Ex Parte Beckstrom et al

Patent Trial and Appeal Board

Jul 9, 2013

10675371 (P.T.A.B. Jul. 9, 2013)

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.
10/675,371 09/30/2003 Robert Beckstrom 6065/88622 5983
24628 7590 07/10/2013
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
DAYE, CHELCIE L
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
07/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ROBERT BECKSTROM and ANTHONY DEZONNO
_____________

Appeal 2011-002472
Application 10/675,371
Technology Center 2100
______________

Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002472
Application 10/675,371

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 20.
We reverse.
INVENTION
The invention is directed to method of monitoring a communication
session between two parties which, based upon the monitoring, engages a
third party. See paragraphs 12 and 30 of Appellants’ Specification. Claim 1
is representative of the invention and reproduced below:
1. A method for improving transactions in a communication
system, comprising:
automatically monitoring an ongoing text data session between
first and second parties in an established transaction in the
communication system; and
automatically conferencing a third party into the transaction as
an additional participant in the transaction in response to the
automatic monitoring of the data session between the first and
second parties.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 4 through 9, 11, 12, and 14
through 20 under 35 U.S.C. § 103(a) as obvious over Fedorov (US
6,047,060; Apr. 4, 2000), Eilbacher (US 6,724,887 B1; Apr. 20, 2004, filed
Jan. 24, 2000) and Shaffer (US 6,363,145 B1; Mar. 26, 2002). Answer 4-
121.

1 Throughout this opinion we refer to the Appeal Brief dated June 23, 2010,
Reply Brief dated November 5, 2010, and the Examiner’s Answer mailed on
September 1, 2010.
Appeal 2011-002472
Application 10/675,371

3

The Examiner has rejected claim 3 under 35 U.S.C. § 103(a) as
obvious over Fedorov, Eilbacher, Shaffer and Beck (US 6,138,139; Oct. 24,
2000). Answer 13.
The Examiner has rejected claim 10 under 35 U.S.C. § 103(a) as
obvious over Fedorov, Eilbacher, Shaffer and Miloslavsky (US 6,021,428;
Feb. 1, 2000). Answer 14-15.
The Examiner has rejected claim 13 under 35 U.S.C. § 103(a) as
obvious over Fedorov, Eilbacher, Shaffer and Elazar (US 6,542,602 B1;
Apr. 1, 2003). Answer 15-16.

ISSUE
Appellants argue on pages 8 through 12 of the Appeal Brief that the
Examiner’s rejection of independent claims 1, 11, and 20 is in error because
the references do not teach automatically conferencing (joining or engaging)
a third party in response to monitoring as claimed. The issue raised by these
arguments which is dispositive of the appeal is: did the Examiner err in
finding that the combination of Fedorov, Eilbacher and Shaffer teaches or
suggests automatically conferencing (joining or engaging) a third party to a
text data session in response to an automatic monitoring of the session as
recited in independent claims 1, 11, and 20?
We note Appellants present additional arguments with respect to other
dependent claims. We do not however reach these arguments as the issue
presented with respect to the independent claims is dispositive of the
Appeal.

Appeal 2011-002472
Application 10/675,371

4

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We concur with Appellants’ conclusion the Examiner erred in
finding that the combination of Fedorov, Eilbacher and Shaffer teaches or
suggests automatically conferencing (joining or engaging) a third part to a
text data session in response to automatic monitoring of the session, as
recited in independent claims 1, 11, and 20. The Examiner interprets the
term automatic as “acting or done as if by machine; mechanical” Answer 17.
Appellants’ arguments, further, refine the meaning of automatic to
differentiate an automatic operation from an operation which happens based
upon a user decision. Brief 10.
The Examiner finds that, based upon Fedorov’s teaching of an
automatic call distribution system, “it would not be unheard of for other
features within the system, such as monitoring and conferencing, to be
performed automatically.” Answer 17. This finding appears to be based
upon speculation and the Examiner has not provided any objective evidence
to support the finding that automatic conferencing in response to monitoring
is known. Further, the Examiner finds that Schaffer teaches automatic
monitoring and conferencing of a third party. Answer 20-21. We concur,
but the Examiner has not shown, nor do we find, that Schaffer teaches
automatic conferencing in response to monitoring. Accordingly, we will not
sustain the Examiner’s rejection of independent claims 1, 11, and 20 as the
Examiner has not demonstrated that all of the claimed elements were known
or obvious at the time of the invention. Neither has the Examiner found the
other references of record teach this limitation. Accordingly we will not
Appeal 2011-002472
Application 10/675,371

5

sustain the Examiner’s rejections based upon Fedorov, Eilbacher, and
Shaffer in combination with the other references of record.

DECISION
The decision of the Examiner to reject claims 1 through 20 is
reversed.

REVERSED

ke