Ex Parte Dhara et al

Patent Trial and Appeal Board

Jun 8, 2018

12896666 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/896,666 10/01/2010
48500 7590 06/12/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Krishna Kishore DHARA
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.
4366-889 1261
EXAMINER
SHIAU, SHEN C
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNA KISH ORE DHARA, VENKA TESH
KRISHNASWAMY, EUNSOO SHIM, and XIAOTAO WU 1
Appeal2018-001447
Application 12/896,666
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23--42, which are all the claims pending in this application. Claims
1-22 are cancelled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is Avaya, Inc.
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Application 12/896,666
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates to communication sessions and more
specifically to providing resources just-in-time to a participant in a
communication session based on context in the communication session."
(Spec. if 2).
Representative Claim
23. A method comprising:
monitoring, with a processor, a first communication
session between a caller and a recipient, the first
communication session comprising at least one of audio
or video;
identifying, with the processor, a first resource associated
with the first communication session;
[L 1] storing, in a non-transitory computer readable
medium, a context comprising information about the first
communication session and the first resource, the stored
context being linked to an identity of the caller and an
identity of the recipient;
detecting, with the processor, a communication event
involving the caller and the recipient;
[L2] retrieving, with the processor and based on the
identities of the caller and the recipient, the stored
context from the non-transitory computer readable
storage medium; and
presenting an option to access the first resource to at least
one of the caller and the recipient via a communication
device.
(Emphasis added regarding contested limitations LI and L2).
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Application 12/896,666
Rejections
A. Claims 23-26 and 28--42 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Goodman et al. (US 2007/0271340 Al; publ. Nov. 22,
2007) (hereinafter "Goodman") and Frazier et al. (US 2010/0246784
Al; publ. Sept. 30, 2010) (hereinafter "Frazier").
B. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Goodman,
Frazier and Ozzie et al. (US 2008/0005108 Al; publ. Jan. 3, 2008)
(hereinafter "Ozzie").
Issue on Appeal
Did the Examiner err in rejecting claims 23--42 as being obvious over
the cited combinations of references, under pre-AIA 35 U.S.C. § 103(a)?
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of rejection A
of claims 23-26 and 28--42 on the basis of representative claim 23. We
address rejection B of dependent claim 27, infra. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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Application I2/896,666
Rejection A of Claims 23-26 and 28-42 under§ 103(a)
Issue: Under pre-AIA 35 U.S.C. § I03(a), did the Examiner err by
finding that Goodman and Frazier would have collectively taught or
suggested contested limitations LI and L2:
[LI] storing, in a non-transitory computer readable
medium, a context comprising information about the first
communication session and the first resource, the stored context
being linked to an identity of the caller and an identity of the
recipient;
[L2] retrieving, with the processor and based on the
identities of the caller and the recipient, the stored context from
the non-transitory computer readable storage medium[,]
within the meaning of representative independent claim 23?2 (Emphasis
added).
Contested limitation LI of Independent Claim 23
Appellants contest limitation LI of claim 23, contending inter alia:
Critically, however, rather than retrieve a stored context that
corresponds to the general context of the conversation, and
present a first resource associated with the stored context to a
participant in the current conversation, Goodman discloses that
"[ t ]he context is then used to match context with metadata of
resources from one or more resource sources."
App. Br. 9.
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
I27 F.3d I048, I054 (Fed. Cir. I997) See e.g., Spec. i-f 47: "The various
embodiments described above are provided by way of illustration only
and should not be construed to limit the scope of the disclosure."
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Application 12/896,666
At the outset, we find at least the claim 23 language "context
comprising information about ... the first resource" is taught or suggested
by Goodman's description: "[t]he context is then used to match context with
metadata of resources from one or more resource sources." Emphasis
added. Goodman i-f 13; Final Act. 4.
We find a match of the context data to the metadata of the resources
in Goodman (i-f 13) falls within the scope of "context comprising information
about ... the first resource" (claim 23) under the broadest reasonable
interpretation, because the metadata in Goodman (i-f 13) is data about data,
i.e., data about the resources.
We consider the contested claim language in light of Appellants'
Specification. We find Appellants' Specification (i-f 3 6) expressly describes
that context can include metadata: "The context can include information
such as communication content, a communication history, communication
session metadata, [and] contact information. Emphasis added.
Appellants' Specification (i-f 36) also describes several non-limiting
examples of resources: "The resource can be a document, an agenda, a web
page, and/or a communication history." Emphasis added. See n.2, supra.
Goodman (i-f 13) similarly describes several resource examples: "[t]he
one or more resource sources may include, for example, the client device
upon which the graphical user interface is provided, known sources of image
files, audio files, audio-video files, and the like, on a communications
network, e.g., Internet Websites, and the like." Emphasis added.
Appellants aver that Goodman teaches context analysis and resource
collection in an ongoing instant messaging session. App. Br. 10. Appellants
note Goodman teaches searching resource metadata to identify relevant
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resources, while the claim identifies the relevant resource from the stored
context. Reply Br. 1-2. Appellants additionally urge that Goodman does
not teach linking the stored context to an identity of the caller and an identity
of the recipient. Reply Br. 2.
Claim Construction - "storing ... a context ... the stored context"
