Ex Parte Bailey et alDownload PDFPatent Trial and Appeal BoardJul 21, 201612715921 (P.T.A.B. Jul. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121715,921 03/02/2010 48915 7590 07/25/2016 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Mark Bailey 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. YOR920090591US1 9719 EXAMINER JAKOVAC,RYANJ ART UNIT PAPER NUMBER 2445 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK BAILEY, JAMES E. CHRISTENSEN, JASON B. ELLIS, THOMAS D. ERICKSON, ROBERT G. FARRELL, and WENDY A. KELLOGG Appeal2014-008641 Application 12/715,921 Technology Center 2400 Before JOSEPH P. LENTIVECH, KARA L. SZPONDOWSKI, and SHARON PENICK, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-5, 7-12, and 14--18. Claims 6 and 13 have been canceled. See App. Br. 5-7 (Claims App'x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 1. Appeal2014-008641 Application 12/715,921 STATEMENT OF THE CASE Appellants' Invention Appellants' invention generally relates to creating bookmarks to certain locations within a computing system. Spec. i-f 1. Claim 1, which is illustrative, reads as follows: 1. A service comprising: a server for operating system that supports parametric personalized social (PPS) bookmarks, the server including: a PPS bookmark creator configured to collect information related to a user that the user has provided to the system during an automated dialog, the information being collected by the PPS bookmark creator at a point in an automated dialog after a request to create a PPS bookmark is received from the user and provided to the server before the request to create the PPS bookmark is received; and a PPS bookmark executer configured to, upon receipt of a PPS bookmark identifier, return to the point in the automated dialog and recreate at least a part of the information collected. Reference The Examiner relies on the following prior art in rejecting the claims: Holtzberg US 2004/0137880 Al July 15, 2004 Rejections Claims 1-5, 7-10, and 14--18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Holtzberg. Final Act. 3---6. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Holtzberg in view of Official Notice. Final Act. 7-8. 2 Appeal2014-008641 Application 12/715,921 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the Final Office Action from which this appeal is taken and the reasons set forth in the Examiner's Answer in response to Appellants' Appeal Brief. Final Act. 2-8; Ans. 4. We highlight and address specific findings and arguments for emphasis as follows. § 102 Rejection Issue: Did the Examiner err in finding that Holtzberg discloses a PPS bookmark creator configured to collect information related to a user that the user has provided to the system during an automated dialog, the information being collected by the PPS bookmark creator at a point in an automated dialog after a request to create a PPS bookmark is received from the user and provided to the server before the request to create the PPS bookmark is received, as recited in claim 1? The Examiner finds Holtzberg discloses a voicemail system that collects a user ID (e.g., information related to a user) that the user has provided to the voicemail system during an automated dialog. Final Act. 3 (citing Holtzberg, Fig. 3, i-fi-113-14, 18-20, 23, 25, 27); Ans. 4. The Examiner finds Holtzberg discloses that the user ID is provided to the voicemail system before a request to create a bookmark is received by the voicemail system. Id. The Examiner further finds Holtzberg discloses a bookmarking procedure that, after receiving a request to create a bookmark, collects together the user ID, a message ID, and a bookmark ID for creating 3 Appeal2014-008641 Application 12/715,921 the requested bookmark. Id. Appellants contend the Examiner erred in finding Holtzberg disclosed the disputed limitation because: In rejecting claim 1 the Examiner pointed out that Holtzberg taught that after a bookmark request is received, a timing offset value is also received. To be clear, this "information" is received after the PPS request was made. Claims 1 and [ 1 OJ clearly distinguishes over this teaching. In particular, claims 1 and [10] require that the information collected by the PPS bookmark creator is provided to the server before the PPS bookmark request is received. App. Br. 3. Appellants further contend " [ w] hile some of the information is collected before [the request to create a bookmark is received], other information is collected after" and, therefore, Holtzberg does not disclose the disputed limitation. Reply Br. 2. Contrary to Appellants' contentions, claim 1 does not prohibit the information collected from including information provided after the request to create the bookmark is received. Instead, claim 1 merely requires the collected information to include information that is provided to the server before the request to create the bookmark is received. Holtzberg discloses "[a]fter connecting to the voicemail system, the user enters information conventionally associated with accessing a voicemail box such as a user ID and/or password." Holtzberg i-f 11. Holtzberg further discloses "[ d]uring playback of the message, the user can enter a command to set a voicemail bookmark." Id. Holtzberg, therefore, discloses that the user ID is provided to, and received by, the voicemail system prior to the voicemail system receiving the request to create the bookmark. Holtzberg discloses associating the user ID with one or more bookmark IDs for identifying 4 Appeal2014-008641 Application 12/715,921 voicemail bookmarks associated with the user. Holtzberg if 18. As such, Holtzberg discloses collecting the user ID to create the bookmark after the request is received. Accordingly, we are not persuaded the Examiner erred in finding Holtzberg discloses the disputed limitation. For the reasons discussed above, we are not persuaded the Examiner erred in rejecting claim 1; independent claim 10 which recites similar limitations and is argued together with claim 1; and claims 2-5, 7-10, and 14--18, which depend from claims 1 and 10 and are not separately argued. See App. Br. 3. Because Appellants have either not presented separate patentability arguments or have relied on the arguments as those previously discussed for patentability of claim 1 above (see App. Br. 3), claims 2-5, 7- 10, and 14--18 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 11 and 12 Appellants do not separately argue the rejection of claims 11 and 12 under 35 U.S.C. § 103(a). See App. Br. 3. Accordingly, we sustain the Examiner's rejection of claims 11 and 12 for the reasons discussed supra with respect to claim 1. DECISION We affirm the Examiner's rejections of claims 1-5, 7-12, and 14--18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation