Ex Parte South et al

Patent Trial and Appeal Board

Feb 17, 2016

12841258 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,258 07/22/2010
96355 7590 02/19/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Michael South
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.
JCE-5524-11 1686
EXAMINER
CHU, WUTCHUNG
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SOUTH, JOHN ERICKSON,
and ANDREW JAMES MCSHERRY
Appeal2014-003487
Application 12/841,25 8
Technology Center 2400
Before ALLEN R. MacDONALD, JEAN R. HOMERE,
and AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003487
Application 12/841,25 8
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Exemplary Claims
Claim 1 under appeal reads as follows (emphasis added):
1. A method of selecting and using an origination identifier in an
Internet Protocol (IP) environment, comprising:
receiving an indication from a user of a communications
device that is associated with a plurality of origination identifiers as
to which of the plurality of origination identifiers is to be used when a
communication is sent from the communications device;
transmitting a communication that originates from the user's
communications device such that the communication uses the
indicated origination identifier; and
transmitting the indicated origination identifier with the
communication.
Rejections on Appeal
1. The Examiner rejected claims 1-5, 7-15, and 17-23, as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Walter et al.
(US 2002/0022472 Al, Feb. 21, 2002) and Vendrow et al. (US
2011/0177797 Al, July 21, 2011) .1
1 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 2-5, 7-15, and 17-23, is not discussed further herein.
2
Appeal2014-003487
Application 12/841,25 8
2. The Examiner rejected claims 6 and 16 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Walter, Vendrow, and
Mottes (US 2007/0298771 Al, Dec. 27, 2007). 2
Appellants' Contention 3
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Independent claim 1 recites "receiving an indication from
a user of a communications device that is associated with a
plurality of origination identifiers as to which of the plurality of
origination identifiers is to be used when a communication is
sent from the communications device" and "transmitting the
indicated origination identifier with the communication [that
originated from the user's communications device]." (emphasis
added). . . . Watler and Vendrow, taken alone or m
combination, fail to disclose or suggest such features.
App. Br. 8. Further:
Watler thus does not contemplate selecting an identifier from
which the communication will originate and then subsequently
transmitting that identifier with the communication. . . . This,
Watler fails to disclose. Vendrow is likewise deficient.
App. Br. 9--10. Additionally:
V endrow does not at all envision selection of a phone number
from a plurality of phone numbers associated with a telephony
device, let alone transmitting the selected number with a
communication that originates from that telephony device.
App. Br. 10-11.
2 As to this rejection, our decision as to the underlying § 103 rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
rejection of these claims is not discussed further herein.
3 This contention is determinative as to the rejections on appeal. Therefore,
Appellants' other contentions are not discussed herein.
3
Appeal2014-003487
Application 12/841,25 8
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
As to Appellants' above contention, we agree. Contrary to
Examiner's findings (Final Act. 3--4), our review of Watler and Vendrow
does not find ( 1) a communications device that is associated with a plurality
of origination identifiers, and (2) receiving an indication from a user as to
which of the plurality of origination identifiers is to be used.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-23 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, claims 1-23 have not been shown to be
unpatentable.
DECISION
The Examiner's rejections of claims 1-23 are reversed.
REVERSED
4