Ex Parte DHARA et alDownload PDFPatent Trial and Appeal BoardJun 8, 201812896666 (P.T.A.B. Jun. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/896,666 10/01/2010 48500 7590 06/12/2018 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 FIRST NAMED INVENTOR Krishna Kishore DHARA 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. 4366-889 1261 EXAMINER SHIAU, SHEN C ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 06/12/2018 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_Avaya@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 KRISHNA KISH ORE DHARA, VENKA TESH KRISHNASWAMY, EUNSOO SHIM, and XIAOTAO WU 1 Appeal2018-001447 Application 12/896,666 Technology Center 2100 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 23--42, which are all the claims pending in this application. Claims 1-22 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Avaya, Inc. Appeal2018-001447 Application 12/896,666 STATEMENT OF THE CASE Introduction Appellants' invention "relates to communication sessions and more specifically to providing resources just-in-time to a participant in a communication session based on context in the communication session." (Spec. if 2). Representative Claim 23. A method comprising: monitoring, with a processor, a first communication session between a caller and a recipient, the first communication session comprising at least one of audio or video; identifying, with the processor, a first resource associated with the first communication session; [L 1] storing, in a non-transitory computer readable medium, a context comprising information about the first communication session and the first resource, the stored context being linked to an identity of the caller and an identity of the recipient; detecting, with the processor, a communication event involving the caller and the recipient; [L2] retrieving, with the processor and based on the identities of the caller and the recipient, the stored context from the non-transitory computer readable storage medium; and presenting an option to access the first resource to at least one of the caller and the recipient via a communication device. (Emphasis added regarding contested limitations LI and L2). 2 Appeal2018-001447 Application 12/896,666 Rejections A. Claims 23-26 and 28--42 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Goodman et al. (US 2007/0271340 Al; publ. Nov. 22, 2007) (hereinafter "Goodman") and Frazier et al. (US 2010/0246784 Al; publ. Sept. 30, 2010) (hereinafter "Frazier"). B. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Goodman, Frazier and Ozzie et al. (US 2008/0005108 Al; publ. Jan. 3, 2008) (hereinafter "Ozzie"). Issue on Appeal Did the Examiner err in rejecting claims 23--42 as being obvious over the cited combinations of references, under pre-AIA 35 U.S.C. § 103(a)? Grouping of Claims Based on Appellants' arguments, we decide the appeal of rejection A of claims 23-26 and 28--42 on the basis of representative claim 23. We address rejection B of dependent claim 27, infra. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). ANALYSIS We have considered all of Appellants' arguments and any evidence presented. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal2018-001447 Application I2/896,666 Rejection A of Claims 23-26 and 28-42 under§ 103(a) Issue: Under pre-AIA 35 U.S.C. § I03(a), did the Examiner err by finding that Goodman and Frazier would have collectively taught or suggested contested limitations LI and L2: [LI] storing, in a non-transitory computer readable medium, a context comprising information about the first communication session and the first resource, the stored context being linked to an identity of the caller and an identity of the recipient; [L2] retrieving, with the processor and based on the identities of the caller and the recipient, the stored context from the non-transitory computer readable storage medium[,] within the meaning of representative independent claim 23?2 (Emphasis added). Contested limitation LI of Independent Claim 23 Appellants contest limitation LI of claim 23, contending inter alia: Critically, however, rather than retrieve a stored context that corresponds to the general context of the conversation, and present a first resource associated with the stored context to a participant in the current conversation, Goodman discloses that "[ t ]he context is then used to match context with metadata of resources from one or more resource sources." App. Br. 9. 2 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, I27 F.3d I048, I054 (Fed. Cir. I997) See e.g., Spec. i-f 47: "The various embodiments described above are provided by way of illustration only and should not be construed to limit the scope of the disclosure." 4 Appeal2018-001447 Application 12/896,666 At the outset, we find at least the claim 23 language "context comprising information about ... the first resource" is taught or suggested by Goodman's description: "[t]he context is then used to match context with metadata of resources from one or more resource sources." Emphasis added. Goodman i-f 13; Final Act. 4. We find a match of the context data to the metadata of the resources in Goodman (i-f 13) falls within the scope of "context comprising information about ... the first resource" (claim 23) under the broadest reasonable interpretation, because the metadata in Goodman (i-f 13) is data about data, i.e., data about the resources. We consider the contested claim language in light of Appellants' Specification. We find Appellants' Specification (i-f 3 6) expressly describes that context can include metadata: "The context can include information such as communication content, a communication history, communication session metadata, [and] contact information. Emphasis added. Appellants' Specification (i-f 36) also describes several non-limiting examples of resources: "The resource can be a document, an agenda, a web page, and/or a communication history." Emphasis added. See n.2, supra. Goodman (i-f 13) similarly describes several resource examples: "[t]he one or more resource sources may include, for example, the client device upon which the graphical user interface is provided, known sources of image files, audio files, audio-video files, and the like, on a communications network, e.g., Internet Websites, and the like." Emphasis added. Appellants aver that Goodman teaches context analysis and resource collection in an ongoing instant messaging session. App. Br. 10. Appellants note Goodman teaches searching resource metadata to identify relevant 5 Appeal2018-001447 Application 12/896,666 resources, while the claim identifies the relevant resource from the stored context. Reply Br. 1-2. Appellants additionally urge that Goodman does not teach linking the stored context to an identity of the caller and an identity of the recipient. Reply Br. 2. Claim Construction - "storing ... a context ... the stored context" As an initial matter of claim construction, the Examiner concludes the broadest reasonable interpretation of the claim 23 term "stored context" encompasses Goodman's teaching of "stor[ing] the data corresponding to the text messages, and any attachments, that have been exchanged between the participants in the instant messaging session" (Goodman i-f 65), "hav[ing] associated identifiers to identify which participant submitted the text message in the history." Ans. 2. See also Goodman, i-fi-1 110-111, e.g., "The participant identification section 410 provides an identifier of the remotely located participant with which the current user is communicating via the instant messaging session." i-f 110. Emphasis added. 3 We find Appellants' arguments unavailing because Appellants fail to address the Examiner's specific findings regarding Goodman's paragraph 65. See Final Act. 4. Specifically, Appellants do not substantively address Goodman's teaching of an instant messaging history section (i.e., stored context) that stores data corresponding to the text messages and any attachments (i.e., resources) that are exchanged between participants in an 3 Further regarding the stored context of claim 23, Goodman (i-f 13) teaches the "the instant messaging history section is analyzed to determine the context of the conversation between the users." Emphasis added. 6 Appeal2018-001447 Application 12/896,666 instant messaging session, as described in paragraph 65. See Ans. 2, citing Goodman, i-f 65. We also find Goodman's instant messaging history section (stored context), which also stores previously exchanged attachments, teaches or at least suggests storing "information about the first communication session and the first resource," within the meaning of claim 23, based upon the combined teachings and suggestions of Goodman and Frazier. 4 We further find that Goodman's participants (i.e., plural "participants" i-f 65) teach or at least suggest a link between Goodman's instant messaging history section (i.e., stored context) and the "identity of the caller and an identity of the recipient," as recited in claim 23. We find Goodman's paragraphs 110 and 111 also teach or suggest plural participant identifiers, e.g., "[t]he participant identification section 410 may further be used to select a participant to which an instant message is to be sent in the case of an instant messaging session involving more than two participants." (Emphasis added). Given this evidence (id.), we find linking the context in Goodman to both the identity of the caller and the 4 The Examiner finds the recited "first communication session" (claim 23) is taught or suggested by Frazier (i-f 21 ): e.g., "[ c ]onversation monitor program 300 may include a software program executed by processor 220 that monitors conversations or communications, such as phone calls, text- based communication sessions, voicemail messages, video teleconferences, etc." Final Act. 5, emphasis added. We emphasize the Examiner's rejection is based upon the combined teachings and suggestions of the cited references. See n.6, infra. 7 Appeal2018-001447 Application 12/896,666 identity of the recipient would merely be a predictable result. 5 See Claim 23. We additionally find Appellants' arguments unavailing because the Appellants are arguing the references separately. 6 The Examiner finds the monitored "first communication session" is taught or suggested by Frazier's communications involving the user of a user device. See Final Act. 4--5, citing Frazier i-fi-121-22. The Examiner's rejection is based upon the combined teachings and suggestions of the cited references. For at least the aforementioned reasons, we find the Examiner's underlying factual findings regarding contested limitation L 1 are supported by a preponderance of the evidence. Contested limitation L2 of Independent Claim 23 Appellants further contend that limitation L2 ("retrieving, with the processor and based on the identities of the caller and the recipient, the stored context from the non-transitory computer readable storage medium") is not taught or suggested by the cited Goodman and Frazier references. App. Br. 11; claim 23, emphasis added. In particular, Appellants assert: "Nowhere does Goodman teach retrieving, based on the identities of the caller and the recipient, a stored context with information about a first resource." Id. (emphasis added). 5 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). 6 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). 8 Appeal2018-001447 Application 12/896,666 However, we find Goodman teaches inserting a reference to a resource into the current text message, in which the inserted reference was determined based upon a content analysis from a previous message. See Goodman i-fi-f 128-130, Final Act. 4. In order to insert the resource reference into the text message, we find Goodman must first retrieve the resource reference. Therefore, we find "the natural result flowing from the operation as taught would result in the performance of the questioned function." PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014) (internal citation omitted). Thus, based upon at least the cited teachings and suggestions of Goodman (i-fi-f 128-130), in combination with the teachings of Frazier (i-fi-19, 21-22), we find Appellants' arguments unavailing regarding contested limitation L2 of representative independent claim 23. See App. Br. 11-14.7 Accordingly, on this record, and based upon a preponderance of the evidence, we sustain the Examiner's§ 103(a) rejection A of representative independent claim 23, and of the additional grouped claims 24--26 and 28--42, also rejected under rejection A, which are not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv). 7 Our reviewing court guides: "'the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123. 9 Appeal2018-001447 Application 12/896,666 Rejection B of Dependent Claim 27 We note rejection B includes remaining dependent claim 27, which is not argued separately. See App. Br. 12. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Conclusion The Examiner did not err in rejecting claims 23--42, as being obvious over the cited combinations of references under 35 U.S.C. § 103(a). Reply Brief To the extent Appellants may advance new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief, or are not responsive to arguments raised in the Examiner's Answer, will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). DECISION We affirm the Examiner's decision rejecting claims 23--42 under pre-AIA 35 U.S.C. § 103(a). 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(±). AFFIRMED 10 Copy with citationCopy as parenthetical citation