Ex Parte Ordille et al

Patent Trial and Appeal Board

Oct 16, 2013

11446105 (P.T.A.B. Oct. 16, 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.
11/446,105 06/05/2006 Joann J. Ordille 3655/0253PUS2 1049
47827 7590 10/16/2013
Avaya by MUNCY, GEISSLER, OLDS & LOWE, PLLC
4000 LEGATO ROAD, SUITE 310
FAIRFAX, VA 22033
EXAMINER
NGUYEN, QUYNH H
ART UNIT PAPER NUMBER
2652
MAIL DATE DELIVERY MODE
10/16/2013 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 JOANN J. ORDILLE, SCOTT A. SCHELL,
JOHN HAMILTON SLYE, and BRUCE E. WALSH
____________

Appeal 2011-009861
Application 11/446,105
Technology Center 2600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and ZHENYU YANG,
Administrative Patent Judges.

YANG, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal1 under 35 U.S.C. § 134 from the rejection of claims
1-29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify Avaya Technology LLC as the real party in interest
(Appeal Br. 1).
Appeal 2011-009861
Application 11/446,105

2
STATEMENT OF THE CASE

The invention relates to conference calling. Claims 1-29 are rejected
and on appeal. Claims 1, 12, and 23 are independent claims. Claims 1-22,
28 and 29 are directed to a conference calling method and system. Claims
23-27 are directed to a computer program for executing instructions to
operate a conference call.
Claim 1, representative of claims 1-11, 28, and 29, reads as follows:
1. A method of operating a server or servers to establish a
conference call comprising:
automatically determining parties to be joined into a
conference call;
automatically notifying the parties about the conference
call;
authenticating parties that responded to the notification
about the conference call; and
using a bridging server to bridge the parties that have
been successfully authenticated into the conference call.
Claim 12, representative of claims 12-22, reads as follows:
12. A conference calling system, comprising:
a microprocessor based controller configured to automatically
determine parties to be joined into a conference call;
a notifying server configured to notify the parties about the
conference call;
an authenticating server configured to authenticate parties that
responded to the notification about the conference call; and
a conference bridging server configured to bridge the parties
that have been successfully authenticated into the conference
call.
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Claim 23, representative of claims 23-27, reads as follows:
23. A computer program embodied on a non-transitory
computer-readable medium for executing instructions on
a computer, comprising:
a first computer code configured to determine parties to
be joined into a conference call;
a second computer code configured to notify the parties
about the conference call;
a third computer code configured to authenticate parties
that responded to the notification about the conference
call;
and a fourth computer code configured to bridge the
parties that have been successfully authenticated into the
conference call.
The following grounds of rejection are before us for review:
1. The Examiner rejected claims 1, 2, 9, 12, 13, 20, and 23 under
35 U.S.C. § 103(a) as unpatentable over Chen2 in view of Malik.3
2. The Examiner rejected claims 3, 4, 14, and 15 under 35 U.S.C. §
103(a) as unpatentable over Chen in view of Malik and further in
view of Fenton.4
3. The Examiner rejected claims 5-8, 16-19, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Chen in view of Malik
and Fenton and further in view of Shaffer.5

2 Chen et al., U.S. 2003/0035381 A1, published on Feb. 20, 2003.
3 Malik, U.S. 6,801,610 B1, issued on Oct. 5, 2004.
4 Fenton et al., U.S. 5,619,555, issued on Apr. 8, 1997.
5 Shaffer et al., U.S. 7,660,849 B1, issued on Feb. 9, 2010.
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4. The Examiner rejected claims 10, 11, 21, 22, and 26-29 under
35 U.S.C. § 103(a) as unpatentable over Chen in view of Malik
and further in view of Horton.6

DISCUSSION

Claims 1, 2, 9, 12, 13, and 20
The only issue Appellants raise on appeal with respect to the rejection
of claims 1, 2, 9, 12, 13, and 20 is whether Chen teaches “automatically
determining parties to be joined into a conference call,” as recited in claim 1.
According to the Examiner, Chen teaches this claim limitation in
paragraphs [0007] and [0019] as they disclose “scheduling element 50 which
is used to store a listing of conference calls, for example setting up a
conference call on Wednesday morning at 9AM EST; and launching the
outbound calls at the appropriate time to reach the call participants.”
(Examiner’s Ans. 3-4.)
Appellants argue that “[n]othing in Chen suggests that the participants
of a conference call are automatically determined as recited in claim 1.”
(Appeal Br. 6.) Instead, Chen “discloses a system in which an individual
decides who should be included in a conference call.” (Id.) In support,
Appellants point to language in paragraphs [0016] and [0018] where Chen
discusses an individual or a user setting up a conference call. (Id.) “Even if
the call recurs every week . . . no new determination of parties is made. The

6 Horton et al., U.S. 6,757,357 B1, issued on Jun. 29, 2004.
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Application 11/446,105

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notification repeats but the determination is made only once - and it is made
by an individual, not automatically.” (Id. at 5.)
In contrast, Appellants argue, in the claimed invention, “the
appropriate parties that need to be contacted can be automatically
determined without user intervention.” (Appeal Br. 5.) For example, in one
embodiment of the invention, “a computer monitoring a LAN may
determine that the LAN is down. In response to that determination, a
computer database is searched to automatically determine appropriate
persons to be joined into a conference call.” (Id. at 4-5.)
We agree with the Examiner that Chen teaches the limitation of
“automatically determining,” as recited in claim 1. In Chen, a scheduler
communicates with a network-controlling server regarding the time of a call
and the identity of the participants. (See Chen, ¶ [0007].) The scheduling
element “may be used to store a listing of ‘recurring’ conference calls (e.g.,
setting up a sales review teleconference call every Wednesday morning at 9
AM, EST).” (Id. at ¶ [0019].)
As the Examiner correctly pointed out, “9:00AM EST on Wednesday
morning, the system or server automatically determines the parties (e.g.
John, Eddie, Susan) to be joined into a conference based on the scheduled
event or calendar.” (Examiner’s Ans. 10.)
Appellants argue, “[r]ather than determining who to join in the
conference, Chen’s system joins a predetermined group of people into a
conference based on a list.” (Reply Br. 2.) Appellants fail to explain how
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this scenario differs from the example in Specification of the present
application. Indeed, the Specification states that when the LAN is down,
“the conference calling method of the present invention determines the
appropriate people to contact.” (Spec. ¶ [0023].)
[T]he relevant parties may be stored in a centralized database or
may be searched or queued to determine the appropriate parties.
For example, a database may include a list of appropriate
persons to be contacted in the event of a network failure and
this list is then accessed when the network fails.
(Id. at ¶ [0024].)
We agree with the Examiner that “[t]he ‘system’ in the claimed
invention, by itself, does not know who would have the right skills or
expertise to fix the LAN when it is down.” (Examiner’s Ans. 10.) Instead,
at some point, someone created a list of appropriate persons to be contacted
in the event of a network failure and stored the predetermined contact list in
the database. (Id. at 11.) When the LAN fails, the conference calling
method of the present invention joins this predetermined group of people
into a conference based on that contact list. In other words, the claimed
invention operates in the manner as the recurring-conference-call example
Chen discloses. We find Chen teaches “automatically determining parties to
be joined into a conference call,” as recited in claim 1. Therefore, we affirm
the Examiner’s rejection of claims 1 and 12. Claims 2 and 9 fall with claim
1; claims 13 and 20 fall with claim 12.

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Claims 3, 4, 14, and 15
Appellants contend that Fenton does not make up for the alleged
deficiency in the combination of Chen and Malik. (Appeal Br. 8.) This
argument is not persuasive as we found no deficiency in the combination of
Chen and Malik. Thus, we affirm the Examiner’s rejection of claims 3 and
14 for the same reason discussed above. Claim 4 falls with claim 3; claim
15 falls with claim 14.

Claims 5-8 and 16-19
Appellants contend that Fenton and Shaffer fail to make up for the
alleged deficiency in the combination of Chen and Malik. (Appeal Br. 8.)
This argument is not persuasive as we found no deficiency in the
combination of Chen and Malik. Thus, we affirm the Examiner’s rejection of
claims 5 and 16. Claims 6-8 fall with claim 5; claims 17-19 fall with claim
16.

Claims 10, 11, 21, 22, 28, and 29
Appellants contend that Horton does not make up for the alleged
deficiency in the combination of Chen and Malik (Appeal Br. 9). This
argument is not persuasive as we found no deficiency in the combination of
Chen and Malik. Thus, we affirm the Examiner’s rejection of claims 10, 21,
and 28. Claims 11, 28, and 29 fall with claim 10; claim 22 falls with claim
21.
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Claims 23
The Examiner rejected claim 23 as obvious over Chen in view of
Malik. Appellants only argue that the art of record does not teach a
computer program with “a first computer code configured to determine
parties to be joined into a conference call.” (Appeal Br. 7.) We disagree.
As explained in connection with claim 1, for a recurring conference call, the
system disclosed in Chen determines the parties to be contacted. See supra,
5-6. This and other functions are carried out through commands and
computer program embodied in the servers and systems in Chen.
(Examiner’s Ans. 12.) Indeed, as Appellants acknowledged, the servers and
systems “may be conveniently implemented using a conventional general
purpose digital computer or microprocessor programmed” by those skilled in
the computer art. (Spec. ¶ [0044].) Similarly, “[a]ppropriate software
coding can readily be prepared by skilled programmers.” (Id.) We find
Chen teaches a computer program with “a first computer code configured to
determine parties to be joined into a conference call.” Therefore, we affirm
the rejection of claim 23.

Claims 24 and 25
Appellants contend that Fenton and Shaffer fail to make up for the
alleged deficiency in the combination of Chen and Malik. (Appeal Br. 9.)
This argument is not persuasive as we found no deficiency in the
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combination of Chen and Malik. Thus, we affirm the Examiner’s rejection of
claims 24. Claim 25 falls together with claim 24.

Claims 26 and 27
Appellants contend that Horton does not make up for the alleged
deficiency in the combination of Chen and Malik (Appeal Br. 9). This
argument is not persuasive as we found no deficiency in the combination of
Chen and Malik. Thus, we affirm the Examiner’s rejection of claim 26.
Claim 27 falls together with claim 26.

SUMMARY

We affirm the rejections on appeal.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc