Ex Parte Yoakum et al

Patent Trial and Appeal Board

Sep 22, 2014

11536414 (P.T.A.B. Sep. 22, 2014)

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

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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

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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

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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