Ex Parte Castell et al

Patent Trials and Appeals Board

Jun 6, 2019

13927524 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/927,524 06/26/2013
82313 7590 06/10/2019
Conley Rose - BlackBerry Files
Attn: J. Robert Brown
5601 Granite Parkway, Suite 500
Plano, TX 75024
FIRST NAMED INVENTOR
William David Castell
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.
10091-US-CNT2
4214-62904
CONFIRMATION NO.
9138
EXAMINER
PATEL, PARTHKUMAR
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
ConleyRoseReporting@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM DAVID CASTELL, MIHAL
LAZARIDIS, and GARY PHILLIP MOUSSEAU
Appeal 2018-001336
Application 13/927,524
Technology Center 2400
Before ERIC B. CHEN, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12, 14--17, 19, and 20. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 11 and 16 are rejected under 35 U.S.C. § l 12(a) as failing to
comply with the written description requirement. Final Act. 2-3.
Claims 11 and 16 are rejected under 35 U.S.C. § l 12(b) as being
indefinite. Final Act. 3.
Appeal 2018-001336
Application 13/927,524
Claims 1-10 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Gilbert (US 7,580,374 Bl; Aug. 25, 2009), Harrison (US
6,418,216 Bl; Jul. 9, 2002), and Katseff (US 6,768,722 Bl; Jul. 27, 2004).
Final Act. 7-18.
Claims 11, 12, 16, 17, 19, and 20 are rejected under pre-AIA 35
U.S.C. § I03(a) as obvious over Espeut (US 5,657,376; Aug. 12, 1997) and
Katseff. Final Act. 18-23.
Claim 14 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Espeut, Katseff, and Farris (US 6,768,722 Bl; July 27, 2004). Final
Act. 23.
Claim 15 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
overEspeut, Katseff, andKozo (EP 1061743 Al; Dec. 20, 2000). Final Act.
24.
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "remote control of a host system with
a dual-mode mobile communications device (mobile device)." Spec. ,r 2.
Claim 1 is illustrative and reproduced below:
1. A method of multi-party communication using a wireless
device, the method comprising:
transmitting a conference request command over a data network to a
unified messaging system, wherein the conference request command is
transmitted to a voicemail interface component that monitors voice calls to
determine whether voice calls are successfully established with parties
indicated by the conference request command;
2
Appeal 2018-001336
Application 13/927,524
receiving a voice call at the wireless device from the unified
messaging system, the voice call initiated by the unified messaging system
to an organizer of the multi-party communication in response to the
transmitted conference request command from the wireless device;
wherein the wireless device is terminated from the voice call initiated
by the unified messaging system when the voicemail interface component
determines that no voice call has been successfully established within a
predetermined time period with any party other than the organizer of the
multi-party communication indicated by the conference request command;
and
receiving a voice call connection with a second wireless device and a
third wireless device from the unified messaging system when the voicemail
interface component determines that a voice call has been established
between the unified messaging system and the wireless device.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE WRITTEN DESCRIPTION REJECTION OF CLAIMS 11 AND 16
Contentions
The Examiner finds claims 11 and 16 fail to comply with the written
description requirement. Final Act. 2-3. In particular, the Examiner finds
3
Appeal 2018-001336
Application 13/927,524
"[t]he amended recitations regarding' ... in which a called party has not
participated is on hold' is not disclosed[.]" Final Act. 2-3; see also Ans. 2.
Appellants present the following principal argument:
"Appellant's specification clearly and unambiguously describes that a
PBX system receives and places on hold a phone call made to a land-line
phone number of a user of a mobile device (a called party)." App. Br. 13
(citing Spec. ,r,r 50-51).
Our Review
"[T]he test for sufficiency [ of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
Appellants Specification discloses the following:
Turning now to Figure 7 there is yet another embodiment
of how a dual-mode mobile device 100 can use their data channel
to remote control voice events to their handheld device. In this
example the mobile device user 100 receives a call into their
land-line phone number. This could be a number provided by an
ASP/IPS, network carrier or within their corporate office. Unlike
Figures 2 and 3, the user has configured the PBX system 120 to
hold the call and send a notification that the call has arrived
(step (l)[)]. Step (1) summaries the incoming call with
information that includes, but is not limited to: the caller Id, time
of the call and any matching name information from preferably
a locally stored address book. The summary message is given to
the PBX and Voice-mail interface quickly and get[s] delivered to
the mobile device 100 quickly. Step (2) is the delivery of the
message indicating a call has arrived and is on hold. During this
time the calling party might be played a message like 'Please
4
Appeal 2018-001336
Application 13/927,524
Hold while we contact the 'Joe Blow' for you'. If for some
reason the command is delayed, or the mobile device 100 is out
of coverage, [the] incoming call is timed out and placed into
voice-mail 225. However in most cases the command does reach
the user of the mobile device 100 and they act upon the message.
The incoming notification event might cause a dialog box
to appear 280, similar to that shown in Figure 7. This dialog box
simply shows the caller Id, matching name and any other
summary information that can be extracted from the caller. The
user can then direct the PBX system 120 what to do with the call.
In this case all commands will cause a response to go back to the
unified messaging server 115. In step (3) the command reaches
the unified messaging server 115 and it detects the command and
gives it to the PBX and Voice-mail interface 21 Oc. The command
response will have a reference identifier for the held call so that
the PBX and voice-mail interface 21 Oc can direct the PBX system
120 what to do with the caller. In step ( 4) the PBX system acts
upon the command and either sends the call to voice-mail 225,
drops the caller, i.e. hangs up immediately, or redirects the call
to the mobile device 100. The user can even provide an override
to the default phone number in the command response if
necessary to tell the PBX system 120 where to send the caller.
Spec. ,r,r 50-51 ( emphasis added).
We find Appellants have adequate written description support. Claim
11 recites "receiving at a wireless device from a unified messaging system
via a data network a voice call notification signal indicating that a voice call
in which a called party has not participated is on hold." Claim 16 recites
similar subject matter. Appellants' Specification clearly describes this
claimed subject matter in paragraphs 50-51 as emphasized above. As
described, the PBX system holds the call and sends a notification to the user,
and the user responds to the notification. See Spec. ,r,r 50-51. That is, the
user receives the notification and the user has not yet participated in the call.
5
Appeal 2018-001336
Application 13/927,524
Accordingly, we do not sustain the Examiner's written description
rejection of claims 11 and 16.
THE INDEFINITENESS REJECTION OF CLAIMS 11 AND 16
Contentions
The Examiner concludes claims 11 and 16 are indefinite. Final Act.
3---6. In particular, the Examiner concludes there is ambiguity as to how the
called party has not participated in the call. Final Act. 3; see also Ans. 2-3.
Appellants present the following principal argument:
The Appellant does not dispute that a calling party and a called
party both exist, however, the Appellant submits that the
Examiner is mistaken in his assertion that the existence of a
calling party and a called party necessarily implicates that the
called party has participated in the phone call.
App. Br. 14.
Our Review
Appellants' Specification discloses the PBX system holds the call and
sends a notification to the user ( called party), and the user responds to the
notification. See Spec. ,r,r 50-51. That is, the user ( called party) receives the
notification and the user ( called party) has not yet participated in the call.
Turning to the claim language in claims 11 and 16, we conclude that
an ordinarily skilled artisan would have understood what is claimed when
the claims are read in light of the Specification, because according to the
Specification the user (called party) receives the notification and the user
( called party) has not yet participated in the call. See Spec. ,r,r 50-51.
We, therefore, do not sustain the Examiner's indefiniteness rejection
of claims 11 and 16.
6
Appeal 2018-001336
Application 13/927,524
THE OBVIOUSNESS REJECTION OF CLAIMS 1-10 OVER GILBERT, HARRISON,
ANDKATSEFF
Contentions
The Examiner finds Gilbert, Harrison, and Katseff teach all
limitations of claim 1. Final Act. 7-10.
In particular, the Examiner finds Harrison's barge-in service teaches
"monitor[ s] voice calls to determine whether voice calls are successfully
established with parties indicated by the conference request command" as
recited in claim 1, and "a voice call has been established between the unified
messaging system and the wireless device" as recited in claim 1. Final Act. 9
(citing Harrison col. 3, 11. 60-67, col. 4, 11. 1--4, col. 6, 11. 63-67, col. 7, 11. 1-
14); see also Ans. 3. The Examiner reasons
[i]t would have been obvious to one with ordinary skill, in the art
at the time of the invention was made to consider the teachings
of Harrison with the teachings of Gilbert to make [the] system
more efficient. Having a mechanism to determine whether the
conference request command is successful; [provides a] more
effective way resources can be managed and utilized.
Final Act. 9-10.
