Ex Parte Moran et alDownload PDFPatent Trial and Appeal BoardSep 27, 201813728027 (P.T.A.B. Sep. 27, 2018) Copy Citation 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; 2 Appeal 2018-003551 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). 3 Appeal 2018-003551 Application 13/728,027 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). 4 Appeal 2018-003551 Application 13/728,027 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 5 Appeal 2018-003551 Application 13/728,027 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."). 6 Appeal 2018-003551 Application 13/728,027 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 7 Appeal 2018-003551 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) 8 Copy with citationCopy as parenthetical citation