10404330 (P.T.A.B. Jul. 23, 2013)

Ex Parte Moore et al

Patent Trial and Appeal BoardJul 23, 2013

10404330 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD G. MOORE, GREGORY L. MUMFORD, and DURAISAMY GUNASEKAR ____________________ Appeal 2010-011124 Application 10/404,330 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-011124 Application 10/404,330 2 STATEMENT OF THE CASE This is a decision on Appellants’ Request for Rehearing.1 Appellants’ Contentions 1. Appellants contend that as to claim 1: Independent claim 1 recites, inter alia, "wherein an interactive communication session is maintained between the first party using voice communication and the second party using text communication." Independent claims 9, 18, 27, 54, 76, 98, 109, 118, 127, 133, and 148 recite similar features with varying scope. At pages 6 to 7 of the Decision, the Board found that Appellants' specification, paragraph [0071], page 23, particularly, "This arrangement using a bridging switch is well- known among those of ordinary skill in the art" constituted an "admission" by Appellants that it was well-known to maintain an interactive communication session. Respectfully, the Board erred. (Rehearing Request 1). More specifically Appellants contend: The cited portion of the Specification only acknowledged that it was well-known to employ a bridging switch to maintain a connection between parties communicating by telephone. However, it is NOT an acknowledgement that it was well- known to maintain a communication session "between the first party using voice communication and the second party using text communication." (Rehearing Request 2). 2. Appellants contend that as to claim 5: At page 7 of the Decision, the Board found that Colbert's disclosure at page 217 that "Interactions between the multiple applications/services and their components must be managed based on service deployment plans of service providers and on customer preferences" is sufficient to meet the claim features of 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Appeal 2010-011124 Application 10/404,330 3 claim 5, i.e., "a capabilities-determining process for determining a capability attribute associated with the instant communications client and wherein communications are established between the first party and the instant communications client responsive at least to the capability attribute." Appellants respectfully disagree. (Rehearing Request 2). Appellants go on to contend “the Board never set forth exactly what meaning the Board is ascribing to the claimed terms.” (Rehearing Request 2-3). Appellants further contend: There is nothing in the disclosure of Colbert regarding the determination of "capabilities," much less determining a capability attribute associated with the instant communications client. It is not understood how a teaching of managing application interactions based on customer preferences can be interpreted to correspond to "a capabilities-determining process," much less to "a capabilities-determining process for determining a capability attribute associated with the instant communications client and wherein communications are established between the first party and the instant communications client responsive at least to the capability attribute." There is no determination of any "capability" in Colbert or a "capability attribute," especially a capability attribute "associated with the instant communications client." (Rehearing Request 3). 3. Appellants contend that as to claim 8: The Board found that the "claim language 'determining whether payment can be obtained for usage charges' does not differentiate over the mere act of determining that a subscriber exists to whom the bill may be presented." Appellants respectfully disagree. (Rehearing Request 4). More specifically Appellants contend: The mere act of determining whether a subscriber exists only results in an entity to whom the bill can be presented; but there is no guarantee that payment of that bill "can be obtained" Appeal 2010-011124 Application 10/404,330 4 because the subscriber may be unwilling or unable to pay. Moreover, in accordance with the claim language, the service (i.e., the establishment of the communications) is not provided until and unless "payment can be obtained." That is, "wherein the establishing communications between the telephone and the instant communications client is selectively performed responsive at least to whether payment can be obtained for the usage charges." (Rehearing Request 4). Appellants further contend that: Thus, the claim language does exclude the situation where a bill is merely handed to a subscriber after the service is provided, without knowing if payment can be obtained. (Rehearing Request 5)(emphasis added). ANALYSIS First Contention As to Appellants’ first contention that the Board has erred, we disagree. Contrary to Appellants’ assertion, paragraph [0071] of Appellants’ Specification is not merely an admission “that it was well-known to employ a bridging switch to maintain a connection between parties communicating by telephone.” Rather, this paragraph is Appellants’ disclosure of bridging switch 54 of Fig. 1 which is an embodiment of Appellants’ invention. (Spec. ¶[0031]). As indicated in our Decision, “[w]e find no disclosure by Appellants of ‘maintaining’ except as performed by the prior art bridging switch 54.” (Decision 7). Second Contention As to Appellants’ second contention that the Board has erred in relying on Colbert at page 117, we disagree. Contrary to Appellants’ allegation, that “the Board never set forth exactly what meaning the Board is Appeal 2010-011124 Application 10/404,330 5 ascribing to the claimed terms,” the Board relied on Appellants’ Specification’s (Spec. ¶[0076]) indication that at least “[c]apabilities server 117 may also express preferences on behalf of called party 137, such as preferred modes of communications. . . .” (Decision 6 and 7). We clarify that given the breadth of Appellants’ description of the term “capacity attribute,” and Appellants’ inclusion of “preferred modes” (see FF2 of the Decision), we find no error in the Examiner’s reasoning. Further contrary to Appellants’ allegation that the Board is relying on this portion of Colbert to affirm the Examiner’s rejection, the basis of our affirmance was our explicit agreement with the Examiner’s rejection and analysis. “We agree with the Examiner’s reasoning.” (Decision 7). Appellants’ request does not dispute the Examiner’s reasoning. Our added discussion of Colbert (page 117) and paragraph [0076] of Appellants’ Specification was an indication of our concern that Appellants’ arguments appear to attempt to ascribe a limited meaning to the claim term which meaning is divorced from broader examples in Appellants’ Specification. Third Contention As to Appellants’ third contention that the Board has erred, we disagree. Contrary to Appellants’ allegation that “determining whether a subscriber exists only results in an entity to whom the bill can be presented,” there is a distinct difference between the general term “entity” and the specific term “subscriber.” To “subscribe” includes the act of signing a Appeal 2010-011124 Application 10/404,330 6 contract2 (an agreement enforceable by law).3 A subscriber is not as Appellants’ allege a mere “entity to whom the bill can be presented.” While the claim language does exclude the situation where a bill is merely handed to some unbound entity after the service is provided, without knowing if payment can be obtained, the same is not true where that entity is a “subscriber.” In the subscriber situation there is a level of certainty that payment can be obtained. DECISION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing to the extent of reconsidering our decision, but we deny Appellants’ request with respect to making any change thereto. 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)(v). REQUEST FOR REHEARING DENIED msc 2 Collins English Dictionary - Complete & Unabridged 10th Edition 2009 © William Collins Sons & Co. Ltd. 1979, 1986 © HarperCollins Publishers 1998, 2000, 2003, 2005, 2006, 2007, 2009. 3 Dictionary.com Unabridged Based on the Random House Dictionary, © Random House, Inc. 2013.