Ex Parte Arsenault et al

Patent Trial and Appeal Board

Oct 31, 2016

13138031 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/138,031 09/20/2011
21028 7590 11/02/2016
Gowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTA WA, ON KIP 1C3
CANADA
FIRST NAMED INVENTOR
Jonathan Allan Arsenault
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.
6565-87549-01 1655
EXAMINER
ROSE, DERRICK V
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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
Exparte JONATHAN ALLAN ARSENAULT, DAVID WILLIAM
CLARK, ERIC JOHN WOLF, and SEAN MACLEAN MURRAY1
Appeal2015-004252
Application 13/138,031
Technology Center 2400
Before JOHN F. HORVATH, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23, 26-29, and 57----62, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies the real party in interest as BCE INC. App. Br. 3.
Appeal2015-004252
Application 13/138,031
Introduction
Appellants state their invention relates to "enabling end-user
equipment at an end-user premise to effect communications when an ability
of the end-user equipment to communicate via a communication link
connecting the end-user equipment to a communications network is
disrupted." (Spec 1: 11-15.) Claim 1 is representative:
1. A method for effecting a communication over a
communications network, said method comprising:
determining that an ability of first end-user equipment
at a first end-user premise to communicate via a first
communication link connecting the first end-user equipment
to the communications network is disrupted;
establishing a wireless communication link between the
first end-user equipment and second end-user equipment at a
second end-user premise upon the ability of the first end-user
equipment to communicate via the first communication link
being determined to be disrupted; and
causing information pertaining to the communication to
be exchanged between the first end-user equipment and the
communications network via the wireless communication link
and a second communication link connecting the second end-
user equipment to the communications network.
App. Br. 20 (Claims App 'x) (disputed requirement emphasized).
Rejections
Claims 1, 6-12, 14--17, 19-23, 26-29, and 57-62 stand rejected under
35 U.S.C. § 102(b) as anticipated by Pregont (US 2007/0032230 Al; Feb. 8,
2007). (Final Act. 4--12.)
Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Pregont and Dorenbosch (US 2002/0164996 Al; Nov. 7, 2002). (Final Act.
12-14.)
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Appeal2015-004252
Application 13/138,031
Claims 13 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Pregont and Stevens (US 2007 /0053306 Al; Mar. 8, 2007). (Final Act.
14--16.)
ANALYSIS
Appellants argue the Examiner errs in rejecting claim 1 by finding
Pregont teaches the disputed "determining that an ability of a first end-user
equipment at a first end-user premise to communicate ... is disrupted"
requirement. (App. Br. 9-12.) Appellants contend that in finding Pregont
discloses this limitation, the Examiner interprets "disrupted" inconsistently
with its ordinary meaning as used in Appellants' claims and Specification.
(Id. at 10-11.) Appellants also contend the Examiner errs in finding that
Pregont' s process of performing a call relay teaches determining an ability to
communicate is disrupted as claimed, because in Pregont's call relay process
there is no communication ability of the end-user equipment to disrupt until
ofter the call relay process has completed. (Id. at 11-12.)
The Examiner answers by finding one of ordinary skill in the art
would understand step 503 of Figure 5 in Pregont ("Establish data session
And relay the first call") "recites the limitation of 'determining that an
ability [ ... ] is disrupted' where a determination is made that a second call
needs to be made." (Ans.15-16.)
We agree with Appellants that, under a broad but reasonable
interpretation, in view of the Specification, "disrupted" in claim 1 has its
ordinary, dictionary meaning. We agree it is not possible to disrupt
something that does not yet exist. Thus, claim 1 requires that, during the
performance of the disputed "determining" requirement, the "ability ... to
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Appeal2015-004252
Application 13/138,031
communicate" that "is disrupted" must be an ability to communicate that is
in place at the time of the determining.
In response to the Examiner's finding in the Answer that Pregont's
Figure 5 teaches the disputed requirement, Appellants argue the Examiner
errs because Pregont teaches "receiving a notification that a call is to be
relayed; this is not a determination that an ability of first end-user equipment
to communicate over a first communication link is disrupted." (Reply Br.
2.) We agree. Until the call relay is made in Pregont, the end-user device
has no "ability ... to communicate" that can be or "is disrupted" as claimed.
Accordingly, we do not sustain the rejection of claim 1. We also do
not sustain the rejection of independent claims 29 and 57, both of which
include a version of the disputed requirement, or of any of the dependent
claims, 2-23, 26-28, and 58---62.
We note, in an ex parte appeal, the Board "is basically a board of
review-we review ... rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). "The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). The
Board's primary role is to make our decision based on the findings and
conclusions presented by the Examiner. See 37 C.F.R. § 41.50(a)(l) ("The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner").
We express no opinion as to whether any of the pending claims would
have been be obvious in view of additional explanation and/or references,
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Application 13/138,031
and we leave any such further consideration to the Examiner. Although the
Board has authority to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-23, 26-29, and 57----62.
REVERSED
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