Ex Parte Moran et al

Patent Trial and Appeal Board

Sep 27, 2018

13728027 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/728,027 12/27/2012
136582 7590 10/01/2018
STEVENS & SHOWALTER, LLP
Box AVAYA Inc.
7019 Corporate Way
Dayton, OH 45459-4238
FIRST NAMED INVENTOR
Matthew Moran
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.
412082-US-NP/AVA008PA 4830
EXAMINER
IPAKCHI,MARYAMM
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
pto@sspatlaw.com
pair_avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MATTHEW MORAN, CATHY TALBOT,
EOIN MCDERMOTT, and PAUL D'ARCY
Appeal2018-003551
Application 13/728,027 1
Technology Center 2100
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE, and enter a NEW GROUND OF REJECTION under
35 U.S.C. § l 12(b), pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Avaya, Inc. as the real party in interest. App. Br. 2.
Appeal 2018-003551
Application 13/728,027
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to a system and method for "passively
interacting with website users," and particularly, "passively guiding a user
on a website utilizing contact center technology." Spec. ,r 2. The
Specification provides that "any communications platform[,] or for that
matter contact center platform[,] that supports unified communications and
contact center solutions is contemplated by the present invention." Id. at
,r 13 ( emphasis added). According to the Specification, the invention
"enables real time custom rendering ... to [the] customer as driven by the
contact center [ and] as a result of interactions prior to any agent
involvement, if any." Id. at ,r 15.
Claims 1, 14, and 20 are independent. Claim 1 is illustrative of the
invention and the subject matter of the appeal, and reads as follows:
1. A computer system within a contact center to guide users
on a website to locate a desired content on the website,
compnsmg:
a computer readable memory storing executable instructions;
a processor in communication with the computer readable
memory, the processor when executing the executable
instructions:
receives from the website information related to a user's
interaction with content of the website;
tracks the user's interaction with content of the website
as an incoming contact to the contact center;
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Application 13/728,027
analyzes the user's interaction and contextual
information related to a communication link of the user
in order to anticipate a requirement of the user; and
passively sends a message to the user for guiding the user
to locate the desired content on the website based on the
anticipated user's requirement.
App. Br. 19 (Claims App'x) (emphasis added).
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Boehler et al. (US 2011/0126154 Al; May 26, 2011) ("Boehler") and
Orme (US 2007/0255702 Al; Nov. 1, 2007). Final Act. 6-15.
ANALYSIS
For the reasons explained below, we determine that claims 1-20 are
indefinite. Having so determined, we do not sustain the rejections of those
claims under 35 U.S.C. § I03(a) because to do so would require speculation
as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859,
862---63 (CCP A 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § I03(a)). Our decision does not reflect
an evaluation of the merits of the prior art rejection of claims 1-20.
NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 4I.50(b)
The following is a quotation of 35 U.S.C. § 112(b ): 2
2 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
112-29, re-designated 35 U.S.C. § 112, second paragraph, as 35 U.S.C.
§ 112(b ), applicable to any patent application filed on or after September 16,
2012. The record reflects that Appellants' application was filed on
December 27, 2012. Accordingly, we refer to 35 U.S.C. § 112(b).
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The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
Claims 1-20 are rejected under 35 U.S.C. § 112(b), as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the Appellants regard as the invention.
Independent claim 1 recites a "processor ... when executing []
executable instructions ... tracks the user's interactions with content of the
website as an incoming contact to the contact center." App. Br. 19
( emphasis added). In the Final Action, the Examiner cites Orme as teaching
this limitation. 3 Final Act. 6. In the Answer, however, the Examiner
acknowledges "the claim language itself and Appellants['] originally filed
[S]pecification fail to definitively and comprehensively define" this claim
limitation, and it is "lacking definite scope to one of ordinary skill in the
art." Ans. 6-7. We agree with the Examiner's assessment in the Answer.
There are several ambiguities that render claim 1 susceptible to
multiple interpretations. First, it is unclear which claim limitation "tracks
... as" is intended to modify, or what it means. The claim could be
interpreted such that the "user's interaction with content" is being tracked,
