Ex Parte Sen et al

Patent Trial and Appeal Board

Aug 25, 2017

13677127 (P.T.A.B. Aug. 25, 2017)

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.
13/677,127 11/14/2012 Abhishek Sen P13296US1/63266-7174-US 6970
61725 7590 08/29/2017
Morgan T ewis; Rr Rnrkins T T P / AT
EXAMINER
1400 Page Mill Road
Palo Alto, CA 94304-1124
LAI, DANIEL
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
padocketingdepartment@morganlewis.com
vskliba @ morganlewis. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte APPLE INC.1
Appeal 2017-002238
Application 13/677,127
Technology Center 2600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JON M. JURGOVAN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 1—6, 26—32, and 34. Claims 7—10 are withdrawn
and claims 16—25 are canceled. App. Br. 24—25, 27.2 The Examiner
indicates that claims 11—15 are allowable and that claims 33 and 35, if
rewritten in independent form including all of the limitations of the claims
1 The inventors are Abhishek Sen and Toufic Haddad.
2 We note that page 26 of the Appeal Brief, which would have listed the
remainder of claim 10, as well as claims 11 and 12, is missing from the
record. As these claims are not in dispute, we do not further address this
discrepancy in the record.
Appeal 2017-002238
Application 13/677,127
from which they depend, are also allowable. Non-Final Act. 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Invention
Appellant discloses a system that responds to user input manifesting
“the intent to make a telephone call” by causing “menus of selectable
options ... to be displayed to the user in an interactive manner instead of
placing the telephone call.” Abstract.
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
1. A computer-implemented method comprising:
receiving, at a device, information for placing a voice call
to a contact;
in response to receiving the information for placing the
voice call, determining that a set of stored mappings includes a
particular mapping between the contact and a particular set of
one or more menus; and
in response to determining that the set of mappings
includes the particular mapping, instead of establishing a voice
channel, displaying, on the device, a set of user-selectable
options that are based on the particular set of one or more
menus.
Rejections
The Examiner rejects claims 1—63 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mittal (US 2012/0008755 Al; published
3 The header of the rejection erroneously identifies claims 11, 12, 14, and 15
as being rejected. Non-Final Act. 4.
2
Appeal 2017-002238
Application 13/677,127
Jan. 12, 2012) and Fawcett et al. (US 5,802,526; issued Sept. 1, 1998). Non-
Final Act. 4—6.
The Examiner rejects claims 26—29 under 35 U.S.C. § 103(a) as being
unpatentable over Mittal, Fawcett, and Piliouras (US 2009/0055915 Al;
published Feb. 26, 2009). Non-Final Act. 6—8.
The Examiner rejects claim 30 under 35 U.S.C. § 103(a) as being
unpatentable over Mittal, Fawcett, and Roundtree (US 2010/0087175 Al;
published Apr. 8, 2010). Non-Final Act. 9.
The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Mittal, Fawcett, Roundtree, and Rios et al. (US 2009/
0154666 Al; published June 18, 2009). Non-Final Act. 10.
The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as being
unpatentable over Mittal, Fawcett, Roundtree, and Beauregard et al. (US
2010/0278316 Al; published Nov. 4, 2010). Non-Final Act. 10-11.
The Examiner rejects claim 34 under 35 U.S.C. § 103(a) as being
unpatentable over Mittal, Fawcett, Roundtree, and Mathew et al. (US 2005/
0055433 Al; published Mar. 10, 2005). Non-Final Act. 11—12.
ANALYSIS
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner relies on
Mittal’s use of a dialed telephone number as an index to query a database for
a corresponding menu tree as rendering obvious determining that a set of
stored mappings includes a particular mapping. Non-Final Act. 4 (citing
Mittal ^Hf 19, 39). The Examiner further relies on Mittal’s augmented
dialing, where the menus are displayed on a smart phone, as rendering
obvious displaying, on the device, a set of user-selectable options that are
based on the particular set of one or more menus. Non-Final Act. 4 (citing
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Appeal 2017-002238
Application 13/677,127
Mittal 40, 43 44). The Examiner relies on Fawcett’s use of a standard
modem to set up a data connection to render obvious displaying the user-
selectable options instead of establishing a voice channel. Non-Final Act.
4—5 (citing Mittal col. 12,11. 5—31); see also Ans. 6—7 (citing, e.g., Mittal
Abstract).
