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Patent Trials and Appeals Board

Jun 30, 2021

2020001948 (P.T.A.B. Jun. 30, 2021)

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.
15/787,090 10/18/2017 Taavet Hinrikus 335637-US-
CNT[4](1777.A79
3104
144365 7590 06/30/2021
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
AMINZAY, SHAIMA Q
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
SLW@blackhillsip.com
usdocket@microsoft.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAAVET HINRIKUS, GARETH O’LOUGHLIN,
LIZ RICE, and MAX MELCHIOR

Appeal 2020-001948
Application 15/787,090
Technology Center 2600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–8, 10–15, and 21–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Microsoft Technology Licensing, LLC.” Appeal Br. 2.
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Application 15/787,090

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STATEMENT OF THE CASE
Disclosed Invention
The Specification discloses a client device that handles “a request . . .
to initiate a communication session with a selected contact” by selecting “a
first communication network or a second communication network for the
communication session . . . based on the selected contact and user
preferences” and then establishing “the communication session . . . using the
selected . . . communication network.” Spec., abst. Each client device, e.g.,
a personal computer and companion handset (id. ¶ 30), can provide the
following identification of available networks: “[T]he handsets indicate
which (if any) of the two [network] lines ([e.g.,] P2P VoIP service or PSTN)
are currently in use” such that, “[i]f one of these lines are being used by a
user of one handset . . . , a second user of a second handset . . . can use the
alternative line for making calls” (id. ¶ 43); and “‘[P]resence’ information in
the contact list is an indication of the online status of a particular user of the
P2P communication service[e.g.,] . . . [shows] if a contact is online, offline,
busy or away . . . next to the contact’s name . . . .” (id. ¶ 59).
Claimed Invention
Claim 1, reproduced below, is illustrative of argued subject matter.
1. A method comprising:
receiving, at a client device, a request to initiate a communication
session with a selected contact using a communication service;
determining, at the client device, that a first communication
network and a second communication network are available to
initiate the communication session with the selected contact;
presenting, based on said determining, a prompt that enables a
user to select one of the first communication network or the
second communication for initiating the communication session;
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receiving a user selection of one of the first communication
network or the second communication network; and
establishing, based on which of the first communication
network or the second communication network is selected, the
communication session with the selected contact using the
selected first communication network or second communication
network.
Appeal Br. 14.
Rejection
Claims 1, 4–8, 10–15, and 21–28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hamalainen (US 2008/0059627 A1;
Mar. 6, 2008) and Silver (US 2007/0206568 A1; Sep. 6, 2007).
Final Act. 3–9.
OPINION
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
We are unpersuaded of error in the rejection of claim 1 and therefore sustain
the Examiner’s decision to reject claims 1, 4–8, 10–15, and 21–28.
1. Claimed “determining, at the client device, that a first
communication network and a second communication
network are available to initiate the communication session
with the selected contact;”
Appellant first argues that Hamalainen fails to teach or suggest the
claimed determining of networks, which is quoted immediately above.
Appeal Br. 8. Appellant contends:
The Final Office Action . . . alleges that Hamalainen teaches or
suggests the “determining” . . . [because] “the user can operate
[the] client to choose communication with [a] PSTN network or
Internet (e.g., VoIP etc.)).” [Final Act. 3.] Appellants
respectfully disagree . . . .
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Hamalainen . . . [“]store[s], in a memory, a set of contact
names, each contact name being associated with one or more
account identifiers that identifies a communication protocol for
communicating with the contact.” [Hamalainen, abst.] …
. . . .
[Further,] . . . the contacts database includes “information
identifying one or more communication accounts or service
providers through which the party may be accessible.”
[Id. ¶ 29.] …
[Thus, t]he contacts database merely informs a user of the
networks through which a contact name may be contacted. The
contacts database does not determine whether [each] network,
itself, is available for contacting the contact name. . . . [That is,
though] the contacts database stores information about the
networks that a user may use to contact a particular contact
name, . . . the contacts database does not store information that
is used to determine whether the network is actually available
for conducting the communication session.
Appeal Br. 10 (paragraphing added). The Examiner responds:
[Hamalainen’s] mobile device . . . clearly identif[ies]
(determining) the accessibility (availability) of different
networks (first, second, third, and etc. networks …)[. For
example,] the mobile device “identif[ies] one or more
communication accounts or service providers through which the
party may be accessible” [(]each service provider
[re]present[ing a] different network[). Hamalainen ¶ 29.]
“[O]ne account may be a telephone based account, another a
VoIP account, and yet others may be IM accounts[.]” [Id.]
[E]ach account contain[s] “information to be used in contacting
the remote party” . . . [and a] connectivity status[. Id.]
. . . [For example,] status blocks . . . show[] the availability of
the service provider or networks[ (id. ¶ 31),] “. . . data
indicating to the processor how communication[ may be
]initiated or maintained with a remote party identified by the
contact name [(id. ¶ 29)]” [and “p]resence information
. . . identif[ying] whether a party is accessible by[—i.e.,] on-line
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with or connected to[—]a particular service provider[”
(id. ¶ 31).]
Ans. 11 (emphases omitted; paragraphing added); see also Final Act. 3
(citing Hamalainen Fig. 6). Appellant replies:
[T]he Examiner is asserting that knowing that a contact is
available as connected to one or more service providers equates
to knowing that a network is available to initiate a
communication at a client device.
. . . .
The Examiner[ finds that] a communication being eventually
routed through a network equates to a network being available
to initiate the communication. . . . However, the fact that the
communication will eventually be routed through . . . [a]
network does not equate to that . . . network being available to
the user to initiate the communication . . . [e.g., if] the user [is]
not . . . connected to the same network[.]
Reply Br. 2–3 (emphasis omitted).
We are unpersuaded of error. We agree with the Examiner’s claim
interpretation and, in turn, agree Hamalainen’s above disclosures teach the
claimed determining.
