Ex Parte BrunsonDownload PDFPatent Trial and Appeal BoardDec 21, 201613894129 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 13/894,129 05/14/2013 Gordon R. Brunson 4366YDT-143 8382 48500 7590 12/23/2016 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER SHAH, ANTIM G ART UNIT PAPER NUMBER 2652 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): cjacquet@ sheridanross.com pair_Avay a @ firsttofile. com edocket @ sheridanross .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GORDON R. BRUNSON Appeal 2016-002413 Application 13/894,1291 Technology Center 2600 Before JOHN A. EVANS, JOHN P. PINKERTON, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—3 and 5—22, which constitute all of the claims pending in this application. Claim 4 has been cancelled. Amended Claims App’x 2.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant identifies Avaya, Inc. as the real party in interest. App. Br. 2. 2 The Amended Claims Appendix was submitted on June 6, 2015 in response to a Notification of Non-Compliance. All citations to the Appeal Brief refer to the Appeal Brief filed on March 23, 2015. Appeal 2016-002413 Application 13/894,129 THE INVENTION The disclosed and claimed invention is directed to a “chained parallel forking contact resolution process.” Abstract. Claim 1, reproduced below with the disputed limitation emphasized, is illustrative of the claimed subject matter: 1. A method, comprising: receiving, by a communication server authoritative for a second user, a request from a first user to establish a communication session between at least a first communication device associated with the first user and a second communication device associated with a second user; determining, by the communication server authoritative for the second user, that an address of record of a third user different from the first and second users is referenced in a set of contact resolution preferences of the second user; and sequencing or bypassing one or more applications in a set of contact resolution preferences for the third user based on the address of record of the third user referenced in the contract resolution preferences of the second user. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Brunson US 2010/0325249 A1 Dec. 23,2010 (hereinafter “Brunson” or “Brunson ’249”)3 US 2011/0066707 A1 Mar. 17, 2011 Brunson (hereinafter “Brunson ’707”) 3 Both designations are used by the Examiner. Compare Final Act. 2 (Brunson), with Ans. 3 (Brunson ’249). 2 Appeal 2016-002413 Application 13/894,129 REJECTIONS Claims 1—3 and 5—22 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Brunson ’249 in view of Brunson ’707. Final Act. 2-9. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellant. We are not persuaded by Appellant’s arguments regarding claims 1—3, 6—13, 15— 20, and 22. However, Appellant persuaded us that the Examiner erred in rejecting claims 5,14, and 21 on the current record. Claims 1—3, 6—13, 15—20, and 22 Appellant argues the Examiner erred in finding Brunson ’707 teaches the “sequencing or bypassing” step recited in claim 1. App. Br. 7—10; Reply Br. 4—6. Although “Appellant agrees that Brunson [’]707 does disclose that a terminal side application sequence for the called party is based on the called party’s preferences,” Appellant argues the Examiner erred in finding Brunson ’707 teaches “a set of contact resolution preferences for the third user [that] is based on the address of record of the third user.” App. Br. 8; see also Reply Br. 5—6 (arguing Brunson ’707 has only two users). The Examiner finds Brunson ’249 teaches the “determining” step recited in claim 1, including the “address of record of a third user different from the first and second users.” Final Act. 2—3 (emphasis added); see also 3 Appeal 2016-002413 Application 13/894,129 Ans. 3^4. The Examiner further finds Brunson ’707 teaches “sequencing or bypassing,” as recited in claim 1. Final Act. 3^4; Adv. Act. 2-4; Ans. 4—6. The Examiner determines “it would have been obvious to a person of ordinary skill in the art to modify Brunson to have [the] feature of sequencing or bypassing one or more applications in a set of contact resolution preferences for the third user based on the address of record of the third user referenced in the contact resolution preferences of the second user as taught by Brunson ’707.'” Final Act. 4. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellant’s argument focuses on Brunson ’707 and not the combined teachings of both prior art references—including the Examiner’s uncontested finding4 that Brunson teaches a third user—we are not persuaded by Appellant’s argument that the Examiner erred. Accordingly, we sustain the Examiner’s rejection of claim 1, along with the rejections of claims 10 and 19, which are argued on the same grounds (App. Br. 10), and dependent claims 2, 6—9, 11—13, 15—19, 20 and 22, which are not argued separately (App. Br. 12). 4 “If an appellant fails to present arguments on a particular issue ... the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 4 Appeal 2016-002413 Application 13/894,129 Claim 3 Appellant argues the Examiner erred in rejecting claim 3. See App. Br. 10—11. The vast majority of Appellant’s argument focuses on the teachings of Brunson ’707 with only a single sentence directed toward Brunson ’294: “[ljikewise, Brunson [’]294 fails to disclose this element of claim 3.” Id. The Examiner finds Brunson ’294 teaches the additional limitation recited in dependent claim 3. Final Act. 4—5. Because Appellant devotes a single sentence to the prior art reference relied on by the Examiner and that sentence is no more than a general denial, we are not persuaded by Appellant’s argument the Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); 37 C.F.R. § 41.37(c)(l)(vii); cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Accordingly, we sustain the Examiner’s rejection of claim 3. Claims 5, 14, and 21 Claim 5 recites that “the one or more chaining parameters define at least one application for the third user should be bypassed and wherein the at least one application that is bypassed for the third user is sequenced in response to determining that the second user’s communication preferences 5 Appeal 2016-002413 Application 13/894,129 require the at least one application.” Amended Claims App’x 2—3 (emphasis added). Appellant argues the Examiner erred in finding Brunson ’249 teaches “that at least one application for the third user be bypassed.” App. Br. 11. Specifically, Appellant contends “[n]one of the cited paragraphs in Brunson [’]249 disclose bypassing an application . . . .” Id. The Examiner concludes that claim 5 does not require bypassing; instead, the claim limitation requires bypassing or sequencing and the Examiner’s finding that the prior art teaches sequencing is sufficient. Ans. 7—8. Specifically, the Examiner concludes: [cjlaims 1 and 14 recite limitations of “sequencing OR bypassing one or more applications ... [.]” Dependent claims 5, 14 and 21 recite “wherein the at least one application that is bypassed for the third user is sequenced . . . [.]” In the scenario, where the claims 1 and 14 are only sequencing one or more applications, the bypassing application will not happen. Ans. 7. Although we agree with the Examiner’s construction with regard to claims 1 and 14, we conclude the Examiner erred in construing claim 5. Specifically, although we construe claim 1 to cover either bypassing or sequencing, claim 5 limits the scope of claim 1 to only bypassing. Because the Examiner did not make any findings on bypassing, we are persuaded by Appellant’s argument that, on the current record, the Examiner erred. Accordingly, we are constrained on this record to reverse the Examiner’s rejection of claim 5, along with the rejections of claims 14 and 21, which recite a limitation commensurate in scope to the disputed limitations discussed above. 6 Appeal 2016-002413 Application 13/894,129 DECISION For the above reasons, we affirm the Examiner’s decision rejecting claims 1—3, 6—13, 15—20, and 22. For the above reasons, we reverse the Examiner’s decision rejecting claims 5, 14, and 21. 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). See 37 C.F.R. §41.50(f). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation