Ex Parte Moore et al

Patent Trial and Appeal Board

Jun 6, 2016

10404330 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/404,330 0410212003
25537 7590 06/08/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Richard G. Moore
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CDR02017 7401
EXAMINER
HAN, QI
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
06/08/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD G. MOORE, GREGORY L. MUMFORD, and
DURAISAMY GUNASEKAR
Appeal2014-009670
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 APPEAL
Appeal2014-009670
Application 10/404,330
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-8, 27--45, 54--108, and 127-132. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
formatting added):
1. A communication system acting to establish
communications between a telephone of a telephone network
and an instant communications client coupled to an instant
messaging server, the communication system comprising:
[(A)] an interactive voice processing system operably
coupled to the telephone network to provide interactive voice
services to a first party using the telephone;
[(B)] a messaging interface acting to communicate with
the instant messaging server;
[(C)] a speech-to-text translator acting to convert audio
information received from the first party via the telephone into
corresponding textual information to be received by a second
party using the instant communications client;
[(D)] a text-to-speech translator acting to convert textual
information received from the second party via the instant
communications client into audio information to be received by
the first party via the telephone;
[ (E)] wherein an interactive communication session is
maintained between the first party using voice communication
and the second party using text communication; and
[ (F)] wherein presence of the second party is updated on
a continual basis at a user interface to offer an alternative for
communication between the first party and the second party by
transmitting an inquiry to the first party if the second party is
unavailable via instant communications.
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Application 10/404,330
Rejections
The Examiner rejected claims 1-3, 5-8, 27--45, 54--108, and 127-132
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Colbert et al. (Advanced Services: Changing How We Communicate, Bell
Labs Technical Journal 211-28 (January-June 2001)) (hereinafter referenced
as "Colbert") and Diament et al. (US 2002/0071539 Al; June 13, 2002). 1
Appellants' Contention
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[T]he Examiner has not, and cannot, point to a single disclosure
within either Colbert or Diament that clearly discloses, or even
suggests, the concept of offering an alternative for
communication between the first party and the second party by
transmitting an inquiry to the first party if the second party is
unavailable via instant communication.
App. Br. 10-11.
[T]he combination of Colbert and Diament would not have
suggested the claimed subject matter to those of ordinary skill
in the art because neither one of the references, nor their
combination, suggests "wherein the presence of the second
party is updated on a continual basis at a user interface to offer
an alternative for communication between the first party and the
second party by transmitting an inquiry to the first party if the
second party is unavailable via instant communications." If
neither reference discloses or suggests this claim feature, it is
difficult to see how the combination of references would
suggest what neither reference, alone, teaches. That is, since
neither Colbert nor Diament teaches updating the presence of a
1 Separate patentability is not argued for claims 2, 3, 5-8, 27--45, 54--108,
and 127-132. Except for our ultimate decision, these claims are not
discussed further herein.
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Application 10/404,330
second party on a continual basis at a user interface in order to
offer an alternative communication between parties via
transmission of an inquiry to one party when the second party is
not available via instant communications, then the combination
also does not teach or suggest this claim feature.
App. Br. 11, emphases added.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. Except as noted below, 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 conclusions reached by the Examiner. We highlight the
following additional points.
As to Appellants' above contention, Appellants argue that under
35 U.S.C. § 103 the Examiner must show a teaching (disclosure) or
suggestion in the references of every claim limitation. We disagree.
Appellants overlook that in the Court's KSR decision (KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398 (2007)), the Court repudiated any requirement
for such a "teaching" or "suggestion" to show obviousness. KSR, 550 U.S.
at 415 ("We begin by rejecting the rigid approach of the Court of Appeals.").
Rather, the requirement is only that the Examiner show "the subject matter
as a whole would have been obvious at the time the invention was made to a
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Application 10/404,330
person having ordinary skill in the art to which said subject matter pertains."
KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418
("[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ."). We conclude that the Examiner provides just such a showing in
the rejection from which this appeal is taken. Final Act. 7-11.
Essentially, despite the Court's explicit guidance in KSR, Appellants
mistakenly argue that earlier holdings control and require as a general
proposition that "in rejecting a claim under 35 U.S.C. § 103(a) it is
incumbent upon the Examiner to establish the requisite motivation." App.
Br. 9. To the contrary, the Court's guidance in KSR is controlling.
We agree with the Examiner that Colbert teaches updating the
presence of the second party is on a continual basis at a user interface and
Diament discloses providing a capability by which two parties can leave the
instant messaging service arena and automatically initiate a second
communication path such as a telephone call by sending (transmitting) a
desired message (inquiry) for the alternative communication (Diament i-fl3).
Further, we agree with the Examiner's conclusion that in light of these
teachings:
detecting user presence data/status ... disclosed by Colbert
(pages 214, 217 and 220), would be easily combined with
feature of offering alternative communication disclosed by
Diament ... when one of the media/resources/services would
be detected as being unavailable or no activity, which would be
a common sense/knowledge in the art and would be within the
scope of capability of the skilled person in the art and the result
would be predictable.
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Application 10/404,330
Final Act. 10-11. Stated differently, having shown it is known to offer
alternative communication when both a first communication and the
alternative communication are available, we deem it obvious to offer an
alternative communication when the first communication is not available.
Additionally, Appellants have not presented evidence sufficient to
show that combining the prior art was "uniquely challenging or difficult for
one of ordinary skill in the art" or "represented an unobvious step over the
prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citingKSR, 550 U.S. at 418-19).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3, 5-8, 27--45,
54--108, and 127-132 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-3, 5-8, 27--45, 54--108, and 127-132 are not patentable.
DECISION
The Examiner's rejection of claims 1-3, 5-8, 27--45, 54--108, and
12 7-13 2 is affirmed.
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Application 10/404,330
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED 2
2 As the Examiner has shown that all the claims are unpatentable, we
do not also reject Appellants' claims 1-3, 5-8, 27--45, 54--108, and 127-132
under 35 U.S.C. § 112, second paragraph, as being indefinite. Although
Appellants make much of the claim 1 conditional limitation "if the second
party is unavailable via instant communications" (claim 1 ), we conclude the
remaining language of claim 1 precludes this condition from ever being met.
The first "wherein" clause of claim 1 requires "an interactive
communication session is maintained between the first party using voice
communication and the second party using text communication" (emphasis
added). We conclude that this requirement is absolute and precludes the
conditional situation "if the second party is unavailable via instant
communications." The remaining claims contain the same issue.
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