Appellant contends the Examiner erred because Fawcett’s use of a
standard modem relates to a “user actively choos[ing] to establish a data
connection” rather than receiving information for placing a voice call and
instead of establishing a voice channel, displaying a set of user-selectable
options. App. Br. 12—13. Appellant further notes that “Mittal teaches
establishing both a voice channel and a data channel, not displaying a set
of user-selectable options instead of establishing a voice channel.” Reply
Br. 11. We agree with Appellant.
Claim 1 does not preclude a voice channel being established at some
point (i.e., when the set of mappings do not include the particular mapping
or subsequent to displaying the user-selectable options). This is clear from
the recitation in claim 35—which depends indirectly from claim 1—directed
to historical data that identifies whether the particular interactive session
ended without causing the device to place a voice telephone call.
Nonetheless, claim 1 still requires displaying a set of user-selectable options
instead of establishing a voice call, in response to the determining step.
Thus, in the broadest reasonable interpretation of claim 1, read in light of the
Specification, a set of user-selectable options must be displayed at some
point before a voice call is placed (assuming a voice call is placed).
The Examiner’s findings fall short of showing that the combination of
Mittal and Fawcett teaches, suggests, or otherwise renders obvious this
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Appeal 2017-002238
Application 13/677,127
recited feature. Mittal, in particular, repeatedly teaches establishing a data
channel through which a menu structure is retrieved in addition to a voice
channel. See, e.g., Mittal 119 (“one or more software applications running
on the caller’s communication device will intercept the telephone number
. . . and either prior to, during, or subsequent to establishing the voice
channel also establish a data channel”), 120 (“in addition to hearing the
remote auto attendant’s menu structure through the voice channel’s audio
channel, the caller can also see the same menu structure on the graphical
user interface”), 144 (“in addition to hearing this portion of the menu from
the AA/IVR system in the form of a vocal prompt, the user or caller would
also see this on the smart phone’s graphical display in writing”). Mittal’s
Figures 6 and 7, which show augmented calls to an auto attendant system
and an individual respectively, illustrate examples in which an augmented
connection is established before a voice connection is established. However,
there is no indication that Mittal’s system also displays menus before the
voice connection is made (i.e., instead of establishing a voice channel).
Rather, Mittal’s system merely displays pre-messages such as the “display of
products or services” (Mittal Figure 6) or personal notes, social status, etc.
(Mittal Figure 7). The Examiner’s findings do not show, for example, that it
would have been obvious to an artisan of ordinary skill to modify Mittal’s
display of pre-messages or notes to include menu items displayed before a
voice channel is established (i.e., instead of establishing a voice channel).
The Examiner’s findings also do not show that using a standard
modem to establish a data connection cures the noted deficiency of Mittal.
As Appellant correctly notes, the information received in Fawcett is
specifically for establishing a data connection rather than a voice connection.
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Application 13/677,127
See App. Br. 12—13. Although the Examiner relies on Mittal, rather than
Fawcett, to render obvious receiving information for placing a voice call, the
Examiner’s findings do not show how Fawcett’s teachings directed to
receiving information for establishing a data connection teaches, suggests, or
otherwise renders obvious modifying Mittal so that, instead of establishing a
voice channel (i.e., using the received information for placing a voice call),
displaying a set of user-selectable options.
For these reasons, we do not sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 1, and claims 2—6, which depend therefrom. The
Examiner’s findings also do not show that Piliouras, Roundtree, Rios,
Beauregard, or Mathew cure the noted deficiency of Mittal and Fawcett.
Therefore, we also do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejections of claims 26—32 and 34, which depend from claim 1.
DECISION
We reverse the Examiner’s decision rejecting claims 1—6, 26—32, and
34.
REVERSED
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