Arsenault, Jonathan Allan. et al.

Patent Trials and Appeals Board

Dec 26, 2019

12745352 - (D) (P.T.A.B. Dec. 26, 2019)

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.
12/745,352 05/28/2010 Jonathan Allan Arsenault 08929093US 9528
21028 7590 12/26/2019
Gowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTAWA, ONTARIO K1P 1C3
CANADA
EXAMINER
JOSHI, SURAJ M
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
Patprosec@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN ALLAN ARSENAULT, ERIC JOHN WOLF, and
DENIS MERCIER
____________

Appeal 2019-001249
Application 12/745,352
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–40 and 47–49, which constitute all of
the pending claims. See Final Act. 1 and Br. 12–20 (Claims App’x).2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest BCE INC. Br. 2.
2 We refer herein to the Appeal Brief filed July 10, 2018 (“Br.”), the Answer
mailed Sept. 25, 2018 (“Ans.”), the Final Office Action mailed Jan. 10, 2018
(“Final Act.”), and the Specification filed May 28, 2010 (“Spec.”).
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Introduction
Appellant describes the invention as “relat[ing] generally to a method
of routing communications destined for a given party, and more particularly,
to a method and system for modifying the way communications are routed to
the given party.” Spec. 1:6–8. Claim 1 is illustrative:
1. A method implemented by a network entity, said method
comprising:
- accessing communication routing information regarding
incoming calls associated to a called party and stored in a
memory, the communication routing information being
indicative of at least one termination device to which the
incoming calls destined for a communication device associated
with the called party and arriving at a gateway device are to be
routed via the gateway device, the communication routing
information being configurable by the called party;
- monitoring behavior information associated to the called party;
- processing the communication routing information and the
behavior information at least in part on the basis of
modification information in an attempt to determine if said
communication routing information stored in the memory is
suitable for modification;
- causing the called party receiving the incoming calls to be
advised when said processing has determined that the
communication routing information stored in the memory is
suitable for modification.
Br. 12 (Claims App’x).
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References and the Examiner’s Rejections
The Examiner’s rejections rely on the following references:
Name3 Number Published Filed
Knauerhase US 2007/0299927 A1 Dec. 27, 2007 Sept. 10, 2007
Agarwal US 2009/0055502 A1 Feb. 26, 2009 Aug. 21, 2007
Horvitz US 2003/0046421 A1 Mar. 6, 2003 Dec. 12, 2001
Nadler US 2009/0131080 A1 May 21, 2009 Nov. 21, 2007
Hill US 2009/0111474 A1 Apr. 30, 2009 Oct. 24, 2007
Ridley US 2009/0247188 A1 Oct. 1, 2009 Aug. 3, 2007
The Examiner rejected claims 1–8, 10, 11, 13–25, 27, 28, 30–37, 39,
40, and 47–49 under 35 U.S.C. § 103 as obvious over the combined
teachings of Knauerhase, Agarwal, Horvitz, and Nadler. Final Act. 3–20.
The Examiner rejected claims 9, 26, and 38 as obvious over
Knauerhase, Agarwal, Horvitz, Nadler, and Hill. Id. at 20–21.
The Examiner rejected claims 12 and 29 as obvious over Knauerhase,
Agarwal, Horvitz, Nadler, and Ridley. Id. at 22–23.
ANALYSIS
We review the appealed rejections for error based on the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential);
see also 37 C.F.R. 41.37(c)(1)(iv). Here, Appellant argues error in the
rejection of independent claims 1, 18, 34, 35, and 40 based on claim 1 and
presents no substantive arguments for dependent claims 2–6, 8–17, 19–23,

3 All reference citations are to the first listed inventor’s surname.
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25–33, 36–39, 48, and 49 separate from the independent claims. Br. 6–10.
Appellant substantively separately argues error in the rejection of claim 7
and, for the same reason, claims 24 and 47. Id. at 9. Accordingly, claims 2–
6, 8–23, 25–40, 48, and 49 stand or fall with claim 1, and claims 24 and 47
stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions of reversible error. We disagree with Appellant’s conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner’s
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis.
Claim 1
With respect to claim 1, Appellant initially contends the Examiner
errs in finding Agarwal teaches
accessing communication routing information regarding
incoming calls associated to a called party and stored in a
memory, the communication routing information being
indicative of at least one termination device to which the
incoming calls destined for a communication device associated
with the called party and arriving at a gateway device are to be
routed via the gateway device,
as recited (the “first disputed limitation”). Br. 6–8. In particular, Appellant
argues that, because Agarwal discloses notifications only “about senders of
emails,” “Agarwal is irrelevant to ‘communication routing information’ that
is used to route incoming calls (originally destined for a communication
device via a gateway device) to a termination device via the gateway
device.” Br. 7 (also noting Agarwal’s notifications are “sent to the recipient
receiving incoming emails and not to be configured by the recipient”).
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This argument is unpersuasive. The Examiner relies on the
combination of Knauerhase and Agarwal for teaching the first disputed
limitation. In particular, the rejection does not rely on Agarwal for teaching
the “incoming calls” and “called” party aspects of the first disputed
limitation. See Final Act. 5 (finding Agarwal teaches, inter alia, “accessing
communication routing information associated to a party”). One cannot
show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of those references). As for Agarwal’s
focus on emails rather than “calls,” we note “[a] reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect.” EWP
Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
(emphasis omitted).
For the first disputed limitation, the Examiner first finds Knauerhase
teaches “monitoring behavior information associated to the called party”
(and that “the called party is the party receiving the incoming calls”). Final
Act. 4 (citing Knauerhase ¶¶ 5, 15, 17, Fig. 1). The Examiner then finds that
it is the combination of Knauerhase and Agarwal that teaches the entirety of
the first disputed limitation. Id. at 5–6. As the Examiner explains in response
to Appellant’s argument, the rejection relies on Agarwal only for “teach[ing]
the concept wherein communication routing information (methods/means on
which communications may take place such as IM or different email or
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voicemail) associated with a user and wherein that communication routing
information for a communication can be modified.” Ans. 23. Appellant does
not persuasively explain how or why the Examiner errs in the findings and
reasoning for combining the teachings of Knauerhase and Agarwal.
Appellant further contends the Examiner errs in relying on Agarwal to
teach “causing the called party receiving the incoming calls to be advised
when said processing has determined that the communication routing
information stored in the memory is suitable for modification,” as recited
(the “second disputed limitation”). Br. 8. In particular, Appellant argues the
Examiner errs because Agarwal discloses sending notifications “to the
email’s sender, NOT to a recipient receiving emails.” Id. (citing Agarwal
¶¶ 45–46).
This argument is unpersuasive. Immediately after Agarwal’s
disclosure that is the basis for Appellant’s argument—the sending of
notifications to an email sender regarding an alternative communication
channel—Agarwal then discloses an embodiment that sends such
notifications to email recipients. See Agarwal ¶¶ 47–49. Consideration of
cited references includes the entirety of what they teach and suggest to one
skilled in the art, not merely portions specifically cited by the Examiner. See,
e.g., In re Hedges 783 F.2d 1038, 1039 (Fed. Cir. 1986) (citing In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965)); see also In re Passal, 426 F.2d
828, 831 (CCPA 1970) (“Just as piecemeal reconstruction of the prior art by
selecting teachings in light of appellant’s disclosure is contrary to the
requirements of 35 U.S.C. § 103[,] so is the failure to consider as a whole
the references collectively as well as individually.”).
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Appellant furthermore contends the Examiner errs in relying on
Horvitz to teach or suggest the requirement for “the communication routing
information being configurable by the called party,” as recited (the “third
disputed limitation”). In particular, Appellant argues that “Horvitz at most
teaches using the routing option to place received messages into special
folders. Horvitz’s routing option [] does not correspond to the
‘communication routing information’, as defined in claim 1. Br. 8 (citing
Horvitz ¶¶ 5, 64–65, 68, Fig. 1) (emphasis added).
Appellant’s argument is unpersuasive. Appellant reads Horvitz too
narrowly. As the Examiner finds, and we agree, Horvitz more broadly
teaches that a communication recipient (i.e., a “called party”) can modify
their message delivery options. Ans. 23–24. The “piping or routing messages
to a desired delivery folder” is only one such option that Horvitz discloses.
Horvitz ¶ 11. Horvitz discloses various other communication delivery/
routing options, such as “[d]evice options [that] can include selecting the
desired output device for delivery of a message (e.g., send message to ABC
manufacturer[’]s cell phone.” Horvitz ¶ 14. “Furthermore, the text may be
delivered or diverted to a subsequent or alternative device, for example, if a
primary device of the user, such as a desktop computer, is determined to be
idle for a specified period of time.” Id. ¶ 16; see also id. ¶ 265 (“[U]sers can
specify routing and paging options as a function of quantities including
expected criticality, maximum expected loss, and value of alerting the
user.”).
Accordingly, we sustain the rejection of claim 1 and, along with it,
claims 2–6, 8–23, 25–40, 48, and 49, not separately argued.
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Claim 7
Claim 7 depends from claim 1 through claim 2 and adds the
limitations of “determining a suggestion as to how to modify said
communication routing information” and “providing said suggestion to the
called party.” Br. 13 (Claims App’x). Appellant contends the Examiner errs
in finding Agarwal teaches these additional limitations. Br. 9 (citing
Agarwal ¶¶ 28, 34). In particular, Appellant argues that Agarwal’s
alerting the recipient or providing the recipient with infor-
mation to allow for a certain type of communication with a
sender is not suggestive of providing a suggestion as to how to
modify (pre-existing) communication routing information that
is indicative of a termination device to which incoming calls
(destined for an original recipient via a gateway device) are to
be routed via the gateway device.
Id.
This argument is unpersuasive. Each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See Merck, 800 F.2d at 1097; Keller, 642 F.2d
at 425. As the Examiner responds, and we agree, the combined teachings of
Knauerhase and Agarwal teach the limitations added by claim 7:
“Knauerhase teaches the general system of modifying a communication
routing information and more specifically where the party is a called party
(Figure 1, Paragraph 5). Agarwal improves upon this system.” Ans. 24; see
also id. at 25. Appellant does not explain how or why the Examiner errs in
relying on the combined disclosures of Knauerhase and Agarwal for
teaching the limitations of claim 7.
Accordingly, we sustain the rejection of claim 7 and, along with it, of
claims 24 and 47.
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CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed
1–8, 10, 11, 13–
25, 27, 28, 30–37,
39, 40, 47–49
103
Knauerhase,
Agarwal, Horvitz,
Nadler
1–8, 10, 11, 13–
25, 27, 28, 30–37,
39, 40, 47–49
9, 26, 38 103
Knauerhase,
Agarwal, Horvitz,
Nadler, Hill
9, 26, 38
12, 29 103
Knauerhase,
Agarwal, Horvitz,
Nadler, Ridley
12, 29
Overall
Outcome 1–40, 47–49
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED