Ex Parte Wendt

Patent Trial and Appeal Board

Aug 29, 2017

13198880 (P.T.A.B. Aug. 29, 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.
13/198,880 08/05/2011 Christopher A. Wendt 007412.01371 8654
71867 7590 08/31/2017
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
NGUYEN, HAO HONG
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. WENDT
Appeal 2016-001176
Application 13/198,880
Technology Center 2400
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001176
Application 13/198,880
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 28—49, which constitute all the claims pending in this appeal. Claims
1—27 have been canceled. Claims App’x. We have jurisdiction under 35
U.S.C. § 6(b). We heard oral arguments on August 17, 2017. A transcript
of the hearing will be added to the record in due course.
We REVERSE.
THE INVENTION
Appellant’s claimed subject matter is directed to a scheduled
mapping of a public facing identity (e.g., a first telephone number) of an
outgoing communication from a source device (e.g., a calling party’s first
telephone) to a public facing identity associated with a second device (e.g., a
telephone number of a second telephone of the calling party) and routing the
outgoing communication with the second public facing identity (e.g., the
telephone number of the second telephone) as the source of the outgoing
communication (e.g., telephone call). Spec. Tflf 41^44. Claim 28,
reproduced below with a disputed limitation emphasized in italics, is
illustrative of the claimed subject matter:
28. A method comprising:
associating preferences with a plurality of user devices
associated with different public facing identities;
receiving, at a computing device, an outgoing
communication from a first user device among the plurality of
user devices, the outgoing communication indicating a first
public facing identity as a source of the outgoing
communication;
mapping the first public facing identity of the outgoing
communication to a second public facing identity associated with
a second user device among the plurality of user devices
according to a schedule of the preferences indicating when the
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Appeal 2016-001176
Application 13/198,880
first public facing identity is to be mapped to the second public
facing identity, and
routing the outgoing communication with an indication of
the second public facing identity as the source of the outgoing
communication.
App. Br. 8 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O’Neal et al. US 2007/0224979 A1 Sept. 27, 2007
Gisby et al. US 2009/0279683 Al Nov. 12, 2009
REJECTIONS
The Examiner rejected the claims as follow:
Claims 28—34 and 36-49 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Gisby. Final Act. 2—11.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gisby and O’Neal. Final Act. 12—13.
APPELLANT’S CONTENTION
Appellant contends Gisby’s system includes scheduling of device
capabilities, such as whether a device is activated to receive incoming calls,
and user setting of automatic number identification (ANI) information, but
fails to disclose their integration, i.e., that “the ANIs set by the user may
change according to a schedule.” App. Br. 4.
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Appeal 2016-001176
Application 13/198,880
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred in rejecting independent claims 28, 38,
and 45 under 35 U.S.C. § 102(b) as being anticipated by Gisby. We agree
with Appellant’s conclusions as to this rejection of the claims.
The Examiner finds Gisby’s placing of a “contact number . . . into the
ANI/DNIS information of placed calls, which helps mask the physical
telephone number of the device from the other party on the call”, as
described at paragraphs 73 and 83, discloses the disputed limitation of
mapping the first public facing identity of the outgoing communication to a
second public facing identity associated with a second user device among
the plurality of user devices according to a schedule of the preferences
indicating when the first public facing identity is to be mapped to the second
public facing identity as recited by claim 28. Final Act. 3. The Examiner
further finds Gisby “allow[s] the user to set up which remote devices are
active and when during certain days of the week for placing calls” and the
use of “remote administration device 52 to set numerous user preferences”
disclose the claimed schedule of identity mapping as further defined by
dependent claims 33 and 34. Final Act. 5 (citing Gisby Fig. 5B and Tflf 27,
58, 64—65, and 83).1 Appellant argues Gisby’s disclosures of modifying
automatic number identification (ANI) information (i.e., the identity of the
outgoing communication) and “allowing the user to set up a schedule that
1 Although the Examiner specifically addresses the scheduling limitation in
connection with dependent claims 33 and 34, because the same portions of
Gisby are cited in connection with the rejection of independent claim 28, we
conclude Appellant also had been put on notice of the Examiner’s reasons
for rejecting the scheduling aspect of disputed limitation of claim 28.
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Appeal 2016-001176
Application 13/198,880
lists particular days and times certain devices are activated” are not disclosed
as interrelated features. App. Br. 4. That is, “Gisby does not contemplate
that a user would set a schedule to be used for modifying the ANL” Id. The
Examiner replies by finding, if a call is placed using a remote device
currently scheduled to be inactive, “the mapping to the user preference for
the Outside Call ANI won’t be applied.” Ans. 18 (citing Gisby Fig. 5D and
173 (emphasis omitted)). Appellant replies, arguing “that some statements
in the Examiner’s Answer go beyond gap-filling, and in fact, are misleading
or incorrect.” Reply Br. 3. According to Appellant
there is NO connection/relationship between the schedule used
by Gisby’s server 30 and the value in Gisby’s Extension Call ANI
field 534a. Gisby merely discloses that if an outgoing call is
placed through the server 30, the value (if any) in the Extension
Call ANI field 534a is used, so that the receiving/called party will
see the Outside Call ANI. See Gisby at | [0073].
Id.
We agree with Appellant. As argued by Appellant,
The Office cannot fill in the gaps of Gisby by assuming that the
schedule disclosed in paragraph [0064] would be a user
preference used to route outgoing calls as mentioned in
paragraph [0027]. Such gap filling amounts to an improper
anticipation rejection. See In re Arkley, 455 F.2d 586, 587
(C.C.RA. 1972) (explaining that, for an anticipation rejection, a
cited reference “must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the
[invention] without any need for picking, choosing, and
combining various disclosures not directly related to each other
by the teachings of the cited reference.”).
App. Br. 5. Because the Examiner provides inadequate evidence that
Gisby’s schedule is used in mapping calling telephone ANI, we agree with
Appellant that the prior art fails to disclose the argued limitation.
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Application 13/198,880
Accordingly, we are constrained by the record before us and do not sustain
the rejection of independent claim 28 under 35 U.S.C. § 102(b) as being
anticipated by Gisby. Independent claims 38 and 45, although of different
scope than claim 28, include similar requirements that device identity be
based on a schedule,2 which relationship is not disclosed by Gisby, such that
we further do not sustain the rejection of those claims. For the same reasons
we do not sustain the rejection of dependent claims 29—34, 36, 37, 39-44,
and 46-49 under 35 U.S.C. § 102(b) as being anticipated by Gisby.
Furthermore, we do not sustain the rejection of claim 35 under 35 U.S.C.
§ 103(a) over Gisby and O’Neal, as the Examiner’s applications of the
O’Neal reference fails to cure the deficiency in the base rejection addressed
supra.
DECISION
We reverse the Examiner’s rejection of claims 28 49.
REVERSED
2 Claim 3 8 recites “identifying a second public facing identity based at least
in part on the first public facing identity of the outgoing communication, a
date, and a time” and claim 45 recites “transmitting the outgoing
communication that indicates a second user device of the group of associated
user devices as the source of the outgoing communication in response to an
identification of the second user device according to a schedule.” App. Br.
9—11 (Claims Appendix).
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