Ex Parte Yoakum et alDownload PDFPatent Trial and Appeal BoardSep 22, 201411536414 (P.T.A.B. Sep. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________ Ex parte RYAN N. YOAKUM, JOHN H. YOAKUM, and STEVE J. McKINNON ______________ Appeal 2012-004537 Application 11/536,414 Technology Center 2600 ______________ Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-004537 Application 11/536,414 2 Exemplary Claim Independent claim 1 illustrates the invention as follows, with some paragraphing and disputed elements highlighted in italics: 1. A method comprising: (a) determining whether a monitored person is engaged in a communication session with a subscriber who has subscribed to receive presence information associated with the monitored person; (b) creating the presence information based on whether the monitored person is engaged in the communication session with the subscriber; and (c) effecting delivery of the presence information to the subscriber. Rejections The Examiner rejected independent claims 1 and 10 under 35 U.S.C. § 102(b) as being anticipated by Wengrovitz (US 2007/0133437 A1, June 14, 2007) (Ans. 3–4); and dependent claims 2–9 and 11–18 under 35 U.S.C. § 103(a) as being obvious over Wengrovitz and Thompson (US 2006/0070003 A1, Mar. 30, 2006) (Ans. 4–8). ANALYSIS In the Briefs, Appellants contend the Examiner’s finding that Wengrovitz teaches all the elements of Appellants’ claimed invention is incorrect (see App. Br. 4–14; Reply Br. 3–8). Appellants find, among other things, step (b) (hereinafter “the disputed limitation”) is not taught by Wengrovitz (Reply Br. 3–8). We agree. Appellants find: the WIS information, which the Patent Office equates to the claimed presence information, is not created based on whether Appeal 2012-004537 Application 11/536,414 3 the monitored person is engaged in the communication session with the subscriber, as recited in claim 1. The system in Wengrovitz propagates the same WIS information as presence information regardless of who else is on the conference call with the speaker. In fact, Wengrovitz discloses that the presence information is “pre-determined and pre-formatted.” (Wengrovitz, paragraph 0046). Thus, the information sent in Wengrovitz existed previously and was not created after a determination of whether the monitored person is engaged in a communication session with the subscriber, as recited in claim 1. In the embodiment of Figure 4, the information displayed is based on who is speaking and is based on the information about the speaker that is collected prior to the participant being connected to the conference (Wengrovitz, paragraphs 0056 and 0057). The WIS information sent to the participants is thus not created [“]based on whether the monitored person is engaged in the communication session with the subscriber,” as recited in claim 1. Instead of being based on whether a particular monitored person is engaged in a communication session with a subscriber, the WIS information in Wengrovitz is based solely on who is speaking. Reply Br. 7–8 (emphasis in original omitted, emphasis ours). We agree with Appellants as our interpretation of the disclosure of Wengrovitz coincides with that of Appellants. Therefore, on this record, we find the weight of the evidence supports the position articulated by Appellants in the Briefs. Accordingly, as such, we cannot sustain the Examiner’s rejection of claim 1, and independent claim 10, which recites commensurate limitations. Since we reverse the rejection of each independent claim on appeal, we also reverse the rejection of each associated dependent claim. Appeal 2012-004537 Application 11/536,414 4 CONCLUSION The Examiner erred in rejecting claims 1 and 10 under 35 U.S.C. § 102(b) and claims 2–9 and 11–18 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejections of claims 1–18 are reversed. REVERSED msc Copy with citationCopy as parenthetical citation