In particular, the Examiner finds Katseff teaches the "wireless device
is terminated from the voice call [ initiated by the unified messaging system]
when the voicemail interface component determines that no voice call has
been successfully established within a predetermined time period with any
party other than the organizer of the multi-party communication" as recited
in claim 1. Final Act. 10 (citing Katseff Fig. 5, col. 24, 11. 55-65). The
Examiner explains "if party B does not wish to return to an active
communication with party A then after the set period of time, the call with
7
Appeal 2018-001336
Application 13/927,524
party A will be disconnected i.e. party A can be organizer and party B can be
the device." Final Act. 10; see also Ans. 4--5. The Examiner reasons as
follows:
It would have been obvious to one with ordinary skill, in
the art at the time of the invention was made to consider the
teachings of Katseff with the teachings of Gilbert in view of
Harrison to make [the] system more effective. Having a
mechanism where termination of the call is done if there is no
voice call has been successfully established within a
predetermined time period; [a] greater way [ ofJ resource
management for communications procedures can be established
in the communication system.
Final Act. 10; see also Ans. 5-7.
Appellants present the following principal arguments:
1. "Harrison's barge-in service merely provides call processing
functions for an incoming call, but does not monitor voice calls to determine
whether voice calls are successfully established with parties indicated by the
conference request command." App. Br. 16.
11.
Katseff does not teach or suggest, and is indeed entirely silent
with respect to, terminating a voice call after determining that no
voice call has been successfully established within a
predetermined time period with any party other than the
organizer of the multi-party communication because Katseff
specifically requires that a call be successfully establish[ ed]
between party A and party B that is then subsequently placed on
hold.
App. Br. 18.
111. "[T]he Examiner used impermissible hindsight to reach his
conclusion of obviousness because achieving the novel functionality claimed
8
Appeal 2018-001336
Application 13/927,524
by the Appellant is the Office's sole non-generic motivation to combine the
teachings of Katseff with those of Gilbert and Harrison." App. Br. 19.
IV.
[I]f the communication of Katseff is modified to read on the
Appellant's claims, then it is no longer possible for Katseff to
place a call on hold, place a call on monitor hold, or disconnect
a call when one party takes a call off of hold and the other party
does not wish to return to the call, because no voice call will have
been successfully established that could ever have been placed
on hold in the first place.
App. Br. 21.
Our Review
Gilbert, the primary reference, discloses
Systems and methods relate to setting-up a future
telephone conference between a host party and at least one
participant party. The host party dials into a system and enters
the meeting date/time and meeting parties' telephone numbers.
At the meeting time, the system retrieves the information from
its database and dials the meeting participants.
Gilbert, Abstract.
Figure 6 of Gilbert is reproduced below:
9
Appeal 2018-001336
Application 13/927,524
Fig~ 6
Figure 6 depicts "a flowchart for setting-up a conference call." Gilbert, col.
3, 1. 6.
10
Appeal 2018-001336
Application 13/927,524
According to Gilbert, "[a]t the meeting time, the system retrieves the
information from its database and dials the meeting participants." Gilbert,
Abstract; see also Gilbert Fig. 6, blocks 202, 206. The Examiner's findings
based on Gilbert are not contested by Appellants. See App. Br. 16-21.
However, according to the Examiner, it is not disclosed in Gilbert that
all voice calls to the meeting participants are monitored to determine
whether they are successfully established. See Gilbert, Fig. 6, block 206.
Harrison discloses determining
if the caller intends to use barge-in service and, if so, if the caller
has valid authorization for such use relative to B. If the caller
intends to use barge-in and has valid authorization to do so, a
conference connection is formed through switches 21 and 5, via
link 23.
Harrison, col. 7, 11. 4--9.
Contrary to Appellants' argument (i), we find Harrison discloses
"monitors voice calls to determine whether voice calls are successfully
established with parties indicated by the conference request command" as
recited in claim 1 because Harrison's barge-in service either establishes a
voice call ( conference connection), or does not establish the voice call. That
is, the barge-in server is monitoring the voice call. For the same reason, we
find Harrison discloses "a voice call has been established between the
unified messaging system and the wireless device" as recited in claim 1. The
Examiner provides a reason to combine Harrison with Gilbert that is rational
on its face and supported by evidence drawn from the record. Final Act. 9-
1 O; see also Harrison col. 7, 11. 4--9 ( establishing a conference connection if
the caller has valid authorization). Appellants do not provide any
particularized arguments as to why the Examiner's reasoning is incorrect.
Thus, Appellants' argument (i) does not show any Examiner error.
11
Appeal 2018-001336
Application 13/927,524
However, according to the Examiner, it is not disclosed in Gilbert that
the host is terminated from the voice call when no voice call has been
successfully established within a predetermined time period with any other
party. See Gilbert, Fig. 6, block 206 ("call the next participant"), block 208
("bridge parties").
Katseff discloses
However, if party A has taken the call off hold and B does
not wish to return to an active communication session with party
A, then party B need not do anything and the system, e.g., CM
218, may be set up with an automatic timeout which will
disconnect the call which party B placed on monitor hold if party
B does not respond within a set period of time, for example 60
seconds, after party A takes the call off hold. Alternatively, party
B could enter a terminate call code into the system. In either case,
at step 510, the system would disconnect party A from party B
and continue the connection with party C.