The claim interpretation is consistent with the disclosed invention
identifying two types of network access (e.g., communication services) that
are used to initiate a communication (e.g., to complete a phone connection)
between a client device and selected contact: the client device’s current
access to a network (Spec. ¶ 43); the contact’s current access to a network
(id. ¶ 59). See also supra 2 (describing these identifications). That is,
because both types of access are used to initiate a communication, the
Examiner was reasonable in construing the claimed “determining . . . first
. . . [and] second communication network[s] are available to initiate the
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communication session with the selected contact” as an identification of
networks currently accessed by the client device and/or selected contact.
Thus, and as the Examiner finds, the claimed determining reads on
Hamalainen’s client device identifying (“determining”) two or more
communication services (“first . . . and second communication network[s]”)
that are currently accessed by a selected contact (“available to initiate the
communication session with the selected contact”). Ans. 11; Final Act. 3.
For example, the claimed determining reads on Hamalainen’s presence
information blocks (440, 445, 450) showing a contact’s current access (or
lack thereof) to a VoIP service, first IM service, and second IM service.
Hamalainen ¶¶ 31, 36–38; see also id. ¶¶ 41–42 (describing presence
information of a contacts list shown by Figure 6).
Appellant’s above contentions do not constitute a developed
argument, that the claimed “network[s] . . . available to initiate the
communication session with the selected contact” are not taught or
suggested by networks connected to the contact. See In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984) (“After a prima facie case . . . has been
established, the burden of . . . [r]ebuttal is . . . a showing of facts supporting
the opposite conclusion.” (internal quotation marks and citation omitted)).
For example, Appellant contends but does not explain why “the fact that the
communication will eventually be routed through . . . [a] network does not
equate to that . . . network being available . . . to initiate the
communication.” Reply Br. 2–3 (emphasis omitted); see also In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (affirming because appellant “merely
argued that the claims differed from [the prior art], and chose not to proffer a
serious explanation of this difference.”); SmithKline Beecham Corp. v.
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Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Further, even assuming (arguendo) Appellant’s above contentions
constitute a developed argument, they would not change our decision for
each of three reasons. First, the only perceivable reasoning for the
contentions is that the claimed “network[s] . . . available to initiate the
communication session” would be understood as meaning networks
available “to the user” (Reply Br. 2) and thereby further understood as
meaning networks connected to the client device, which is reasoning at best
first raised by the Reply Brief (if at all), could have been raised by the
Appeal Brief, and was thereby waived. See Ex parte Borden, 93 USPQ2d
1473, 1473–74 (BPAI 2010) (informative) (“[T]he Rules do not require the
Board to take up a belated argument . . . , absent a showing of good cause.”).
Second, such reasoning is incommensurate with the claim scope because
claim 1 does not recite that the networks are available “to the user”
(Reply Br. 2), but rather recites that the networks are “available to initiate
the communication session with the selected contact.” See In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore unpersuasive.”).
Third, such reasoning is itself flawed because a network available to initiate
a requested communication session for the requestor/user (i.e., to start the
session per the request) is reasonably understood as being available to the
requestor/user.
2. Claimed “presenting, based on said determining, a prompt
that enables a user to select one of the first communication
network or the second communication for initiating the
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communication session;”
Appellants additionally argue that Hamalainen does not teach or
suggest the claimed presenting of a prompt, which is quoted immediately
above. Appeal Br. 12–13. Appellant contends the Examiner
“acknowledges” Hamalainen does not teach this feature and finds Silver’s
Interactive Voice Response (IVR) teaches the feature. Appeal Br. 12.
Appellant further contends:
The IVR of Silver is directed to enabling a particular phone
feature[—]not for selecting a particular communication network
[to] initiat[e] a communication session with a selected contact.
In addition, the IVR of Silver is not presented []based on a
selection of a contact via the user interface,[] but [rather]
engaged after the user[] enters a specific code . . . . Thus, the
IVR of Silver is distinguishable from the claimed [presenting of
a] prompt[,] in at least two ways.
Id. .
We disagree with Appellant. The Examiner finds Hamalainen teaches
the claimed presenting of a prompt, which is particularly read on
Hamalainen’s above-noted presence information blocks. Ans. 12;
Final Act. 3–4; see also supra 6 (noting the presence information blocks).
Acknowledging Hamalainen does not refer to the presence information
blocks as “prompts,” the Examiner cites Silver’s description of the IVR as
showing an artisan would understand a “prompt” as something that
“prompt[s] the user with information” (quoting Silver ¶ 289) and would
accordingly understand Hamalainen’s presence information blocks as being
prompts. Id.
For good measure, the Examiner also proposes to add Silver’s IVR to
Hamalainen’s presence information blocks. Id. Specifically, the Examiner:
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finds Silver’s IVR is an expressly-described “prompt” for audio-presentation
(via the phone’s speaker) and numpad-entry (by the phone’s numeric
keypad) of phone features (id. (addressing Silver ¶ 289)); and proposes that
Hamalainen’s invention provide the presence information via the blocks as
disclosed and also via an audio presentation and numberpad entry as
suggested by Silver.2 Id.
We agree with the Examiner’s finding that Hamalainen’s presence
information blocks teach the claimed presenting of a prompt. Id. We
address only that finding. We find that the proposed addition of an
audio-presention and numpad-entry, in view of Silver, is unnecessary and
therefore moot.
We agree with the Examiner because Appellant’s Specification and
the ordinary meaning of “prompt” show Hamalainen’s presence information
blocks constitute “prompts.” The Specification states “the wireless handset
302 may prompt the user to select which type of connection is to be used”
(Spec. ¶ 60) and thus, we find that this teaches that a “prompt” merely
indicates a selectable feature’s readiness for activation. Hamalainen’s
presence information blocks indicate that one or more selectable networks
are currently accessed by a contact and thereby indicate each such network’s
readiness to initiate a communication session with the contact. Hamalainen

2 The proposed addition is already included within Hamalainen’s
embodiment whereby “the names may be audibly stated using a speaker[,]
following each name . . . a sound may be generated to indicate a
corresponding presence status[, and] . . . [t]he processor . . . may initiate a
communication session in response . . . [to t]he user . . . select[ing] the
contact name . . . by pressing one or more of the keys 230, 232, 233, 235[.]”
Hamalainen ¶ 41.
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¶¶ 31, 36–38; see also id. ¶¶ 41–42 (describing presence information of a
contacts list shown by Figure 6).
3. Combination of Hamalainen and Silver
Appellant also contends “Silver is not in an analogous field of
endeavor to Hamalainen, nor is Silver in an analogous art to the claimed
invention.” Appeal Br. 13. We are unpersuaded because the Examiner’s
reliance on Silver is unnecessary and thus moot. As explained above, the
Examiner relies on Silver to support both: (i) the finding that an artisan
would understand a prompt as anything that “prompt[s] the user with
information” (quoting Silver ¶ 289) and thus understand Hamalainen’s
presence information blocks as being prompts; and (ii) the proposed
modification of Hamalainen’s invention whereby the presence information is
provided via the blocks as disclosed and also via an audio presentation and
numberpad entry as suggested by Silver. Ans. 12; Final Act. 3–4; see also
supra 8 (explaining the reliance on Silver). The first reliance (i) is
unnecessary because Appellant’s Specification provide the asserted meaning
of “prompt.” See supra 9 (construing “prompt”). The second reliance (ii) is
unnecessary because Hamalainen’s presence information blocks are prompts
and, therefore, the proposed modification is unnecessary. Id. (explaining
why the presence information blocks are prompts). Accordingly, and
despite the rejection’s designation under 35 U.S.C. § 103, we need not reach
the Examiner’s reliance on Silver to affirm. See, e.g., In re McDaniel, 293
F.3d 1379, 1385 (Fed. Cir. 2002) (noting it is “well-settled that anticipation
is the epitome of obviousness’ (internal quotation marks omitted)).
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OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 4–8, 10–15, and
21–28.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–8,
10–15,
21–28
103 Hamalainen, Silver
1, 4–8,
10–15,
21–28

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).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED