the analysis at Answer pages 10-11. We also take as
inadvertent error the omission of Hayashi, upon which the rejection of claim
25, from which claims 9-11 depend, was based. Ans. 10.
2 We take as inadvertent error the omission of Hayashi, upon which the
rejection of claim 14, from which claims 18 and 19 depend, was based. Ans.
11.
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Application 10/091,651

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3. Hayashi discloses “an interactive portable electronic device with
combined fixed and programmable conversation and related download
capabilities.” (Col. 1, ll. 14-17).
ANALYSIS
Patentable subject matter
We are persuaded of error by Appellant’s argument that claims 6-23
and 25 recite patentable subject matter, because they are tied to a particular
machine by way of the required conversation control system. Rep. Br. 18-
19. We agree, because we find the conversation control system is described
throughout the Specification as being a specially-programmed computer
with special telecommunications connections for use with a telephone
network. See, for example, paragraph [45] of the Specification (FF 1).
Because the claims require that the conversation control system is a
computerized system, the claims are tied to a particular machine and thus
describe patentable subject matter. For this reason, we reverse the rejection
under 35 U.S.C. § 101 of claims 6-23 and 25.
Indefiniteness rejection
We agree with Appellant’s argument that none of the questions
presented by the Examiner identify errors in the claims, for the reasons set
forth by the Appellant. App. Br. 9-10, Rep. Br. 19-23. For these reasons,
we reverse the rejection under 35 U.S.C. § 112, second paragraph, of claims
12, 24, and 25.
Obviousness rejection
We are persuaded of error by Appellant’s argument that the
combination of Hirni and Hayashi is improper in the rejection of claims 12,
24, and 25. App. Br. 15-16, Rep. Br. 28-29. The Examiner’s rationale for
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Application 10/091,651

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combining the packet-network-based telephone conference of Hirni (FF 2)
with the portable electronic device of Hayashi (FF 3) is “in order to allow
the user to choose a response such that the conversation can be directed in a
particular way, along a particular route to come to a certain conclusion and
using the script programs which are used to generate the sentences.” Ans. 6,
7, and 8. This does not explain why one or ordinary skill would have a
reason to make the combination because this does not explain the why the
user of the Hirni system would direct a conversation, come to a certain
conclusion, or use script programs. Therefore the Examiner has not set forth
a prima facie case of obviousness for these three independent claims. As a
result, we reverse the rejections under 35 U.S.C. § 103(a) of claims 12, 24,
and 25, and dependent claims 2-4, 6-8, 12-17, and 20-23.

DECISION
We reverse the rejections of claims 2-4 and 6-25.

REVERSED

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