Ex Parte Moore et alDownload PDFPatent Trial and Appeal BoardApr 25, 201410404079 (P.T.A.B. Apr. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte RICHARD G. MOORE, GREGORY L. MUMSFORD, and DURAISAMY GUNASEKAR ___________ Appeal 2012-001344 Application 10/404,079 Technology Center 3600 ___________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and KEVIN W. CHERRY, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001344 Application 10/404,079 2 STATEMENT OF THE CASE1 Richard G. Moore, Gregory L. Mumsford, and Duraisamy Gunasekar (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1, 2, 5-29, 32-50, 87, 88, 91-115, and 118-136,2 the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellants’ claimed invention relates to increasing the flexibility and ease with which parties may establish communications using different modes of communication such as telephony and instant messaging (Spec. ¶ [0009]). Claim 1, which is reproduced below, is exemplary (bracketed matter added). 1. In a communication system, a method of establishing communication among parties coupled to the communication system comprising the steps of: [(a)] from a first party using a telephone device, receiving a request to establish communications with a second party; [(b)] determining whether instant communications is established with the second party; [(c)] determining billable usage related to usage of the communication system by at least one of the first party and the second party; [(d)] determining whether payment can be obtained for usage charges pertaining to the billable usage; and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 1, 2011) and Reply Brief (“Reply Br.,” filed August 29, 2011), and the Examiner’s Answer (“Ans.,” mailed June 28, 2011). 2 Claims 3, 4, 30, 31, 89, 90, 116, and 117 have been canceled and claims 51-86 and 137-158 have been withdrawn (App. Br. 2). Appeal 2012-001344 Application 10/404,079 3 [(e)] responsive to at least whether instant communications is established with the second party, selectively establishing communications, comprising instant communications, between the first party and the second party responsive at least to whether payment can be obtained for the usage charges. The following rejection is before us on review: claim 1, 2, 5-29, 32- 50, 87, 88, 91-115, and 118-136 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bogard (US 6,757,365 B1, iss. June 29, 2004) and Pines (US 2003/0007625 A1, pub. Jan. 9, 2003). We AFFIRM-IN-PART. FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Claim 1 Appellants argue that the Examiner erred because the Examiner fails to make out a prima facie case of obviousness for any of the claims (App. Br. 10-11). Appellants further contend that the Examiner was required to “clearly address” all “positively recited features of a claim.” (App. Br. 11.) We disagree. “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection.” In re Jung, 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-001344 Application 10/404,079 4 637 F.3d 1356, 1362 (Fed. Cir. 2011). Moreover, we are not persuaded the Examiner fails to make out a prima facie case as discussed below. Appellants have specifically argued that the combination of Bogard and Pines fails to disclose claim limitations (d) and (e) (App. Br. 11-13, Reply Br. 2-6). In contrast, the Examiner identifies specific sections of Pines as meeting these limitations. Claim limitation (d) requires “determining whether payment can be obtained for usage charges pertaining to the billable usage.” Claim limitation (e) requires “responsive to at least whether instant communications is established with the second party, selectively establishing communications, comprising instant communications, between the first party and the second party responsive at least to whether payment can be obtained for the usage charges.” Appellants focus on the phrase “whether payment can be obtained” for usage charges found in both limitations and argue that the “willingness of the subscriber to incur charges bears no relation to whether or not payment can be obtained” (App. Br. 12; Reply Br. 5). Contrary to Appellants’ argument, there is nothing that supports limiting the phrase “whether payment can be obtained” for usage charges to require more than obtaining billing information from a user or determining whether the subscriber has an active account with the service. Indeed, the Specification states “it is also desirable to maximize convenience . . . by offering a wide variety of payment arrangements…” and includes credit cards, pre- subscribed, prepaid arrangements, and collect calls as examples of billing arrangements. (Spec. ¶¶ [0052], [0114].) Thus, we agree with the Examiner that claim limitation (d) is taught by Pines at Paragraphs [0076], [0077], [0094], [0207], and [0210], which describe the use of traditional wireless Appeal 2012-001344 Application 10/404,079 5 billing of a user, collect calling, flat fees, offering services free for a promotional period, and determining whether the subscriber’s account has been activated or deactivated. We also agree with the Examiner that claim limitation (e) is disclosed in Paragraphs [0076], [0077], [0094], [0207], and [0210] of Pines that shows allowing communication if the user has an active subscriber account. Appellants also argue that there was no motivation to combine Bogard and Pines (App. Br. 13-14, Reply Br. 6). In contrast, the Examiner finds that the combination of Bogard and Pines would have been obvious (Ans. 5). Here, we are persuaded that the Examiner is correct that the combination of the communication system of Bogart with the payment aspects of Pines would have been an obvious combination of known elements with predictable results with the benefit of creating a system in which the communication services can generate revenue through usage, which is the traditional revenue and profit model of the telecommunications industry. Therefore, we sustain the rejection of independent claim 1. Claims 2, 5-11, 13-29, 32-41, 43-50, 87, 88, 91-97, 99-115, 118-127, and 129-136 Aside from the arguments presented for independent claim 1, Appellants have not separately argued the rejections of claims 2, 5-11, 13- 29, 32-41, 43-50, 87, 88, 91-97, 99-115, 118-127, and 129-136, and so the rejections of these claims are accordingly sustained as well. Claims 12, 42, 98, and 128 Appellants argue that dependent claim 12, 42, 98, and 128 are patentable because the combination of Bogard and Pines does not disclose the claim Appeal 2012-001344 Application 10/404,079 6 limitation “wherein said determining whether the second party desires to use text messaging comprises accessing profile information in a database, indicating at least whether the second party desires to use text messaging and the profile information being associated with at least one of the second party and the instant communications client being used by the second party” (App. Br. 14) (Emphasis in original). The Examiner neither responds to this argument nor discusses this element in the original rejection. Although the Examiner does identify col. 6, ll. 20-26, which does mention “getting information, e.g., user info, etc.,” it is not clear whether the “user info” relates to the first or second user. Thus, we are persuaded that based on the record before us that the Examiner erred in finding that the subject matter of claim 12 is obvious. The cited portions of Bogard and Pines do not disclose accessing profile information of a second party in a database to determine whether the second party desires to use text messaging. Thus, we cannot sustain the Examiner’s rejection of claim 12. Claims 42, 98, and 128 have similar language to claim 12. We cannot sustain the Examiner’s rejection of those claims for the same reasons as discussed above for claim 12. CONCLUSIONS OF LAW The rejection of claims 1, 2, 5-11, 13-29, 32-41, 43-50, 87, 88, 91-97, 99-115, 118-127, and 129-136 under 35 U.S.C. § 103(a) as unpatentable over Bogard and Pines is not in error. The rejection of claims 12, 42, 98, and 128 under 35 U.S.C. § 103(a) as unpatentable over Bogard and Pines is in error. Appeal 2012-001344 Application 10/404,079 7 DECISION The rejection of claims 1, 2, 5-11, 13-29, 32-41, 43-50, 87, 88, 91-97, 99-115, 118-127, and 129-136 is affirmed. The rejection of claims 12, 42, 98, and 128 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation