Ex Parte Cobb et al

Patent Trial and Appeal Board

Sep 12, 2013

11484185 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DALE L. COBB, PAUL D. GILBERT, and PHYLLIS SANTA
__________

Appeal 2011-007041
Application 11/484,185
Technology Center 2100
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1 under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. Claim 54 has been indicated by the Examiner to
contain allowable subject matter. (Ans. 6.) We have jurisdiction under 35
U.S.C. § 6(b).

1 Appellants identify Verizon Communications Inc. and its subsidiary
companies as the real party in interest. (App. Br. 1.)
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STATEMENT OF CASE
31. A method for developing a call application, the method
comprising:
initiating display of a graphical user interface (GUI) that includes,
a create application image for prompting a user for selection of an
application, the application including a self-service application for
controlling a call flow,
a status image for providing information on status of testing of the
application, wherein the application is web-based and deployable in real-
time, and
a call profile screen corresponding to the call flow, the call profile
screen specifying a call profile that provides information about the call flow
to generate the application; and
validating the call profile by the user prior to making the call profile
available to customers.

53. A method according to claim 31, wherein validating a call profile
comprises ensuring that the call profile contains all information necessary to
build a call application.

Cited References

Fisher et al. US 5,608,789 Mar. 4, 1997
Crook US 6,642,942 B1 Nov. 4, 2003
Kredo US 6,714,637 B1 Mar. 30, 2004

Grounds of Rejection
Claims 31, 34-36, 38, 41-43, 45, 48-50, 53, and 54 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Crook in view of Fisher and
Kredo.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
6.
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Discussion
ISSUE
The Examiner contends that Crook discloses a method as claimed,
including a step that
informational messages 74A-F are displayed in the editor to
indicate to the user how the call processing system is
configured and verified by the informational messages (8:66-
9:18). Thus it appears that testing (verification) of the
configuration and displaying status image providing
information on status of testing are implicitly included in
Crook's teaching of verification messages 74A-F.

(Ans. 4.)
The Examiner concludes that
[i]t would have been obvious to one of skill in the art, at the
time the invention was made, to combine Fisher's teaching of
testing and displaying status image providing information on
status of testing. Motivation of the combining is to verify the
performance of the developed application. Per Crook the user
seeking to create the call processing application may access the
computer system and configuration system via Internet. Thus it
appears that Crook's application is web-based and is deployable
in real-time. Even if it is not, implementation of web-based call
processing application is well known in the art and is disclosed
by Kredo (2:35-37, 4:48-56).

(Id.)

Appellants argue that “not one of the three applied references
addresses this feature of validating a call profile by the user prior to making
the call profile available to customers.” (App. Br. 6.) Appellants argue
that the Examiner has provided no evidence to support the motivation to
combine the cited references and that the indicated motivation, “‘for
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ensuring product completeness and performance in doing business,’” is not
supported by the record. (App. Br. 7.)
The issue is: Does the cited prior art disclose validating a call profile
by the user prior to making the call profile available to customers?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

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ANALYSIS
Appellants provide separate arguments in the Brief and Reply Brief
for claims 31 and 53. We select claims 31 and 53 as representative and
address these specific claims separately.
Claim Interpretation
We begin with claim interpretation. During ex parte prosecution,
claims are to be given their broadest reasonable interpretation consistent
with the description of the invention in the specification. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). See SuperGuideCorp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into the claim limitations
that are not part of the claim. For example, a particular embodiment in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d at 322.
According to the Specification page 2, “[c]onventional application
profiles are text-based, free-format, making automated conversion into a
graphical format unfeasible.” The GAP (graphical application profile)
system “supports the online creation of graphical representations of the
conventional manual, paper-based call plan application profiles associated
with complex call plan applications.” (Spec. 9.)
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Appellants broadly claim a method for developing a “call
application.” We interpret a “call application” as any action of putting a call
into operation. The “call application” according to the claim must be a
“self-service” application for controlling call flow. (Spec. 4.) We interpret
the term “call profile” as broadly claimed, as any profile which is an “outline
of something” for example, an outline of how a call processing configuration
is configured, e.g. a graphical application profile (Spec. 8 ¶ [35]).
The claims require a step of “validating” the call profile. We interpret
the term “validate” broadly to encompass any method of checking the
accuracy of a profile. Appellants’ Specification discloses that “a customer
may create, review, and modify all elements of a call plan application and to
deploy the call plan application in real time” (Spec. ¶ [05]). (Ans. 11.)
Appellants argue that the validation step comprises the specific finding that
“the call profile contains all information necessary to build a call
application.” (Reply Br. 3.) While claim 53 includes this limitation, claim
31 does not. Under the doctrine of claim differentiation we construe claim
31 as broadly directed to any method of checking or reviewing the accuracy
of a call profile.

