Ex Parte Liebenow

Board of Patent Appeals and Interferences

May 24, 2004

09185924 (B.P.A.I. May. 24, 2004)

1
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was not written for publication and is not binding precedent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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRANK W. LIEBENOW
__________
Appeal No. 2003-0247
Application 09/185,924
__________
ON BRIEF
__________
Before BARRETT, OWENS, and DIXON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-15
and 23, which are all of the claims pending in the application.
THE INVENTION
The appellant claims a method, computerized system and
machine-readable medium for sending from a first computer system,
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Application No. 09/185,924
2
after failure of that computer system to initiate communication
with a first network communications device associated with a
second computer system, a message to a second communications
device associated with the second computer system. Claim 1,
directed toward the method, is illustrative:
1. A method of operating a first computerized system having a
first network communications device, the method comprising:
operating the first computerized system to try to initiate
communications between the first network communications device
and a network communications device associated with a second
computerized system; and
after failing to initiate communications between the first
and second network communications devices, operating the first
computerized system to communicate a message to a second
communications device associated with the second computerized
system.

THE REFERENCES
Walton et al. (Walton) 4,930,151 May 29, 1990
Thro et al. (Thro) 5,884,159 Mar. 16, 1999
(filed Nov. 27, 1995)
THE REJECTION
Claims 1-15 and 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Thro in view of Walton.
OPINION
We reverse the aforementioned rejection. We need to address
only the independent claims, i.e., claims 1, 5, 10, 12 and 14.
Appeal No. 2003-0247
Application No. 09/185,924
1 In claims 5 and 10 the communications device of the first
computer system and the first communications device associated
with the second computer system are modems and the second
communication device associated with the second computer system
is a pager.
2 In claim 12, the first appearance of “second” should read
“first”.
3 “Spawning, generally refers to starting a second distinct
process or service based on a previous process or service”
(col. 4, lines 53-55).
3
The independent claims require that after a failed attempt
by a first computer system to initiate communication between a
network communications device of that computer system and a first
network communications device associated with a second computer
system, the first computer system is operated to at least try to
communicate a message to a second network communications device
associated with the second computer system.1,2
Thro discloses a system and method for spawning a
communication service, which can be a location determination
service, a schedule or itinerary communication service, or a
stored message service, when a call attempt from a first user of
a first communication unit to a second user of a second
communication unit fails (col. 1, line 66 - col. 2, line 5;
col. 2, lines 52-65).3 The first unit can be a wireline
telephone and the second unit can be a cellular phone, or the
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Application No. 09/185,924
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first unit can be a computer and the second unit can be a pager
or a two-way radio (col. 3, lines 3-7 and 30-34). Spawning the
communication service results in a message being directed at a
unit other than the second unit, such as the first unit or a
third unit associated with a third user (col. 2, lines 17-24;
col. 4, line 61 - col. 5, line 23).
Thro discloses, as an alternative embodiment, sending a
notification message to a server informing the server of the
failed call attempt (col. 2, lines 27-33). The determination of
whether a server is to be notified is made by either a different
server or the second communication unit (col. 4, lines 5-20).
Walton discloses a call forwarding device which is stationed
to the facility side of a telephone utility rotary switch and has
a separate rotary port wired to each of multiple rotary outlet
ports (col. 2, lines 31-34). Each rotary port is assigned a
separate device modem port which is connected with a separate
modem (col. 2, lines 34-37). A call inbound to one rotary port
from the rotary switch is routed to the rotary port’s assigned
modem port to ring its associated modem (col. 2, lines 42-45).
If the modem does not answer or is busied out, the call
forwarding device either reroutes the call to another of the
modems for answering, or dials out, via an available rotary port,
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Application No. 09/185,924
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the rotary switch and the telephone utility, to a backup facility
answering site (col. 2, lines 48-65).
The examiner argues (answer, page 4) that Thro discloses:
after failing to establish communications between the
first and second network communications devices,
operating said first system to communicate a message to
a second communications device associated with the
second system (see column 2, lines 1-51, column 3,
line 52 to column 4, line 55, column 5, lines 7-20; “a
system for and method of spawning a communication
service when a call attempt from a first user of a
first communication unit to a second user of a second
communication unit fails. . . . The spawned
communication service may be primarily directed at a
communication unit, including the first communication
unit or a third communication unit”).
Contrary to the examiner’s argument, the quoted portion of Thro
does not disclose sending a message from the first communication
unit to the second communication unit but, rather, discloses that
the spawned communication service can communicate with the first
communication unit or a third communication unit. Furthermore,
we do not find in the other cited portions of Thro the disclosure
argued by the examiner.
The examiner argues that Thro does not explicitly show a
computerized system and that Walton discloses such a system
(answer, page 4). Walton, however, like Thro, does not disclose
sending a message from the system that initiated the failed
communication attempt to the system to which the failed
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communication attempt was directed, and the examiner has not
explained how Thro and Walton would have fairly suggested doing
so to one of ordinary skill in the art.
Regarding claim 5 the examiner argues that Thro discloses
“after failing to establish communications between the first and
second communication units, trying to communicate a message via
the first communications unit to a pager associated with the
second system (see column 2, lines 1-51, column 3, line 52 to
column 4, line 55, column 5, lines 7-20)” (answer, page 6). Thro
discloses sending a message from a computer to either a pager or
a two-way radio (col. 3, lines 30-44), but does not disclose
sending a message to either the pager or the two-way radio after
an attempt to send a message to either of those devices has
failed.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellant’s claimed invention.
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Application No. 09/185,924
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DECISION
The rejection of claims 1-15 and 23 under 35 U.S.C. § 103
over Thro in view of Walton is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
TJO:svt
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Application No. 09/185,924
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P.O. BOX 2938
Minneapolis, MN 55402