Ex Parte Eng et al

Patent Trial and Appeal Board

Dec 18, 2018

12603683 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/603,683 10/22/2009
22897 7590 12/20/2018
Kaplan Breyer Schwarz, LLP
100 Matawan Road, Suite 120
Matawan, NJ 07747
FIRST NAMED INVENTOR
Kai Y. Eng
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.
2906-002us 1 7011
EXAMINER
MOHAMMED, ASSAD
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
docketing@kbsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte KAI Y. ENG and PRAM OD P ANCHA
Appeal2018-005894
Application 12/603,683
Technology Center 2600
Before JENNIFER S. BISK, JASON J. CHUNG, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1--4, 12, 13, and 38--47. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Throughout this Decision we have considered the Appeal Brief filed
November 27, 2017 ("Br."), the Specification filed October 22, 2009,
("Spec."), the Examiner's Answer mailed February 28, 2018 ("Ans.") and
the Final Rejection mailed February 27, 2017 ("Final Act.").
2 Appellants identify the real party in interest as Bellmar Communications
LLC. Br. 2.
Appeal2018-005894
Application 12/603,683
INVENTION
Appellants' invention is for facilitating context sensitive telephone
calls that convey the context of a call to the called party. Spec. ,r 1.
Claims 1 and 12 are illustrative of the claims at issue and are
reproduced below:
1. A method comprising:
providing a soft button for activation by a user using a
client device, said soft button lacking a destination telephone
number, the client device being connected to a button server
through a data network in response to said activation of said
soft button;
in response to said activation of said soft button,
downloading by said button server a software agent from said
button server to said client device through the connected data
network, said software agent containing the destination
telephone number and at least one of 1) instructions for
gathering context information for a phone call, and 2) context
information for the phone call, the software agent customized to
cause said client device to call the destination telephone number
and only the destination telephone number; and
in response to said downloading, said downloaded
software agent causing said client device to make the telephone
call to the destination telephone number contained in said
downloaded software agent, and transmitting said context
information to a called destination terminal.
12. A system for initiating telephone calls comprising:
a receiver for receiving a request from a client computing
device through a data network, said request including source
information for a call;
a processor configured, in response to the received
request, to embed within a software agent information
indicative of a called terminal, and instructions for obtaining
call context, the processor further configured to customize the
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Application 12/603,683
software agent to cause said client computing device to call the
called terminal and only the called terminal; and
a transmitter for transmitting said software agent to said
client computing device through the data network.
REJECTIONS
The Examiner rejected claims 1, 12, 13, 38, 41, and 43 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Scardino (US 8,458,098 Bl,
issued June 4, 2013), Hwang et al. (US 2009/0012801 Al, published
January 8, 2009), and Sylvain (US 2007 /0294354 Al, published December
20, 2007). Final Act. 8-18, 22-23.
The Examiner rejected claims 2, 39, and 42 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Scardino, Hwang, Sylvain, and Dhanoa
(US 8,064,575 Bl, issued November 22, 2011). Final Act. 18.
The Examiner rejected claims 3 and 40 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Scardino, Hwang, Sylvain, Dhanoa,
Durga (US 2006/0045243 Al, published March 2, 2006), and Abu-Hakima
et al. (US 2010/0146057 Al, published June 10, 2010). Final Act. 20.
The Examiner rejected claim 4 under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Scardino, Hwang, Sylvain, and Chang (US
2011/0103368 Al, published May 5, 2011). Final Act. 21.
The Examiner rejected claims 44--47 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Scardino, Hwang, Sylvain, Al-Harbi
(US 2007/0167178 Al, published July 19, 2007), and Haleem et al. (US
8,335,495 Bl, issued December 18, 2012). Final Act. 24.
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Application 12/603,683
CONTENTIONS AND ANALYSIS
We have reviewed Appellants' arguments in the Brief, the Examiner's
obviousness rejections, and the Examiner's response to the Appellants'
arguments. Appellants do not proffer sufficient argument or evidence for us
to find error in the Examiner's findings. We agree with and adopt the
Examiner's findings and conclusions in the Final Action and Answer.