Obviousness
Claim 31
Appellants argue that, “not one of the three applied references
addresses this feature of validating a call profile by the user prior to making
the call profile available to customers.” (App. Br. 6.) We are not
persuaded.
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First, the Examiner finds that, in Crook, informational messages 74A-
F are displayed in the editor to indicate to the user how the call processing
system is configured and verified by the informational messages (8:66-9:18).
This verification of Crook would indicate call verification or accuracy
checking of a call processing application. Such a verification step is
encompassed in our broad interpretation of the claim term “validating,” as
the step provides a method of checking the accuracy of the call profile.
The Examiner also cited Fisher as evidence that, “in the same art of
user defined Call processing application, testing and displaying status image
providing information on status of testing of a call processing application is
disclosed by Fisher (2:40-50. See also Fisher's teaching of evaluation
module 342 and testing module 343).” (Ans. 4.) As we have interpreted
the claim term, the testing step of Fisher also meets the broad limitation of
“validating the call profile.” Appellants have failed to provide evidence to
show that Fisher’s “techniques for testing and validating CPRs that have
been created at a creation environment” (col 2, ll. 40-42) and Fisher’s
evaluation and testing models which simulate call processing (col. 10, ll. 1-
3) would not be understood by those of ordinary skill in the art to logically
be completed prior to making the call profile available to customers (i.e., in
the profile creation environment).
Appellants argue that the Examiner has provided no evidence to
support the motivation to combine the cited references and that the indicated
motivation, “for ensuring product completeness and performance in doing
business,” is not supported by the record. (App. Br. 7.)
In KSR, the Supreme Court held that “[w]hile holding that some
rationale must be supplied for a conclusion of obviousness, the Supreme
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Court nonetheless rejected a “rigid approach” to the obviousness question,
and instead emphasized that “[t]hroughout this Court’s engagement with the
question of obviousness, our cases have set forth an expansive and flexible
approach . . . .” Id. at 415. The Court also rejected the use of “rigid and
mandatory formulas” as being “incompatible with our precedents.” Id. at
419; see also id. at 421 (“Rigid preventative rules that deny fact finders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.”). (Emphasis added.)
We agree with the Examiner that persons of ordinary skill in the art in
the call profile creation environment (i.e., prior to being made available to
customers) (as supported by Fisher), would test, validate and verify a call
profile. Further, we find that the “common sense” interpretation of the
validation of the call profile in the creation environment in Fisher, as
sanctioned by the Supreme Court in KSR, would be that testing would be
completed prior to customer implementation to “ensure product
completeness and performance.” (Ans. 13.) Thus, we agree that the
rationale put forth by the Examiner to support a motivation to combine the
cited references, logically flows from the cited disclosure in Crook and
Fisher. The rejection of claim 31 and its dependent claims is affirmed.

Claim 53
Claim 53 is directed to the method according to claim 31, wherein
validating a call profile comprises ensuring that the call profile contains all
information necessary to build a call application. Thus, claim 53 further
specifies the manner in which a call profile is validated. The Specification
(e.g., pages 5, 14-15) discloses the use of an order editor during profile build
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which highlights missing information in the profile. Thus we interpret claim
53 to require that a call profile validation procedure must ensure that the call
profile contains all information, not that it just runs properly.
The Examiner admits on page 6 of the Answer:
The combined references fails [sic] to clearly teach validating
the call profile by ensuring that the call profile contains all
information necessary to build a call application before making the
call profile available to customers. However it would have been
obvious to one of skill in the art, at the time the invention was made,
to implement the validation of the call profile by ensuring that the call
profile contains all information necessary and correctly entered in
order to build a call application before making the call profile
available to customers.

(Ans. 6.)

With respect to claim 53, what is missing from the Examiner’s
analysis in the Answer is an indication of where in Crook or Fisher is
disclosed a validation procedure which ensures that a call profile contains all
information, for example, such as that performed by an order editor.
We thus agree with Appellants’ that the Examiner has not established
a prima facie case of obviousness ion this record. As claim 54 depends from
claim 53, we reverse the rejection as to claims 53 and 54.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection of
claims 31, 34-36, 38, 41-43, 45, and 48-50. The rejection of these claims is
affirmed.
The obviousness rejection of claims 53 and 54 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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