Ex Parte Moore et al

Board of Patent Appeals and Interferences

May 25, 2011

10404113 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD G. MOORE, GREGORY L. MUMFORD, and
DURAISAMY GUNASEKAR
____________________

Appeal 2009-014420
Application 10/404,113
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and ERIC S.
FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014420
Application 10/404,113

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-19, 21-24, 26-37, 40-46, 49-57, 59-70, 73-77, and 81-105. Claims 20, 25,
38, 39, 47, 48, 58, 71, 72, and 78-80 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:

1. An adapter device for facilitating communications among
an instant communications client and a communications
gateway, the adapter device comprising:

a messaging interface through which the adapter device
acts to establish communications initiated by the instant
communications client to a telephone device coupled to circuit-
switched telephone network;

a gateway control interface acting to communicably
couple the adapter device to the communications gateway; and

a processor acting to effect establishment of
communications through the communications gateway
responsive at least to communications via the messaging
interface, wherein the adapter device acts to cause the gateway
to establish communication with a media translator to perform
translation between speech and textual information.

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Examiner’s Rejections1
1. The Examiner rejected claims 1, 6-19, 21, 26-28, 33, 37, 40-42,
46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, 90-93, 95, 97, 99, 101, 103,
and 105 under 35 U.S.C. § 102(e) as being anticipated by Bogard (US
6,757,365 B1).
2. The Examiner rejected claims 2-5, 22-24, 30, 34-36, 43-45, 55-
57, 63, 67-69, 76, and 89 as being unpatentable under 35 U.S.C. § 103(a)
over the combination of Bogard and Nix (US 2003/0110044 A1).
3. The Examiner rejected claims 94, 96, 98, 100, 102, and 104 as
being unpatentable under 35 U.S.C. § 103(a) over Bogard alone.
4. The Examiner rejected claims 1, 6-18, 21, 26-29, 31-33, 37, 40-
42, 46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, and 90-105 as being