and is treated equivalently to an "incoming contact to the contact center."
Or, the claim alternatively could be interpreted such that the "user's
interaction with content of the website" is "an incoming contact to the
contact center," and it is the incoming contact that is being tracked. The
3 The Examiner found this teaching in Orme' s description of monitoring user
actions so as to determine results the user prefers, such as using a cookie to
track the user's browsing habits. Final Act. 6 (citing Orme ,r 440).
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claim language is unclear, and the Specification sheds little light on this
question. Moreover, the claim requires that the "website" and the "contact
center" are separate elements, because the claim recites a processor within
the contact center "receives from the website" certain information "related to
a user's interaction with content of the website." It is, therefore, unclear
how the user's interaction with content "of the website" may be tracked "as"
an incoming contact to a separate contact center.
Appellants (in contesting the Examiner's obviousness rejection) argue
that an "incoming contact" is a well understood "contact center construct
that is received and processed by a work assignment process" so that it can
be placed in work queues of a contact center. App. Br. 14. Appellants
further argue that "tracking" a user's interaction refers to a "work
assignment process" which "encompass[ es] certain ubiquitous features of a
contact center." Id. We, however, cannot discern how Appellants' proposed
meanings resolve the ambiguity of the phrase "tracks the user's interactions
with content of the website as an incoming contact," on this record.
Moreover, the term "contact center" itself is susceptible to multiple
interpretations, as the Examiner observes in the Answer. Ans. 4. "Contact
center" is not defined in the Specification. Although Figure 2 illustrates a
"block diagram depicting a contact center[] embodiment," that figure
simply shows a variety of generically labelled blocks, such as "first
communication device," "security gateway," "switch," and "circuit-switched
network." Further, the Specification provides that the "invention is not
limited to any type of communication system switch or configuration of
system elements." Spec. ,r 33. As the Examiner observes, the claim
language also "fails to provide any detail or limitations as to what a 'contact
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center' is[,] beyond the phrase in the preamble: 'a contact center to guide
users on a website to locate a desired content on the website."' Ans. 4. This
phrase in the preamble regarding the purpose of a "contact center" does not
indicate what a contact center is.
The record reflects that, during prosecution, the Examiner invited
Appellants to clarify the claim language so as to remove ambiguity of the
aforementioned limitations. Ans. 5; see also Halliburton Energy Servs., Inc.
v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ("it is highly desirable
that patent examiners demand that applicants" resolve any "ambiguity in the
patent claims ... during prosecution"). When "Appellants' fail[ed] to
amend" the claims, the Examiner took "Official Notice [of the term] 'contact
center,"' interpreting the phrase as encompassing any central server used in
guiding a user to a web page. Ans. 5. We, however, do not discern the
Examiner's Official Notice as resolving the foregoing ambiguity in the claim
language, and in particular, the claims' requirement that the contact center
include a processor that "tracks the user's interaction with content of the
website as an incoming contact to the contact center."
Accordingly, we reject claim 1 under 35 U.S.C. § 112(b) as indefinite.
See, e.g., Nautilus, Inc. v. Biosig Instruments, Inc, 134 S. Ct. 2120, 2129
(2014); Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) ("[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.").
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Independent claims 14 and 20, respectively, recite limitations nearly
identical to the claim 1 limitation discussed above and, for the same reasons
as discussed above, we also reject those claims under 35 U.S.C. § 112(b) as
indefinite. Remaining claims 2-13 and 15-19 are dependent and do not
recite limitations that resolve the indefiniteness of their respective
independent claims. Thus, we also reject claims 2-13 and 15-19 under 35
U.S.C. § 112(b) as indefinite.
DECISION
The Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a) is reversed proforma.
In a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 4I.50(b), we reject claims 1-20 under 35 U.S.C. § 112(b),
as being indefinite.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 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. The new
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Application 13/728,027
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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