Katseff, col. 24, 11. 55---65.
Contrary to Appellants' argument (ii), we find Katseff teaches the
"wireless device is terminated from the voice call initiated by the unified
messaging system when the voicemail interface component determines that
no voice call has been successfully established within a predetermined time
period with any party other than the organizer of the multi-party
communication" as recited in claim 1 because Katseff disconnects party A if
party B does not return to an active communication with party A after a set
period of time. That is, Katseff's "active communication" reasonably
describes the voice call that has not been successfully established. Thus,
Appellants' argument (ii) does not show any Examiner error.
Contrary to Appellants' argument (iii), the Examiner provides a
reason to combine Katseff with Gilbert and Harrison that is rational on its
12
Appeal 2018-001336
Application 13/927,524
face and supported by evidence drawn from the record. Final Act. 10
("Having a mechanism where termination of the call is done if there is no
voice call has been successfully established within a predetermined time
period; [a] greater way [ of] resource management for communications
procedures can be established in the communication system."); see also
Katseff col. 24, 11. 55---65. Thus, Appellants' argument (iii) does not show
any Examiner error.
Contrary to Appellants' argument (iv), as explained above, Katseff s
"active communication" reasonably describes the voice call that has not
been successfully established. Accordingly, no changes to Katseff are
required to read on the claim language. Thus, Appellants' argument (iv) does
not show any Examiner error.
We, therefore, sustain the Examiner's obviousness rejection of claim
1.
We also sustain the Examiner's obviousness rejection of claims 2-10,
which are not separately argued with particularity.
THE OBVIOUSNESS REJECTION OF CLAIMS 11, 12, 16, 17, 19, AND 20 OVER
ESPEUT AND KA TSEFF
Contentions
The Examiner finds Espeut and Katseff teach all limitations of claim
1. Final Act. 18-20.
In particular, the Examiner finds Katseff teaches "an instruction to
disconnect the voice call when the called party does not choose to receive
the voice call" as recited in claim 11. Final Act. 19-20 ( citing Katseff col.
24, 11. 55---65); see also Ans. 7. The Examiner reasons as follows:
13
Appeal 2018-001336
Application 13/927,524
It would have been obvious to one with ordinary skill, in
the art at the time of the invention was made to consider the
teachings of Katseff with the teachings of Espeut to make [the]
system more effective. Having a mechanism where an instruction
ca[ n] be sent to disconnect the voice call when a called party does
not choose to receive the voice call; [a] greater way [ of] resource
management for communications procedures can be established
in the communication system.
Final Act. 20.
Appellants present the following principal argument:
Katseff' s disclosure of enabling entry of a termination code when
a party B does not wish to return to a communication session
with a party A does not teach or suggest the instruction command
that comprises an instruction to disconnect the voice call when
the called party does not choose to receive the voice call, as
claimed.
App. Br. 22-23.
Our Review
Katseff discloses
However, if party A has taken the call off hold and B does
not wish to return to an active communication session with party
A, then party B need not do anything and the system, e.g., CM
218, may be set up with an automatic timeout which will
disconnect the call which party B placed on monitor hold if party
B does not respond within a set period of time, for example 60
seconds, after party A takes the call off hold. Alternatively, party
B could enter a terminate call code into the system. In either case,
at step 510, the system would disconnect party A from party B
and continue the connection with party C.
Katseff, col. 24, 11. 55---65.
14
Appeal 2018-001336
Application 13/927,524
Contrary to Appellants' argument, we find Katseff teaches "an
instruction to disconnect the voice call when the called party does not
choose to receive the voice call" as recited in claim 11 because Katseff
disconnects party A if party B enters a terminate call code. That is, Katseff s
"active communication" reasonably describes the voice call that is not
received. Thus, Appellants' argument does not show any Examiner error.
We, therefore, sustain the Examiner's obviousness rejection of claim
11.
We also sustain the Examiner's obviousness rejection of claims 12,
16, 17, 19, and 20, which are not separately argued with particularity.
THE REMAINING REJECTIONS
Appellants do not present arguments with respect to the rejection of
claim 14 as obvious over Espeut, Katseff, and Farris, and the rejection of
claim 15 as obvious over Espeut, Katseff, and Kozo. See App. Br. 11.
We, therefore, sustain the Examiner's obviousness rejection of claim
14, and the Examiner's obviousness rejection of claim 15.
ORDER
The Examiner's decision rejecting claims 1-12, 14--17, 19, and 20 is
affirmed.
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).
AFFIRMED
15