Ex Parte Erb et al

Patent Trial and Appeal Board

Dec 22, 2017

13373610 (P.T.A.B. Dec. 22, 2017)

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.
13/373,610 11/21/2011 Paul Andrew Erb 790 8271
40604 7590 12/27/2017
MITEL NETWORKS CORP. c/o MICHELLE WHITTINGTON
PERRY + CURRIER INC. (FOR MITEL)
1146 N ALMA SCHOOL ROAD
BLDB
MESA, AZ 85201
EXAMINER
KHAN, AFTAB N
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
iplegal@mitel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ANDREW ERB and
PETER MATTHEW HILLIER
Appeal 2017-003038
Application 13/373,6101
Technology Center 2400
Before JASON V. MORGAN, BRUCE R. WINSOR, and
JON M. JURGOVAN, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 23, 24, 29, and 30. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-22 are cancelled. App. Br. 5. Claims 25-28 are finally rejected,
but the rejection is not appealed. See App. Br. 9.
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2015).
1 The real party in interest identified by Appellants is Mitel Networks
Corporation. App. Br. 3.
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Application 13/373,610
STATEMENT OF THE CASE
The Invention
Appellants’ disclosed invention “generally relates to communications,
and more particularly, to converting messages between different formats
without user intervention.” Spec. ^ 1. Claims 23 and 29, which are
illustrative, read as follows:
Claim 23: A method comprising:
during a call between a communication module and a
first device the communication module receiving
communications from the first device in an audio call format;
the communication module identifying that said call has
been terminated;
the communication module converting said
communications received in said audio call format into a text
format;
the communication module providing said
communications converted into said text format to a second
device;
the communication module receiving communications
from said second device in said text format;
the communication module converting said
communications received from said second device into said
audio call format; and
the communication module providing said
communications converted into said audio call format to said
first device;
wherein the step of providing said communications
converted into said audio call format to said first device
comprises the communication module initiating a call back to
said first device.
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Claim 29: A computer program comprising machine readable
instructions that when executed by computing apparatus
controls it to perform the method of claim 23.
The Rejections and References
Claims 25-28 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. See Final Act. 2.
Claims 23-302 stand rejected under 35 U.S.C. § 103(a)3 as being
unpatentable over Dutta et al. (US 6,453,294 Bl; Sept 17, 2002; “Dutta”)
and Rowe (US 2003/0028601 Al; Feb. 6, 2003)4. See Final Act. 3-7.
The Record
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed May 2, 2016; “Reply Br.” filed Dec. 9, 2016) and the
Specification (“Spec.” filed Nov. 21, 2011, amended Feb. 10, 2014) for the
positions of Appellants and the Final Office Action (“Final Act.” mailed
Nov. 4, 2015) and Answer (“Ans.” mailed Nov. 17, 2016) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
2 In an apparent typographical error, the summary of the ground of rejection
only lists claim 23. Final Act. 3.
3 The prior art rejection is under the provisions of 35 U.S.C. in effect prior to
the effective date of the Leahy-Smith America Invents Act of 2011 (“pre-
AIA”). Id.
4 The Examiner identifies Rowe as US 2007/0230674 Al (see Final Act. 3),
however the ’674 document names Altberg et al., not Rowe, as inventors.
The passages cited by the Examiner, when considered in the context of the
Final Office Action, appear to refer to Rowe ’601, and not Altberg ’674 (see
Final Act. 4). We treat this apparent inconsistency as a clerical or
typographical error, which does not appear to have confused Appellants
(see, e.g., App. Br. 10-11; Reply Br. 2-3).
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Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
CLAIMS 25-28
Appellants state that “[cjlaims 25-28 are cancelled in a concurrently
filed amendment in order to reduce the issues on appeal.” App. Br. 9;
accord id. at 5. However, we find no such amendment and no entry of such
an amendment in the record. See id. at 6. In the Answer, the Examiner
maintains every ground of rejection stated in the Final Office Action. Ans.
2. However, Appellants submit no arguments in support of the patentability
of claims 25-28 (see 37 C.F.R. § 41.37(c)(l)(iv)) and have unequivocally
indicated their intent to limit the appeal to the rejection of claims 23, 24, 29,
and 30 (see id. at 9, 11). Accordingly, to the extent claims 25-28 are
currently pending, we summarily sustain the rejections of claims 25-28
under 35 U.S.C. §§ 101 and 103(a).
ISSUE
The dispositive issue presented by Appellants’ arguments is whether
the Examiner errs in finding the combination of Dutta and Rowe teaches or
suggests
[a] communication module identifying that [a] call [between a
first and a second device] has been terminated; . . . the
communication module converting [text format]
communications received from [a] second device into [an] audio
call format; and the communication module providing said
communications converted into said audio call format to [a] first
device; wherein the step of providing said communications
converted into said audio call format to said first device
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Application 13/373,610
comprises the communication module initiating a call back to
said first device
(emphases added), as recited in claim 23.
ANALYSIS
As an initial matter we note that “[ujnless the steps of a method
actually recite an order, the steps are not ordinarily construed to require one.
However, such a result can ensue when the method steps implicitly require
that they be performed in the order written.” Interactive Gift Express, Inc. v.
CompuServe Inc., 256 F.3d 1323, 1342^13 (Fed. Cir. 2001) (citations
omitted). Here, although no order of steps is explicitly recited, as a matter of
logic, the step of identifying that the call has been terminated must occur
before the step of delivering the audio format communication to the second
device; otherwise, the limitation of delivering the communication by
initiating a call back to the first device would be meaningless. See also
Spec. ^ 36 (as amended) (“[T]he originator 102 can communicate what is
needed and terminate the call. The receiver 104 can get the email and
compose a reply. The originator 102 can then be ‘called back’ and the
receiver’s email can be translated to voice to the originator 102.”).
The Examiner relies on Dutta to teach communication between
devices in which audio from a first device to a communications module is
converted to text and delivered to a second device and text from the second
device to the communications module is converted to audio and delivered to
the first device. Final Act. 3—4 (citing Dutta, col. 3,11. 36-57, col. 5,11. 55-
67, col. 6,11. 1-26, Figs. 2a, 3, 4). The Examiner relies on Rowe to teach
terminating a call and initiating a call back. Final Act. 4 (citing Rowe 11,
13, 42, 45, 65).
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Appellants contend “[t]he passages cited in Rowe [i.e., paragraphs 11
and 13] refer to a terminating switch 140 that can receive and deliver calls,
but there is no disclosure of identifying that a call has been terminated.”
App. Br. 10. The term “terminate^” is used in the claim and Specification
(see, e.g., Spec. ^ 36) to mean “to come to an end in time,” Merriam-
Webster’s Collegiate Dictionary 1216 (10th ed. 1999) (vi, def. 3),
whereas in Rowe’s paragraphs 11 and 13 “terminating switch” is used to
refer to a switch at “the switching center ... of the person you’re calling,”
Harry Newton and Steve Schoen, Newton’s Telecom Dictionary 1183
(27th ed. 2013) (definition of “terminating office”). Even accepting,
arguendo, that the Examiner may have conflated these meanings, we
nonetheless agree with the Examiner that the “ordinary artisan would agree
that a terminating switch regardless of its location on the telephonic network
which usually lies at the central offices of local exchange carriers are
certainly capable of terminating the call and initiating call back to a first
device or any other device.” Ans. 4.
However, mere “capability” is not enough. The claim recites a
specific sequence of steps. In particular, the claim recites that after a call is
terminated, a voice format message converted from a text message created at
the second device is delivered by call back to the first device. Appellants
contend as follows:
Paragraph [65 of Rowe] says “the user may be presented with a
list of call back numbers that may be previously stored in the
user’s personal database in memory 180. INP[5] 150 may send
the plurality of callback numbers to user device 110....” This
passage clearly discloses presenting a list of numbers that the
5 Intelligent Network Processor. Rowe ^ 11.
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user can call but there is no suggestion whatsoever of the
communication module initiating a call back to said first device.
Claim 23 clearly recites that the communication module initiates
a call back to said first device, rather than what is described in
Rowe, which is presenting a user with callback numbers so that
the user can manually make the call.
App. Br. 11. We agree with Appellants. Although the cited passages of
Rowe (see Rowe ^ 65) disclose the presentation of call back numbers, these
numbers are sent during a paging process (id. (“The paging unit 160 pages
the party based on the paging number and forwards the return telephone
number or the call back number to the party’s pager.”))
and not following identifying a call has been terminated. Furthermore,
Rowe teaches that the user initiates any call back (id. (“The user may select
the desired call back number from the list and the selection call back number
is returned to INP 150 over the data portion of the communication
channel.”)) rather than teaching or suggesting that the INP (i.e., the recited
“communication module”) initiates a call back. The other passages of Rowe
relied upon by the Examiner (see Rowe 42, 45) teach the insertion of a
text alert and text message into an ongoing call by the INP, and do not teach
or suggest a call back initiated by the INP.
Appellants have demonstrated error in the articulated rejection of
claim 23 under 35 U.S.C. § 103(a). Accordingly, constrained by this record,
we do not sustain the rejection of claim 23 and claims 24, 29, and 30, which
directly or indirectly incorporate the limitations of claim 23.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
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thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Claims 29 and 30 are rejected
on a new ground of rejection under 35 U.S.C. § 101 as being directed to
software per se, which is not within any of the statutory classes of patent-
eligible subject matter.
Claim 29 is directed to “[ajcomputer program comprising machine
readable instructions that when executed by [a] computing apparatus
controls it to perform [a] method.” Although claim 29 references the
method, i.e., process, of claim 23, it is directed to a computer program for
performing the method and not the method itself. Therefore, claim 29 is not
directed to a process. Claim 29 recites that the computer program comprises
instructions that, when executed by a computing apparatus, i.e., a machine,
controls the apparatus, but does not positively recite the apparatus or that the
instructions are actually embodied in a computer. Therefore, claim 29 is not
directed to a machine. Claim 29 does not recite any tangible, non-transitory
or transitory, embodiment of the computer program or instructions, and
would encompass such a program and instructions in the mind of a
programmer. Therefore, claim 29 is not directed to an article of manufacture
or composition of matter. Rather claim 29 is directed to a “computer
program comprising machine readable instructions,” i.e., software per se,
and is, accordingly, not patent-eligible. Claim 30 has a substantially similar
recitation and is patent-ineligible for the same reasons as claim 29.6
6 We note that it is unclear whether claims 29 and 30 are independent claims
or dependent claims. Although they incorporate the subject matter of other
claims by reference, the preambles of claims 29 and 30 do not clearly relate
to the preambles of claims 23 and 24 and appear to be broader than claims
23 and 24, respectively. For instance, one would not need to actually
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DECISION
The decision of the Examiner to reject claims 25-28 is summarily
affirmed.
The decision of the Examiner to reject claims 23, 24, 29, and 30 is
reversed.
We enter a new ground of rejection for claims 29 and 30 under
35U.S.C. § 101.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
perform the method of claim 23 to infringe claim 29. On the other hand,
Appellants have characterized claims 29 and 30 as dependent claims. See
App. Br. 11; see also Fee Worksheet (May 26, 2015) (characterizing only
two out of eight claims as independent). In the event of further prosecution
of claims 29 and 30, the Examiner may wish to consider whether claims 29
and 30 are independent or dependent and, if dependent, whether they comply
with the requirements of 35 U.S.C. § 112(d) (“[A] claim in dependent form
shall. . . specify a further limitation of the subject matter claimed.”
(Emphasis added.)).
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
37 C.F.R, §41.500?)
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