As an initial matter of claim construction, the Examiner concludes the
broadest reasonable interpretation of the claim 23 term "stored context"
encompasses Goodman's teaching of "stor[ing] the data corresponding to the
text messages, and any attachments, that have been exchanged between the
participants in the instant messaging session" (Goodman i-f 65), "hav[ing]
associated identifiers to identify which participant submitted the text
message in the history." Ans. 2.
See also Goodman, i-fi-1 110-111, e.g., "The participant identification
section 410 provides an identifier of the remotely located participant with
which the current user is communicating via the instant messaging session."
i-f 110. Emphasis added. 3
We find Appellants' arguments unavailing because Appellants fail to
address the Examiner's specific findings regarding Goodman's paragraph
65. See Final Act. 4. Specifically, Appellants do not substantively address
Goodman's teaching of an instant messaging history section (i.e., stored
context) that stores data corresponding to the text messages and any
attachments (i.e., resources) that are exchanged between participants in an
3 Further regarding the stored context of claim 23, Goodman (i-f 13) teaches
the "the instant messaging history section is analyzed to determine the
context of the conversation between the users." Emphasis added.
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Application 12/896,666
instant messaging session, as described in paragraph 65. See Ans. 2, citing
Goodman, i-f 65.
We also find Goodman's instant messaging history section (stored
context), which also stores previously exchanged attachments, teaches or at
least suggests storing "information about the first communication session
and the first resource," within the meaning of claim 23, based upon the
combined teachings and suggestions of Goodman and Frazier. 4
We further find that Goodman's participants (i.e., plural
"participants" i-f 65) teach or at least suggest a link between Goodman's
instant messaging history section (i.e., stored context) and the "identity of
the caller and an identity of the recipient," as recited in claim 23.
We find Goodman's paragraphs 110 and 111 also teach or suggest
plural participant identifiers, e.g., "[t]he participant identification section
410 may further be used to select a participant to which an instant message
is to be sent in the case of an instant messaging session involving more than
two participants." (Emphasis added). Given this evidence (id.), we find
linking the context in Goodman to both the identity of the caller and the
4 The Examiner finds the recited "first communication session" (claim 23)
is taught or suggested by Frazier (i-f 21 ): e.g., "[ c ]onversation monitor
program 300 may include a software program executed by processor 220
that monitors conversations or communications, such as phone calls, text-
based communication sessions, voicemail messages, video teleconferences,
etc." Final Act. 5, emphasis added. We emphasize the Examiner's rejection
is based upon the combined teachings and suggestions of the cited
references. See n.6, infra.
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identity of the recipient would merely be a predictable result. 5 See
Claim 23.
We additionally find Appellants' arguments unavailing because the
Appellants are arguing the references separately. 6 The Examiner finds the
monitored "first communication session" is taught or suggested by Frazier's
communications involving the user of a user device. See Final Act. 4--5,
citing Frazier i-fi-121-22. The Examiner's rejection is based upon the
combined teachings and suggestions of the cited references.
For at least the aforementioned reasons, we find the Examiner's
underlying factual findings regarding contested limitation L 1 are supported
by a preponderance of the evidence.
Contested limitation L2 of Independent Claim 23
Appellants further contend that limitation L2 ("retrieving, with the
processor and based on the identities of the caller and the recipient, the
stored context from the non-transitory computer readable storage medium")
is not taught or suggested by the cited Goodman and Frazier references.
App. Br. 11; claim 23, emphasis added. In particular, Appellants assert:
"Nowhere does Goodman teach retrieving, based on the identities of the
caller and the recipient, a stored context with information about a first
resource." Id. (emphasis added).
5 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("[A]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
6 Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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However, we find Goodman teaches inserting a reference to a
resource into the current text message, in which the inserted reference was
determined based upon a content analysis from a previous message. See
Goodman i-fi-f 128-130, Final Act. 4. In order to insert the resource
reference into the text message, we find Goodman must first retrieve the
resource reference. Therefore, we find "the natural result flowing from the
operation as taught would result in the performance of the questioned
function." PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194--95
(Fed. Cir. 2014) (internal citation omitted).
Thus, based upon at least the cited teachings and suggestions of
Goodman (i-fi-f 128-130), in combination with the teachings of Frazier (i-fi-19,
21-22), we find Appellants' arguments unavailing regarding contested
limitation L2 of representative independent claim 23. See App. Br. 11-14.7
Accordingly, on this record, and based upon a preponderance of the
evidence, we sustain the Examiner's§ 103(a) rejection A of representative
independent claim 23, and of the additional grouped claims 24--26 and
28--42, also rejected under rejection A, which are not argued separately. See
37 C.F.R. § 41.37(c)(l)(iv).
7 Our reviewing court guides: "'the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis
added); see also MPEP § 2123.
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Application 12/896,666
Rejection B of Dependent Claim 27
We note rejection B includes remaining dependent claim 27, which is
not argued separately. See App. Br. 12. Arguments not made are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
Conclusion
The Examiner did not err in rejecting claims 23--42, as being obvious
over the cited combinations of references under 35 U.S.C. § 103(a).
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner's Answer,
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner's decision rejecting claims 23--42 under
pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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