10999325 (P.T.A.B. Nov. 10, 2014)

Ex Parte Desai et al

Patent Trial and Appeal BoardNov 10, 2014

10999325 (P.T.A.B. Nov. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/999,325 11/30/2004 Wealthy Desai 60027.0430US01/BS040363 2597 90893 7590 11/10/2014 AT&T Legal Dept. GGGV Attention: Patent Docketing Room 2A-212 One AT&T Way Bedminster, NJ 07921 EXAMINER GOLDMAN, MICHAEL H ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 11/10/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WEALTHY DESAI and SANDEEP BETARBET ____________ Appeal 2012-004374 Application 10/999,325 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1–6 and 8–21, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal 2012-004374 Application 10/999,325 2 THE INVENTION The Appellants’ claimed invention is directed to providing service to a subscriber of an advertising program (Spec. 1:5–7). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer-readable medium containing computer- executable instructions which when executed by a processor perform a method for providing call feedback to at least one subscriber of an advertising program, the method comprising: retrieving a report, the report including data associated with at least one call associated with the at least one subscriber of the advertising program; generating a report message, the report message associated with at least one rule, wherein the report message is generated on a periodic basis without the need for the at least one subscriber of the advertising program to request the report; sending, via an electronic message over a communication network, the at least one subscriber of the advertising program the report message, the report message containing subscriber specific information and the report; determining whether the report message was received by the at least one subscriber of the advertising program; in response to determining that the report message was not received by the at least one subscriber of the advertising program; determining a reason the report message was not received by the at least one subscriber of the advertising program; producing an alert comprising information associated with the at least one subscriber and the reason the report message was not received by the at least one subscriber of the advertising program; and enabling a best remedial action to be determined for delivering the report message to the at least one subscriber based on the reason the report message was not received by the at least one subscriber of the advertising program wherein if the reason the report message was not received by the subscriber is related to an electronic message address of the subscriber, the Appeal 2012-004374 Application 10/999,325 3 best remedial action is determined to be contacting the subscriber to obtain an alternate electronic message address for sending the report message to the subscriber, and if the reason the report message was not received by the subscriber is related to an error in the communication network, the best remedial action is determined to be resending the report message to the subscriber. REFERENCES Johnson US 6,067,525 May 23, 2000 Benson US 6,470,079 B1 Oct. 22, 2002 Mohn US 7,092,502 B2 Aug. 15, 2006 Ferber US 7,184,971 B1 Feb. 27, 2007 THE REJECTIONS The following rejections are before us for review: 1. Claims 1–4, 6, 8, 16, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Benson and Johnson. 2. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Benson, Johnson, and Ferber. 3. Claims 9–15 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Benson, Johnson, and Official Notice. 4. Claims 18–20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Benson, Johnson, and Mohn. Appeal 2012-004374 Application 10/999,325 4 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the prior art does not disclose the claim limitation requiring: “wherein if the reason the report message was not received by the subscriber is related to an electronic message address of the subscriber, the best remedial action is determined to be contacting the subscriber.” (See Appeal Br. 15–16, Reply Br. 2–3). In contrast, the Examiner has determined that the cited argued claim limitation above is found at Benson in the Abstract, column 2, lines 23–34, column 4, lines 25–28, column 7, lines 1–8, column 32, lines 8–13; and Johnson at column 2, lines 23–34, column 33, lines 31–47, column 34, lines 23–62, and Figure 22 (Ans. 7, 3–16). We agree with the Appellants. Here, the claim limitation at issue requires “wherein if the reason the report message was not received by the subscriber is related to an electronic message address of the subscriber, the best remedial action is determined to be contacting the subscriber” (emphasis added) and is thus related to an electronic message that is not received and determining the best remedial action. The citations above to Benson and Johnson simply fail to disclose this. Johnson at column 34, lines 23–62 does disclose the general use of “IF X THEN Y” rules in an 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-004374 Application 10/999,325 5 engine but nothing in the citation specifically is related to electronic messages in the manner specifically claimed. The remaining citations above to Benson and Johnson fail to disclose the cited claim limitation as well. For these reasons the rejection of claims 1 and its dependent claims is not sustained. The remaining independent claims contain a similar limitation and the rejection of these claims and their dependent claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejections of claims 1–6 and 8–21 are reversed. REVERSED hh