FACEBOOK, INC.

Patent Trials and Appeals Board

Jun 11, 2020

14448725 - (D) (P.T.A.B. Jun. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/448,725 07/31/2014 Dale Malik 19487.370.2.2.3 8229
107193 7590 06/11/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE MALIK, ROBERT A. KOCH, PETER HILL, and
RICHARD A. ANDERSON
Appeal 2020-002551
Application 14/448,725
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject Claims 1–20. Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 1.
Appeal 2020-002551
Application 14/448,725

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CLAIMED SUBJECT MATTER
The claims are directed to facilitating a communication between users.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
detecting an ongoing voice communication between a
first participant and one or more additional participants;
presenting, to the first participant and in association with
the ongoing voice communication including the first participant
and the one or more additional participants, a call in progress
interface comprising identification information associated with
the one or more additional participants of the ongoing voice
communication and further comprising communication options
associated with the ongoing voice communication;
receiving an incoming voice communication intended for
the first participant during the ongoing voice communication;
presenting, to the first participant and without
interrupting the ongoing voice communication, an incoming
voice communication interface, the incoming voice
communication interface comprising multiple selectable actions
related to the incoming voice communication;
detecting, during the ongoing voice communication, a
selection of an action from among the multiple selectable
actions of the incoming voice communication interface; and
performing, using at least one processor and in response
to the detected selection, the selected action with respect to the
incoming voice communication.
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Application 14/448,725

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REFERENCES
The prior art relied upon by the Examiner is:
Cannon et al. (“Cannon”) US 5,703,571 Dec. 30, 1997
Bajzath et al. (“Bajzath”) US 6,144,644 Nov. 7, 2000
Henderson US 6,339,639 B1 Jan. 15, 2002
REJECTIONS2
Claims 1, 8–12, and 16–18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bajzath.
Claims 2–7, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bajzath in view of Henderson.
Claims 13–15 stand rejection under 35 U.S.C. § 103(a) as being
unpatentable over Bajzath in view of Cannon.
OPINION
Appellant argues Claims 1–4 and 8–19 as a group and does not
separately argue Claims 5–7 and 20. Appeal Br. 21. We select Claim 1 as
illustrative of the group and decide the appeal with respect to Claim 1 as the
illustrative claim. Independent Claims 12 and 18 contain limitations that are
similar to those of Claim 1.

2 First, we note that these Grounds of Rejections have been corrected to
shift claims to their appropriate grounds of rejection based on their
respective dependencies (e.g., Claims 13–15). These errors are considered
harmless. Second, we note that, in the Non-Final Action, Claims 1–20 stood
rejected under 35 U.S.C. §§ 101 and 112, first paragraph, but these
rejections were withdrawn by the Examiner. Non-Final Act. 5, 7; Ans. 3.
Therefore, these Grounds of Rejection are not before us.
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Appellant argues, “Bajzath does not describe the telephone network or
call-waiting service as handling one call and then receiving another call, but
merely a conventional modem and telephone connected to a ‘public switch
telephone network.’” Appeal Br. 20 (emphasis omitted). Appellant further
argues, “Bajzath fails to consider an ‘ongoing voice communication’ or
disclose the limitations of the independent claims that include the ‘ongoing
voice communication.’” Appeal Br. 20 (emphasis omitted). Appellant
contends that “Bajzath’s disclosure of an active Internet session and call-
waiting service for Internet users fundamentally differs from the limitations
of the pending independent claims” and “[d]etecting an Internet session
simply differs from detecting an ongoing voice communication between a
first participant and one or more additional participants.” Appeal Br. 20
(emphasis omitted).
The Examiner responds by finding that Bajzath’s connection between
the end user and the Internet Service Provider (ISP) is an “active
connection” and an “ongoing voice communication.” Ans. 3 (emphases
omitted). The Examiner further finds, “[i]f the user is actively connected to
the Internet, a call waiting Internet server can be used to provide the
incoming call information to the user’s computer terminal.” Ans. 3. The
Examiner further finds that the call made by a third party to the end user
while the end user is connected to the ISP corresponds to the claimed
“ongoing voice communication.” Ans. 5.
We find Appellant’s arguments persuasive. Specifically, we agree
that Bajzath does not disclose or fairly suggest “detecting an ongoing voice
communication between a first participant and one or more additional
participants” or “receiving an incoming voice communication intended for
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the first participant during the ongoing voice communication,” as is required
by Claim 1 and as Appellant contends (Appeal Br. 20). Based on our review
of Bajzath, we find that Bajzath discloses a process for allowing an end user
to be notified of an incoming voice communication during a period when the
end user is connected to an ISP through a call made from the end user’s
modem to the ISP. See Bajzath, Figure 2, reference elements 120, 135. For
example, Bajzath states,
[t]he call waiting Internet application software residing in the PC
of the user, then displays the caller’s information on the display
screen of the PC (step 660). At this time, the user is able to
review the caller’s information in real-time and decide whether
to answer the call or wait until after their Internet session.
See Bajzath, col. 6, lines 36–41; also see Figure 6B, step 660.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[A]nticipation is a question of fact.” In re Hyatt, 211 F.3d 1367,
1371–72, (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814–15
(1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008).
Thus, it is not enough that the prior art reference discloses part
of the claimed invention, which an ordinary artisan might
Appeal 2020-002551
Application 14/448,725

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supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to
achieve the claimed invention.
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(citation omitted).
The Examiner has not identified how Bajzath’s connection between
the end user and the ISP corresponds to the claimed “an ongoing voice
communication between a first participant and one or more additional
participants.” Furthermore, the Examiner has not identified how, in Bajzath,
the call received during the end user’s Internet session corresponds to
claimed “receiving an incoming voice communication intended for the first
participant during the ongoing voice communication.” Therefore, we
reverse the Examiner’s rejections of Claims 1, 8–12, and 16–18 under 35
U.S.C. § 102(b) based on Bajzath and of Claims 2–7, 13–15, 19, and 20
under 35 U.S.C. § 103(a) for similar reasons.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 8–12, 16–
18
102(b) Bajzath 1, 8–12, 16–
18
2–7, 19, 20 103(a) Bajzath,
Henderson
2–7, 19, 20
13–15 103(a) Bajzath,
Cannon
13–15
Overall
Outcome
1–20
REVERSED