Ex Parte McQuaide et al

Patent Trial and Appeal Board

Feb 1, 2013

10108348 (P.T.A.B. Feb. 1, 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.
10/108,348 03/29/2002 A.C. McQuaide JR. BS01391 2143
38516 7590 02/04/2013
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
BARQADLE, YASIN M
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/04/2013 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 A.C. McQUAIDE JR., DAVID SCOTT,
and XIAOFENG GAO
____________

Appeal 2010-005127
Application 10/108,348
Technology Center 2400
____________

Before DEBRA K. STEPHENS, JOHNNY A. KUMAR, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 11, and 13-21. Claims 6-10 and 12 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE

Independent claim 11, reproduced below with disputed subject matter
highlighted, is representative of the subject matter on appeal.
11. A method for conducting multiple communications,
comprising:
registering a called party as a subscriber with a third
party service provider;
terminating a call from a caller to the called party;
during the call, prompting the caller with options to
receive electronic documents associated with the called party;
during the call, receiving a response to the prompt that
indicates which electronic document the caller desires;
sending, during the call between the caller and the called
party, a data message from the called party to the service
provider, the data message including information identifying
the caller and profile information describing the called party’s
profile;
receiving, at the called party during the call, a response
message from the service provider that indicates whether the
caller has registered to receive the additional information
related to the called party;
when the caller is registered, then, during the call,
sending the electronic document from the called party to the
service provider; and
forwarding the electronic document from the service
provider to an Internet Protocol address associated with the
caller, such that the caller’s Internet Protocol address remains
unknown to the called party.

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Rejections on Appeal
The Examiner rejected claims 1, 11, and 18 rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Ans. 3.
The Examiner rejected claims 1-5, 11, and 13-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Chack (US 6, 751,211 B1, Jun. 15,
2004). Ans. 3-6.
The Examiner alternatively rejected claims 1-5, 11, and 13-21 under
35 U.S.C. § 103(a) as being unpatentable over Brown (US 2003/0112931
A1, Jun. 19, 2003) in view of Chack. Ans. 6-9.

ISSUE 1
Indefiniteness - Claims 1, 11, and 18
As Appellants do not address the indefiniteness rejection, Appellants
have waived any argument of error and we summarily sustain the rejection
of claims 1, 11, and 18 under 35 U.S.C. § 112, second paragraph, as
indefinite. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE 2
35 U.S.C. § 103(a) – Claims 1-5, 11, and 13-21
Appellants’ Contention
1. Appellants contend that the Examiner erred in rejecting
independent claim 111 under 35 U.S.C. § 103(a) because Brown and Chack
do not teach or suggest “during the call, prompting the caller with options to

1 Independent claims 1 and 18 recite similar subject matter. Separate
patentability is not argued for dependent claims 2-5, 13-17, and 19-21.
Therefore, we treat claim 11 as representative for purposes of this appeal.
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receive electronic documents associated with the called party.” App. Br. 10-
14. Appellants further contend the Examiner erred in rejecting independent
claim 11 under 35 U.S.C. § 103(a) because Brown and Chack do not teach
or suggest “during the call, receiving a response to the prompt that indicates
which electronic document the caller desires.” App. Br. 15-16.
2. Appellants further contend that Brown and Chack do not teach
or suggest “a third party service provider” because Chack’s “information
provider” and the “transaction processing system” describe an “agent and
the caller” and where “the agent sends web pages to the caller’s computer.”
App. Br. 11-12.
3. Appellants also contend that the Examiner erred in rejecting
claim 11 under 35 U.S.C. § 103(a) because Chack does not teach “receiving,
at the called party during the call, a response message from the service
provider that indicates whether the caller has registered to receive the
additional information related to the called party.” App. Br. 9-10; Reply Br.
5.

Issue on Appeal
Whether the Examiner erred in rejecting claims 1-5, 11, and 13-21 as
being obvious over Chack or alternatively over Chack and Brown?

ANALYSIS
35 U.S.C. § 103(a) – Brown and Chack
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief) that the Examiner has erred. We disagree with
Appellants’ conclusions. We adopt as our own (1) the findings and reasons
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set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans.
11-16) in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight and address specific
findings and arguments for emphasis as follows.
As to Appellants’ contention 1, we note that the Examiner has
identified the relevant portions of Brown and Chack and has provided
sufficient explanation with corresponding citations to various parts of the
reference for teaching the feature disputed in Appellants’ contention (Ans.
11-14). For emphasis, we note that the Examiner cites to portions of Brown
that describe an Interactive Voice Response (IVR) Navigation (Fig. 6) that
provides:
audio announcements to a caller directing the caller to press
certain telephone keys to navigate the system. At each level of
the overall IVR menu, the caller may be presented with one or
more options. Selecting a particular option may bring up yet
another level of choices, connect the caller to a party (e.g., a
human) or information source (e.g.,an automated system)
matching the caller's choices, or place the caller in a wait queue
for such a party.