1 As noted by Appellants (App. Br. 11 at n.1), the Examiner inadvertently
grouped claims 20, 25, 38, 39, 47, 48, 58, 71, 72, and 78-80 with the
anticipation rejection over Bogard. However, each of these claims has been
canceled. The Examiner also inadvertently failed to list claims 19, 62, 64,
65, and 92 in the statement of the anticipation rejection (see Ans. 4), even
though claims 19, 62, 64, 65, and 92 are discussed on the merits in the body
of the rejection (see Ans. 8-9, 20-22, and 25-28). For purposes of this
appeal, we consider claims 19, 62, 64, 65, and 92 to have been rejected
under § 102(e) along with claims 1, 6-18, 21, 26-28, 33, 37, 40-42, 46, 49-
54, 59-61, 66, 70, 73-75, 77, 81-88, 90, 91, 93, 95, 97, 99, 101, 103, and
105.
Similarly, the Examiner inadvertently failed to list claims 19, 62, 64,
65, 82, and 90-92 in the statement of the obviousness rejection over the
combination of Bogard and Kapil (see Ans. 32), even though claims 62, 64,
65, 82, and 90-92 are discussed on the merits in the body of the rejection
(see Ans. 46-47 and 52-55). For purposes of this appeal, we consider claims
62, 64, 65, 82, and 90-92 (and not claim 19, which was not addressed in the
relevant obviousness discussion at pages 32-58 of the Answer) to have been
rejected under § 103(a) along with claims 1, 6-18, 21, 26-29, 31-33, 37, 40-
42, 46, 49-54, 59-61, 66, 70, 73-75, 77, 81, 83-88, and 93-105.
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unpatentable under 35 U.S.C. § 103(a) over the combination of Bogard and
Kapil (US 6,941,345 B1).
5. The Examiner rejected claims 2-5, 22-24, 30, 34-36, 43-45, 55-
57, 63, 67-69, 76, and 89 as being unpatentable under 35 U.S.C. § 103(a)
over the combination of Bogard, Kapil, and Nix.
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting
claims 1, 6-18, 21, 26-28, 33, 37, 40-42, 46, 49-54, 59-61, 66, 70, 73-75, 77,
81-88, 90, 91, 93, 95, 97, 99, 101, 103, and 105 under 35 U.S.C. § 102(e) as
being anticipated by Bogard for numerous reasons, including: (1) Bogard
fails to disclose an adapter acting to cause a gateway to establish
communications with a media translator to perform translation between
speech and text; (2) Bogard’s voice portal 310 does not act to cause gateway
307 to establish communication with a media translator, and cannot be both
an adapter device and a media translator as set forth in the claims; (3) the
recited adapter device and media translator are separate elements, and
nothing in the record contradicts such; and (4) it would be technically
unreasonable for the adapter device to cause something to establish
communication with itself (App. Br. 12-15; Reply Br. 3-7).
2. Appellants contend that the Examiner similarly erred
in rejecting claims 2-5, 22-24, 30, 34-36, 43-45, 55-57, 63, 67-69, 76, and 89
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Bogard and Nix, for numerous reasons, including that (i) Bogard fails to
disclose or suggest an adapter device for causing a communications gateway
to establish communication with a media translator to perform translation
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between speech and text, and (ii) Nix fails to cure the deficiencies of Bogard
(App. Br. 15-16; Reply Br. 7-8).
3. Appellants also contend that the Examiner similarly erred
in rejecting claims 94, 96, 98, 100, 102, and 104 under 35 U.S.C. § 103(a) as
being unpatentable over Bogard alone for numerous reasons, including: (i)
Bogard fails to disclose or suggest an adapter device to cause a
communication gateway establish communication with a media translator to
perform translation between speech and text; and (ii) impermissible
hindsight would have been needed for on operator service system to provide
chat directory assistance service for instant messaging users (App. Br. 16-
17).
4. Appellants contend that the Examiner erred in rejecting claims
1, 6-18, 21, 26-29, 31-33, 37, 40-42, 46, 49-54, 59-61, 66, 70, 73-75, 77, 81,
83-88, and 93-105 under 35 U.S.C. § 103(a) over the combination of Bogard
and Kapil for numerous reasons, including: (i) neither Bogard nor Kapil
discloses or suggests an adapter device to cause a communication gateway
establish communication with a media translator to perform translation
between speech and text; (ii) nothing in Kapil is related to a media translator
to perform translation between speech and textual information (App. Br. 17-
21).
5. Appellants contend that the Examiner erred in rejecting claims
2-5, 22-24, 30, 34-36, 43-45, 55-57, 63, 67-69, 76, and 89 under
35 U.S.C. § 103(a) over the combination of Bogard, Kapil, and Nix for
numerous reasons, including: (i) Bogard and Kapil fail to disclose or suggest
the adapter device; (ii) Nix fails to cure the deficiencies of Bogard and
Kapil; and (iii) there is no motivation to combine Nix because Bogard and
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Kapil do not suggest any need for billing for IM services and IM has
conventionally been free of charge (App. Br. 22-23).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 6-19, 21, 26-28, 33, 37,
40-42, 46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, 90-93, 95, 97, 99, 101,
103, and 105 as being anticipated or obvious because Bogard and/or Nix fail
to teach or suggest the “adapter device” limitations at issue?
Did the Examiner err in rejecting claims 1, 6-18, 21, 26-29, 31-33, 37,
40-42, 46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, and 90-105 as being
obvious because the combination of Bogard and Kapil fails to disclose or
suggest the “adapter device” and “media translator” limitations at issue?
Did the Examiner err in rejecting claims 2-5, 22-24, 30, 34-36, 43-45,
55-57, 63, 67-69, 76, and 89 as being obvious because the combination of
Bogard, Kapil, and Nix, fails to disclose or suggest the “adapter device”
limitation at issue?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
arguments in the Appeal Brief and the Reply Brief that the Examiner has
erred. For the reasons that follow, and because we find that Bogard does not
disclose or suggest an adapter device acting to cause a gateway to establish
communication with a media translator, and the combination of Bogard and
Kapil does disclose or suggest such a feature, we affirm in part.
We agree with Appellants’ specific contentions, supra, as to the
anticipation rejection based on Bogard, and the obviousness rejections over
Bogard alone, and Bogard combined with Nix (see rejections 1-3 and
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contentions 1-3 above). Bogard neither discloses nor suggests the recited
adapter device. Nix teaches a billing system (e.g., as recited in claim 2), but
does not cure the deficiencies of Bogard with respect to the adapter device.
However, we disagree with Appellants’ contentions 4 and 5 above.
With regard to both the rejection of claims 1, 6-18, 21, 26-29, 31-33, 37, 40-
42, 46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, and 90-105 under § 103(a)
over the combination of Bogard and Kapil, and the rejection of claims 2-5,
22-24, 30, 34-36, 43-45, 55-57, 63, 67-69, 76, and 89 under § 103(a) over
the combination of Bogard, Kapil, and Nix, we adopt as our own (1) the
findings and reasons 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 in response to Appellants’ Appeal Brief. We concur
with the conclusion reached by the Examiner with regard to Bogard, Kapil,
and Nix.
Specifically, we agree with the Examiner that Kapil’s data-voice
converter 134 is a media translator controlled by a contact server 30 to
convert text messages into voice messages, and that Kapil’s voice network
gateway 132 establishes communication with data-voice converter 134 (Ans.
33 and 62-63). We also agree with the Examiner that Kapil discloses an
adapter device in Figure 2 as discussed at column 5, lines 20-36 and column
6, lines 5-20 (Ans. 33 and 62-63; see contact server 30). Because the
Examiner relies upon Bogard for the adapter device, and states that it would
have been obvious to combine Kapil’s data-voice converter (i.e., media
translator) with Bogard’s system (see Ans. 62-63), Appellants’ arguments
that Kapil fails to disclose or suggest the recited adapter device are not
convincing.
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 6-19, 21, 26-28, 33, 37, 40-42, 46, 49-54, 59-62, 64-66, 70, 73-75,
77, 81-88, 90-93, 95, 97, 99, 101, 103, and 105 under 35 U.S.C. § 102(e) as
being anticipated by Bogard (see the first rejection, supra).
(2) Appellants have established that the Examiner erred in rejecting
claims 2-5, 22-24, 30, 34-36, 43-45, 55-57, 63, 67-69, 76, and 89 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bogard and
Nix (see the second rejection, supra).
(3) Appellants have established that the Examiner erred in rejecting
claims 94, 96, 98, 100, 102, and 104 as being unpatentable under
35 U.S.C. § 103(a) over Bogard alone (see the third rejection, supra).
(4) The Examiner did not err in rejecting claims 1, 6-18, 21, 26-29,
31-33, 37, 40-42, 46, 49-54, 59-62, 64-66, 70, 73-75, 77, 81-88, and 90-105
as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Bogard and Kapil (see the fourth rejection, supra).
(5) The Examiner did not err in rejecting claims 2-5, 22-24, 30, 34-
36, 43-45, 55-57, 63, 67-69, 76, and 89 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Bogard, Kapil, and Nix (see the
fifth rejection, supra).
(6) On this record, claim 19 has not been shown to be unpatentable.
(7) Claims 1-18, 21-24, 26-37, 40-46, 49-57, 59-70, 73-77, and 81-
105 are not patentable.
Appeal 2009-014420
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DECISION
The Examiner’s first, second, and third rejections, supra, are reversed.
The Examiner’s fourth and fifth rejections, supra, are 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-IN-PART

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