Ex Parte Gallick et alDownload PDFPatent Trial and Appeal BoardJun 6, 201311293481 (P.T.A.B. Jun. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT LAWRENCE GALLICK and TOBY R. AMBROSE ____________ Appeal 2010-011136 Application 11/293,481 Technology Center 2400 ____________ Before ROBERT E. NAPPI, JUSTIN BUSCH, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-011136 Application 11/293,481 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a communication system that routes communications to and from a user through a media service. Abstract. Claims 1, 11, and 17 are independent. Claim 11 is illustrative of the invention (disputed limitations in italics): 11. A communication system for transceiving communications between a plurality of network subscribers, the system comprising: a plurality of endpoints associated with the plurality of network subscribers; one or more media services, each media service being dedicated to one of the network subscribers and comprising a database having a plurality of stored information including each of the endpoints associated to the subscriber and a plurality of subscriber-selected preferences for communication control; and a communication network routing a plurality of communication data for the media services, whereby a communication request for the subscriber is made by the subscriber at the endpoint associated to the subscriber to their respective media service, the media service of the requesting subscriber initiates communication on behalf of the subscriber to a second subscriber and opens a communication path between the endpoint associated to the requesting subscriber and an endpoint of the second subscriber. Rejections on Appeal The Examiner has rejected claims 1, 4-12, and 14-16 under 35 U.S.C. § 102(e) as being anticipated by Bells (US 7,379,732 B2, May 27, 2008). Ans. 4-8. Appeal 2010-011136 Application 11/293,481 3 The Examiner has rejected claims 2, 3, 13, and 17-20 under 35 U.S.C. § 103(a) as being unpatentable over Bells. Ans. 9-12. ANALYSIS Appellants contend that Bells does not disclose a media service that facilitates communications between a requesting subscriber and a second subscriber by “open[ing] a communication path between the endpoint associated to the requesting subscriber and an endpoint of the second subscriber,” as recited in independent claim 11 and similarly recited in independent claims 1 and 17. See App. Br. 9-10. Specifically, Appellants argue that rather than facilitating communications between users, the messaging server described in Bells only collects presence information from clients and provides updates of presence information to clients. App. Br. 9. Appellants further argue that “there is no communications path between two endpoints disclosed in Bells. Rather, the communications are only between the endpoints and the messaging server. The messaging server fails to open a communication path between the endpoints.” App. Br. 9-10. We are not persuaded by Appellants’ arguments. The abstract of Bells states: “A system and method of instant messaging is provided. A plurality of messaging clients capable of transmitting instant messages to one another are each configured to share presence information with one another via a network.” Bells, Abstract (emphasis added); see also Bells, col. 1, ll. 54-57; col. 8, ll. 50-52 (claim 1); col. 9, ll. 33-36 (claim 5). Thus, Bells discloses communications (transmission of instant messages) between two subscribers (or endpoints). Bells further describes the use of an instant messaging server to facilitate communications between two clients or subscribers: Appeal 2010-011136 Application 11/293,481 4 Wireless devices 10 communicate with base stations 20 wirelessly using radio waves. The base stations 20 communicate via a wireless network 90, which in turn communicates via the Internet 100 with a wireless instant messaging server 200 and Internet-based instant messaging clients 120. . . . Messaging server 200 communicates with client applications on wireless devices A and B (10A and 10B), as well as with other client applications, such as C. Bells, col. 6, ll. 11-20 (referring to Figs. 2 and 3); see also Ans. 14. Based on these disclosures, we agree with the Examiner that Bells describes an instant messaging server that opens a communications path between endpoints associated with two subscribers, as recited in claim 11 and similarly recited in claims 1 and 17. See Ans. 14. Appellants also contend that Bells does not disclose a media service that is “dedicated” to one subscriber, as recited in claim 11 and similarly recited in claims 1 and 17, because communications between subscribers in Bells are via a centralized server that is not dedicated to a single user. App. Br. 12-13. 1 As the Examiner points out, however, Appellants describe a “media service” as “nothing more than an application.” Ans. 15; Spec. ¶ 16 (“Each MS [media service] 110-116 is a dedicated application for each subscriber . . . . Each MS may be a web based application that belongs to a single user.”). Consistent with Appellants’ Specification, the Examiner has reasonably interpreted “media service” as “a service that comprises an 1 Although Appellants present this argument in a section of their Brief addressing the Examiner’s rejection of claims 2, 3, 13, and 17-20 under 35 U.S.C. § 103(a), Appellants specifically cite claims 1 and 11 in their argument. We therefore treat the argument as applying to the Examiner’s rejections under both § 102(e) and § 103(a). Appeal 2010-011136 Application 11/293,481 5 application that is dedicated to the user using the application at that particular instance.” Ans. 15 (emphasis added). Under this interpretation, we agree with the Examiner that a particular instance of Bells’s instant messaging application invoked by a user meets the recited limitation of a “media service being dedicated to one of the network subscribers,” as recited in claim 11. For these reasons, we sustain the Examiner’s § 102(e) rejection of independent claim 11 as well as independent claim 1, which recites similar limitations, and dependent claims 4-10, 12, and 14-16, for which Appellants have not made separate, detailed arguments. Because Appellants do not make any additional arguments pertaining to the Examiner’s rejection under 35 U.S.C. § 103(a), we also sustain the Examiner’s rejection of claims 2, 3, 13, and 17-20. DECISION The Examiner’s rejection of claims 1, 4-12, and 14-16 under 35 U.S.C. § 102(e) as being anticipated by Bells is affirmed. 2 The Examiner’s rejection of claims 2, 3, 13, and 17-20 under 35 U.S.C. § 103(a) as being unpatentable over Bells is affirmed. 2 We have decided the appeal before us. Claim 1, however, is directed to a “media service,” which Appellants describe as an “application.” Spec. ¶ 16. In the event of further prosecution, the Examiner should consider whether claim 1 is directed to any of the four categories of patent-eligible subject matter under 35 U.S.C. § 101: processes, machines, manufactures, and compositions of matter. See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) (“If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”); see also Manual of Patent Examining Procedure § 2106 (8th ed., Rev. 9) (Aug. 2012). Appeal 2010-011136 Application 11/293,481 6 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 Copy with citationCopy as parenthetical citation