Ex Parte Gallant

Patent Trial and Appeal Board

Jun 17, 2013

10101199 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN KENNETH GALLANT
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Appeal 2010-010376
Application 10/101,199
Technology Center 2600
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Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–12 and 14–19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The disclosure relates to customized handling of communications
requests (Spec. ¶1).
Claim 1 is illustrative and is reproduced below:
1. In a communications system, a method for processing a
request from an originating party to establish communications
with a destination party, comprising:
receiving a request from the originating party to establish
communications with the destination party;
determining if the request is permissible based upon
applying at least one criterion to at least one aspect of the
request, where the determining if the request is permissible
includes:
determining whether a type of address with which
the originating party or the destination party is associated
corresponds to a public or private telephone number or an
Internet Protocol (IP) address,
performing a screening process on the request
using a first screening table that includes at least one of
public telephone numbers or private telephone numbers
when the type of address with which the originating party
or the destination party is associated corresponds to a
public or private telephone number, and
performing the screening process on the request
using a second screening table that includes one or more
IP addresses when the type of address with which the
originating party or the destination party is associated
corresponds to an IP address;
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determining if a forwarding-on-screening feature is
associated with the destination party; and
responding to the request with forwarding information if
the request is not permissible and a forwarding-on-screening
feature is associated with the destination party.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chow
Yau
Bergman
US 6,587,683 B1
US 6,741,688 B1
US 6,798,772 B2
Jul. 1, 2003
May 25, 2004
Sep. 28, 2004

Rejections
The Examiner made the following rejections:
Claims 1–10 and 14–16 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Chow in view of Bergman (Ans. 3–13).
Claims 11, 12, and 17–19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Yau in view of Bergman (Ans. 13–18).

ANALYSIS
Claims 1, 2, and 4–9
Appellant argues that the Examiner’s rejections of claims 1, 2, and 4–
9 are in error (App. Br. 13–28; Rep. Br. 4–9), treating claim 1 as exemplary
(37 C.F.R. § 41.37(c)(1)(vii)). These arguments present us with the issue of
whether the Examiner erred in finding those claims obvious over Chow and
Bergman.

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Appellant makes the following contentions:
(1) Bergman does not disclose or suggest “determining if the request
is permissible” according to the specific requirements recited in claim 1
(App. Br. 14–24; Rep. Br. 4–8);
(2) Neither Chow nor Bergman discloses or suggests “responding to
the request with forwarding information if the request is not permissible and
a forwarding-on-screening feature is associated with the destination party,”
as recited in claim 1 (App. Br. 25–28; Rep Br. 8–9); and
(3) The Examiner failed to provide an adequately articulated reason to
combine the teachings of Chow and Bergman because Chow already
discloses call screening (App. Br. 28; Rep. Br. 9–10).

First Contention
Appellant’s first contention is based on a disagreement with the
Examiner over how to construe the limitation of “determining if the request
is permissible,” including its sublimitations. The Examiner asserts that “the
disclosure of only [one] scenario [of performing a screening process using
public or private telephone numbers or performing a screening process using
IP addresses] is required to completely meet the entire limitation” (Ans. 20).
Appellant asserts that this interpretation is “unreasonable,” providing an
example in which the originating party corresponds to a public or private
telephone number and the destination party is associated with an IP address
(App. Br. 21, Rep. Br. 5). In particular, Appellant asserts, “the screening
process would be performed using the first screening table and the second
screening table” (Rep. Br. 7).
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The relevant sublimitations are recited as conditional limitations that
require performing screening processing using certain types of information
only “when the type of address” (emphasis added) has certain characteristics.
Conditional steps in a method claim need not be found in the prior art if,
under the broadest scenario, the method need not invoke the steps. See Ex
parte Katz, 2011 WL 514314, *4 (BPAI 2011) (citing In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant’s example
does not correspond to the broadest scenario. Since the Examiner has
identified disclosures in Bergman that perform the screening process based
on public CLIDs and based on IP addresses (Ans. 5), we conclude that the
Examiner has not erred.

Second Contention
The limitation of “responding to the request with forwarding
information if the request is not permissible and a forwarding-on-screening
feature is associated with the destination party” (emphasis added) is also
recited as a conditional limitation. Since the request is permissible under the
broadest scenario, the limitation need not be found in the prior art.
In addition, while Appellant asserts that the sections of Chow cited by
the Examiner (i.e., Chow, col. 6, ll. 31–49; col. 61, ll. 8–21) do “not even
relate to a forwarding-on-screening feature” (App. Br. 26–27), Appellant
identifies no unambiguous definition of a “forwarding-on-screening
feature.” Since the disclosures cited by the Examiner teach call screening
and call forwarding (Ans. 4, 23), we disagree that the Examiner erred.

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Third Contention
Appellant’s contention mischaracterizes the Examiner’s rationale by
asserting that the Examiner proposed to combine the teachings of Chow and
Bergman to “allow the Chow system to perform call screening” (App. Br.
28). Rather, the Examiner proposed to “incorporate Bergman’s screening of
particular CLIDs or IP address[es] of callers to provide call routing
functionality to incoming calls” (Ans. 6). The proper test for obviousness is
what the combined teachings of the prior art would have suggested to the
hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Furthermore, we find the Examiner’s articulated
rationale to support the legal conclusion of obviousness. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
We therefore disagree that the Examiner erred and accordingly
sustain the rejections of claims 1, 2, and 4–9.

Claim 3
Appellant argues that the Examiner’s rejection of claim 3 is in error
(App. Br. 28–32), presenting us with the issue of whether the Examiner
erred in finding claim 3 obvious over Chow and Bergman.
Appellant contends that Chow “in no way discloses or suggests that
the location of the calling party is used to determine if a request is
permissible” (App. Br. 29). This contention is incommensurate with the
scope of the claim, which recites that “the at least one aspect of the request
relates to the originating party’s location” (emphasis added). Chow
discloses that the location of the caller can be determined (see Ans. 6, citing
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Chow, col. 5, ll. 25–27), and the request therefore relates to the originating
party’s location.
We therefore disagree that the Examiner erred and sustain the
rejection of claim 3.

Claim 10
Appellant argues that the Examiner’s rejection of claim 10 is in error
(App. Br. 32–42; Rep. Br. 11–12), presenting us with the issue of whether
the Examiner erred in finding claim 10 obvious over Chow and Bergman.
Appellant’s contentions parallel those presented for claim 1. Because
claim 10 is an apparatus claim, the conditional limitations are construed
differently from how they are construed for claim 1 since the “screening
means” would need programming to address the conditions regardless of
whether the conditions are ever met. But the claim uses functional language
(“means for performing a screening process …”) to recite the limitation, for
which patentable weight is given only to the extent that the prior art is or is
not capable of meeting the limitation. See Ex parte Katz at *5, citing In re
Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997).
Chow discloses a network server that controls the communications
(Ans. 7, citing Chow, col. 3, ll. 12–16; col. 22, ll. 66–67; col. 23, ll. 1–3) and
would therefore be capable of performing the conditional functions recited
in the claim.
Our analysis otherwise parallels that presented above for claim 1, and
we therefore conclude that the Examiner has not erred. We accordingly
sustain the rejection of claim 10.

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Claim 14
Appellant argues that the Examiner’s rejection of claim 14 is in error
(App. Br. 43–46; Rep. Br. 12–13), presenting us with the issue of whether
the Examiner erred in finding claim 14 obvious over Chow and Bergman.
Appellant contends that Figures 8 and 9 of Bergman do not disclose a
screening table with an allow field that stores a value indicating whether the
telephone numbers or IP addresses are to be allowed or disallowed. This
contention is unpersuasive. Figure 8 provides a list of access codes and
identifications of those to whom certain access codes have been given, and
Bergman discloses a database server 94 that stores CLID and IP address
information (Bergman, col. 13, ll. 5–29). The access codes act as allow
fields, with their values indicating that the stored telephone numbers are to
be allowed.
We therefore disagree that the Examiner erred and sustain the
rejection of claim 14.