In one implementation of this embodiment, the options
presented by an IVR system are presented to a caller
graphically and/or audibly (e.g., on a computing or
communication device), in real-time or off-line.

Brown, ¶¶ [0154] – [0157], (emphasis ours).
Additionally, Brown discloses that:
one level of the audio menu may be presented at a time, with
each choice yielding the suitable options at the next level (e.g.,
through a hyperlink). Alternatively, multiple levels may be
presented together or multiple levels may be condensed to
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allow direct selection of a destination rather than being limited
to the serial mode of operation of an IVR. In addition, a search
tool may be provided so that the caller may search for possible
destinations (e.g., ‘technical support,’ ‘reservations’).

Brown, ¶ [0161] (emphasis ours).
Thus, Brown’ IVR system teaches prompting a caller in real-time to
select particular options, such as technical support or reservations, or to
receive hyper linked information (Brown, ¶¶ 0154] – [0157], [0161]). In
other words, we agree with the Examiner that Brown teaches “during a real-
time conversation between a caller and an IVR system (500 or 600),
providing the caller desired hyper linked information and a search tool
(electronic document) for possible desired services such ‘technical support,’
‘reservations’.” Ans. 12-13. Furthermore, Appellants do not make any
substantive arguments to distinguish the disputed limitation from the
portions of the reference (Brown ¶¶ [0154] – [0157], and [0161]) relied on
by Examiner. As such, we agree with the Examiner that the recited feature
“during the call, prompting the caller with options to receive electronic
documents associated with the called party,” and “during the call, receiving
a response to the prompt that indicates which electronic document the caller
desires,” as required by claim 11 is met by the IVR system in Brown.
As to contention 2, we disagree with Appellants’ arguments.
Appellants have not provided an explicit definition of “service provider” in
their Specification. Appellants’ Specification indicates that the service
provider is “capable of receiving registration information from a subscriber
and a caller,” (Spec. ¶0006), “interact[s] with the subscriber” using a data
network (Spec. ¶0028), the callers register with the service provider using
online registration process (Spec. ¶0031), and collects and stores
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information in a customer profile database (Spec. ¶0032). Furthermore, the
service provider uses information contained in a message to determine
whether the caller has registered and agreed to receive content. (Spec.
¶0042). Thus, according to Appellants’ Specification, the service provider
handles the registration process. Although this disclosure is not limiting to
the claimed invention, it provides context for which the term “service
provider” is interpreted. Thus, we interpret the claim language “service
provider” using the broadest reasonable interpretation consistent with
Appellants’ disclosure – to include Chack’s information provider teaching.
Ans. 14. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Chack
discloses (col. 12, ll. 14-15) that information provider 194 is the “system that
handles the registration process.” In addition, we agree with the Examiner
(Ans. 14) that Chack’s information provider 194 (Fig. 8) corresponds to the
“third party service provider.” Ans. 10-11, 14 (citing Chack, col. 12, ll. 5-12
and ll. 25-59). Specifically, we agree with the Examiner’s finding that
Chack teaches or at least suggests an information provider 194 for
maintaining registry information (unique identifier and IP address) of
transaction initiators (callers) that is used to determine whether a user
(transaction initiator/caller) is associated with the unique identifier and
notifying the determination results to the transaction processing system.
Ans. 14.
Accordingly, we agree with the Examiner that the combination of
Brown and Chack teaches or at least suggests the invention as recited in
independent claim 1 and commensurately recited independent claims 11 and
18. Appellants did not separately argue dependent claims 2-5, 13-17, and 21
and thus, these claims fall with their respective independent claims.
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35 U.S.C. § 103(a) – Chack
Regarding contention 3, as noted above, we sustain the Examiner’s
rejections under 35 U.S.C. § 103(a) as being unpatentable over Brown and
Chack. Therefore, Appellants’ arguments (App. Br. 9-10; Reply Br. 5) with
respect to the Examiner’s alternative rejection under 35 U.S.C. § 103(a) as
being unpatentable over Chack is moot.
Accordingly, the Examiner did not err in finding the combination of
Brown and Chack teaches or suggests the invention as recited in independent
claims 1, 11, and 18 and claims 2-5, 13-17, and 19-21, not separately argued.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 11, and 18 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner did not err in finding that claims 1-5, 11, and 13-21 are
unpatentable over Brown and Chack.

DECISION
The Examiner’s rejections of claims 1-5, 11, and 13-21 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

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