Ex Parte Lawser et al

Board of Patent Appeals and Interferences

Jun 10, 2004

09030601 (B.P.A.I. Jun. 10, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN JUTTEN LAWSER and LARRY ARNISE RUSSELL
__________
Appeal No. 2002-1136
Application 09/030,601
___________
ON BRIEF
___________
Before BARRETT, FLEMING, and DIXON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 25, all the claims pending in the instant
application.
Invention
The invention relates to a technique for efficiently
completing a call from a calling party to a called party, when
one or both may subscribe to Internet Telephony services.
Appeal No. 2002-1136
Application 09/030,601
2
See page 1 of Appellants’ specification. The method commences
upon receipt of a call from the calling party dialed to the Plain
Old Telephony Service (POTS) number of the called party. A first
hub, such as a local office, receives and routes the call to the
called party if the called party is not on line. If the called
party is on line, the first hub offers the call to the Internet
Service Provider (ISP) serving the called party. The ISP serving
the called party converts the call to an Internet format and then
delivers the call to the called party over the Internet. See
page 2 of Appellants’ specification.
Independent claim 1 present in the application is
representative of the claimed invention and is reproduced as
follows:
1. A method for completing a call dialed from a calling
party to a Plain Old Telephony Service (POTS) number associated
with a called party, comprising the steps of:
receiving the call dialed to the POTS number associated with
the called party at a first hub in a telecommunications network;
routing the call to the called party if the called party is
not an Internet Telephony (IT) services subscriber that is
presently on-line, but if the called party is an IT subscriber
that is on line, then
receiving the call from the calling party at an Internet
Service Provider serving the called party;
Appeal No. 2002-1136
Application 09/030,601
1 We note that the Examiner has allowed claims 17 through 25.
See page 7 of Examiner’s answer.
2 Appellants filed an appeal brief on June 18, 2001.
Appellants filed a reply brief on January 14, 2002. The Examiner
mailed out an office communication on March 14, 2002, stating
that the reply brief has been entered.
3
converting the call to an Internet Telephony format at the
Internet Service Provider if the call is not presently in such a
format; and
delivering the call to the called party in an Internet
Telephony format for receipt by the called party so that the
parties can converse via using an Internet Telephony protocol.
References
The references relied on by the Examiner are as follows:
McMullin 5,809,128 Sept. 15, 1998
(Filing date Nov. 1, 1996)
Krishnaswamy et al. (Krishnaswamy) 5,999,525 Dec. 7, 1999
(Filing date Nov. 18, 1996)
Rejections at Issue
Claims 1, 2, and 5 through 16 stand rejected under 35 U.S.C.
§ 102 as being anticipated by McMullin. Claims 3 and 4 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
McMullin in view of Krishnaswamy.1
Throughout our opinion, we make reference to the briefs2 and
the answer for the respective details thereof.
Appeal No. 2002-1136
Application 09/030,601
4
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of the
Appellants and the Examiner, for the reasons stated infra, we
reverse the Examiner’s rejection of claims 1, 2, and 5 through 16
under 35 U.S.C. § 102 and we reverse the Examiner’s rejection of
claims 3 and 4 under 35 U.S.C. § 103.
We will first address the rejection of claims 1, 2, and 5
through 16 under 35 U.S.C. § 102. It is axiomatic that
anticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim. See In
re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986)
and Lindemann Maschninenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Appellants argue that the Examiner has not shown that
McMullin’s patent teaches Appellants’ claimed step of “converting
the call to an Internet Telephony format at the Internet Service
Provider if the call is not presently in such a format” as
recited in Appellants’ claim 1. See page 6 of Appellants’ brief.
In particular, Appellants argue that McMullin does not teach
converting the call to an Internet Telephony format at the
Appeal No. 2002-1136
Application 09/030,601
5
Internet Service Provider because McMullin teaches that the proxy
38, provides the function of converting the call to an Internet
Telephony format which is not at the Internet Service Provider.
See pages 6 and 7 of the brief and pages 1 and 2 of the reply
brief.
Upon our review of McMullin, we find that McMullin teaches
that the proxy IVRS would be equipped with the necessary software
and hardware to interconnect the caller with the sound equipment
of the proxy. See McMullin, column 11, lines 38 through 40.
McMullin further teaches that the IVRS is part of a called party
proxy 38. See McMullin, figure 2. McMullin teaches that figure
2 shows a functional block diagram of the logical network
elements interconnected with a called party proxy 38 which is
advantageously employed to provide an audio interactive voice
response to the calling party that attempts to call a subscriber
whose telephone link is busy. See McMullin, column 8, lines 13
through 20. McMullin teaches that the Data Communications
Service shown as element 50 in figure 2 is an Internet Service
Provider. See McMullin, column 1, lines 20 through 25, and
column 5, lines 34 through 63. Therefore, McMullin teaches that
the called party proxy 38 performs the function of providing the
necessary formatting of the incoming call and via the IVRS 14.
Appeal No. 2002-1136
Application 09/030,601
6
McMullin does not teach that this function is preformed at the
Internet Service Provider, DCS 50. Therefore, the Examiner has
failed to show that McMullin teaches “converting the call to an
Internet Telephony format at the Internet Service Provider if the
call in not presently in such a format” as recited in Appellants’
claim 1. Therefore, we will not sustain the Examiner’s rejection
of claims 1, 2, and 5 through 16 under 35 U.S.C. § 102.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over McMullin in view of Krishnaswamy. We note that
claims 3 and 4 depend from claim 1 and therefore, recite the step
of “converting the call to an Internet Telephony format at the
Internet Service Provider if the call is not presently in such a
format.” We note that the Examiner has relied on McMullin to
teach this limitation. Furthermore, we note that Krishnaswamy
fails to teach the step as well. Therefore, we will not sustain
the Examiner’s rejection of claims 3 and 4 for the same reasons
as above.
Appeal No. 2002-1136
Application 09/030,601
7
In view of the foregoing, we have not sustained the
Examiner’s rejection of claims 1, 2, and 5 through 16 under
35 U.S.C. § 102. Furthermore, we have not sustained the
Examiner’s rejection of claims 3 and 4 under 35 U.S.C. § 103.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
MRF:pgc
Appeal No. 2002-1136
Application 09/030,601
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S H Dworetsky
AT&T Corp
P.O. Box 4110
Middletown, NJ 07748-4801