Claim 15
Appellant argues that the Examiner’s rejection of claim 15 is in error
(App. Br. 46–48), presenting us with the issue of whether the Examiner
erred in finding claim 15 obvious over Chow and Bergman.
Appellant contends that Bergman does not disclose “performing the
screening process on the request for the originating party and for the
destination party.” This contention is unpersuasive. The Examiner correctly
finds that the screening process disclosed by Bergman “does involve both
parties: callee setting up the allowed list and access codes and the caller
inputting the correct access code” (Ans. 11).
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We therefore disagree that the Examiner erred and sustain the
rejection of claim 15.

Claim 16
Appellant argues that the Examiner’s rejection of claim 16 is in error
(App. Br. 48–50), presenting us with the issue of whether the Examiner
erred in finding claim 16 obvious over Chow and Bergman.
Appellant contends that Bergman does not disclose ranges of
telephone numbers or IP addresses on which the screening process is
performed. This contention is unpersuasive. The Examiner correctly finds
that Bergman teaches setting up a plurality of CLIDs on which the screening
processes can be performed (Ans. 12, citing Bergman, col. 15, ll. 41–45),
and therefore discloses a range of CLIDs.
We therefore disagree that the Examiner has erred and sustain the
rejection of claim 16.

Claims 11, 12, and 19
Appellant argues that the Examiner’s rejections of claims 11, 12, and
19 are in error (App. Br. 50–58), treating claim 11 as exemplary. These
arguments present us with the issue of whether the Examiner erred in finding
those claims obvious over Yau and Bergman.
Appellant makes contentions similar to those made for claim 1
regarding Bergman. For substantially the same reasons we express supra,
we disagree that the Examiner has erred.
Appellant additionally contends that Yau and Bergman “do not further
disclose or suggest forwarding the call from the originating party to an
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alternative destination when the screening operation determines that a call
from the originating party to the destination party is not permitted” (App. Br.
57, emphasis added). Since it may be determined that calls from the
originating party to the destination party are permitted under the broadest
scenario, such a conditional limitation need not be found in the prior art.
We also agree with the Examiner’s finding that Yau “disclose[s] the
call being [able] to be forwarded to another number which is an alternative
destination” (Ans. 28, citing Yau, col. 4, ll. 36–43).
We therefore disagree that the Examiner has erred and sustain the
rejections of claims 11, 12, and 19.

Claim 17
Appellant argues that the Examiner’s rejection of claim 17 is in error
(App. Br. 59–62; Rep. Br. 14–15), presenting us with the issue of whether
the Examiner erred in finding claim 17 obvious over Yau and Bergman.
Appellant makes contentions that parallel those made for claim 14,
and we therefore sustain the rejection of claim 17 for the same rationale we
present supra.

Claim 18
Appellant argues that the Examiner’s rejection of claim 18 is in error
(App. Br. 62–64; Rep. Br. 15–16), presenting us with the issue of whether
the Examiner erred in finding claim 18 obvious over Yau and Bergman.
Appellant makes contentions that parallel those made for claim 15,
and we therefore sustain the rejection of claim 18 for the same rationale we
present supra.
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CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner did not err in rejecting claims 1–10 and 14–16
under 35 U.S.C. § 103(a) as unpatentable over Chow and Bergman; and
(2) The Examiner did not err in rejecting claims 11, 12, and 17–19
under 35 U.S.C. § 103(a) as unpatentable over Yau and Bergman.

DECISION
The Examiner’s decision rejecting claims 1–12 and 14–19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD