Ex Parte Lee

Board of Patent Appeals and Interferences

Aug 30, 2011

10696148 (B.P.A.I. Aug. 30, 2011)

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.
10/696,148 10/29/2003 Eng-Keong Lee IT-03-006 5487
40604 7590 08/31/2011
MITEL NETWORKS CORPORATION
7300 WEST BOSTON STREET
CHANDLER, AZ 85226
EXAMINER
WALSH, JOHN B
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
08/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ENG-KEONG LEE
____________

Appeal 2009-010991
Application 10/696,148
Technology Center 2400
____________

Before MAHSHID D. SAADAT, MICHAEL R. ZECHER,
and JULIE K. BROCKETTI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 2, 4-9, and 11-18. Claims 3 and 10 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2009-010991
Application 10/696,148

2
STATEMENT OF THE CASE
Appellant’s invention relates to a status notification system in a group
of communications endpoints for alerting a user upon occurrence of a
reportable event corresponding to one of the contacts in a personal list of
contacts (Spec. ¶¶ [0001], [0008]).

Independent claim 1 is illustrative of the invention and reads as
follows:
1. An endpoint status notification system for use in a
telecommunications network, the system comprising:
an address book comprising a plurality of network user's
names and their associated endpoints;
a personal list of contacts comprising the users selected
from the address book by one of the users;
an instant message alert received by said one user upon
every occurrence of a reportable event for the contacts on the
list, the alert comprising one of a plurality of viewable
informational status messages pertaining to the contact and
delivered to said one user unbeknownst to the contact, the
reportable event being selected by said one user for each of the
contacts on the list, whereby the reportable events received by
said one user may differ for each of the contacts on the personal
list; and
a viewable call-control option received by said one user
simultaneous with the instant message alert and selection of
said option causes a telecommunication function related to the
reportable event and pertaining to the contact to immediately
occur.

The Examiner rejected claims 1, 2, 4-9, and 11-18 under
35 U.S.C. § 102(e) as anticipated by Mullaly (US 6,553,341 B1, issued Apr.
22, 2003).
Appeal 2009-010991
Application 10/696,148

3
ISSUE
Did the Examiner err in rejecting the claims as anticipated by Mullaly
because the reference fails to disclose “a viewable call-control option
received by said one user simultaneous with the instant message alert…”
wherein “…selection of said option causes a telecommunication function
related to the reportable event and pertaining to the contact to immediately
occur,” as recited in claim 1.

ANALYSIS
The Examiner takes the position that Figures 6 and 8 of Mullaly
disclose an audible alert with a pop-up window and a viewable “call-control
option…” which are displayed simultaneously (Ans. 7). By further relying
on column 8, lines 49-56 and element 802 in Figure 8 for describing a pop-
up window and on column 8, lines 3-14 and element 626 in Figure 6 of
Mullaly, the Examiner concludes that the step of sending mail is a
“telecommunication function” that takes place in response to incoming
message or alert (id.).
Appellant contends that Mullaly provides an audible alert to inform a
user of arrival of a new email and to announce the content of the message
using natural language sentences (App. Br. 8). Appellant further points out
that the audible announcement of the receipt of an email message in Mullaly
cannot include a “viewable call-control option,” as claimed (App. Br. 9).
We agree with Appellant that Mullaly does not disclose “a viewable
call-control option received by said one user simultaneous with the instant
message alert…,” as recited in claim 1. The relied-on portions in Figure 6 of
Mullaly merely describe an audible alert to announce to the user the receipt
Appeal 2009-010991
Application 10/696,148

4
of an email from a contact while the “send mail” button 626 is unrelated to
any reportable event pertaining to that contact (see col. 8, ll. 9-14).
Similarly, we agree with Appellant (Reply Br. 7-8) that none of the
selectable options depicted in Figure 8 of Mullaly can be construed as a
viewable call-control option that performs a function related to a reportable
event pertaining to the contact, as recited in claim 1 and described in
Appellant’s Specification. In fact, Figure 8 of Mullaly depicts a user
interface for customizing notification settings and the way the alert is
presented to the user (see col. 8, ll. 49-65).

CONCLUSION
On the record before us, we find that the Examiner erred in rejecting
claim 1 because Mullaly does not disclose the disputed claim language.
Therefore, we do not sustain the 35 U.S.C. § 102 rejection of claim 1, of
claims 9 and 14 which include similar limitations discussed above, or of
claims 2, 4-8, 11-13, and 15-18 dependent therefrom.

DECISION
The decision of the Examiner rejecting claims 1, 2, 4-9, and 11-18 is
reversed.

REVERSED

dw