Appellants argue Sylvain and Hwang do not teach or suggest a
software agent that causes the client device to make the telephone call to the
destination telephone number contained in the software agent, as recited in
claims 1, 3 8, and 41. Br. 8.
Hwang describes:
FIG. 5 shows schematically a block diagram for connection
between a customer and a company service phone according to
the present invention. A customer plugs the flash disk 1 into a
computer 3, and connects with a data base 51 of the information
center 5 via Internet 4, clicks a related webpage of the company
and then clicks the service phone number of the company,
thereafter the information center 5 provides an automatic web
call service via Internet browser, i.e. the information center 5
packages a VoIP related software and the service phone number
of the company into an ActiveX component, and applies a
CodeSigning service from VeriSign company for conducting
digital signature of the VoIP related software, then installs the
ActiveX component to a related webpage of the company. The
customer clicks the ActiveX component shown on the related
webpage of the company via Internet browser, therefore
downloads automatically the VoIP related software and the
service phone number of the company to the computer 3 of the
customer, and then connects the customer to the service phone of
the company.
Hwang ,r 22 ( emphasis added).
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Application 12/603,683
Appellants argue that using a flash disk, a customer has to click the
ActiveX component to be automatically directed to the service phone
number of the company. Br. 8. "Clicking on the Active X component of the
flash disk does not cause the computer to automatically call the service
phone number of the company." Id.
As the Examiner explains, Hwang describes two features: a flash disk
and a webpage. Ans. 26. The Examiner relies on the webpage feature to
teach the claimed limitation. Id. "Call4Service is a feature shown on a
display that allows the user to click on an item to make a free call, thus
connecting the user to the service of need." Id. (citing Hwang, Fig. 5, ,r,r 8,
9, 22, 25). "The VoIP software is downloaded with the service number of
the company to the computer of the user and connects the user to the service
phone of the company." Id. at 26-27. The Examiner considers the VoIP
software to teach the claimed "software agent," which causes the client
computing device to call the number that is contained in the software agent.
Id. Regardless of whether a user may click on various web pages in addition
to Hwang's teachings of the VoIP software, Hwang's paragraph 22 teaches a
software agent that causes the client device to make the telephone call to the
destination telephone number contained in the software agent, as recited in
claims 1, 38, and 41. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) ("'Comprising"' is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.). For these
reasons, we are not persuaded of error in the Examiner's findings with
respect to independent claims 1, 3 8, and 41.
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Application 12/603,683
Regarding independent claim 12, Appellants argue:
Hwang does not teach or suggest the missing processor, i.e. a
processor that is configured to customize the software agent to
cause a client computing device to call only a called terminal, as
recited in claim 12. Hwang merely teaches in paragraph 0022 (set
forth below) a flash disk that the customer plugs into a computer
to connect with a data base of an information center over the
Internet. Once the computer is connected to the information
center, the customer has to click on a related webpage of the
company and then has to click the service phone number of the
company. After the customer has clicked on the service phone
number of the company, the information center provides an
automatic web call service via the Internet browser. Hwang does
not teach or suggest that the data or files stored on the flash disk
operate as a software agent to cause the computer to call only the
service phone number of the company.
Br. 13.
The Examiner finds Hwang teaches "software being installed and
providing user automatic connection to the company." Ans. 30. We agree
with the Examiner that Hwang teaches the limitation a "processor further
configured to customize the software agent to cause said client computing
device to call the called terminal and only the called terminal" recited in
claim 12, because Hwang describes
[ t ]he customer clicks the ActiveX component shown on the
related webpage of the company via Internet browser, therefore
downloads automatically the VoIP related software and the
service phone number of the company to the computer 3 of the
customer, and then connects the customer to the service phone of
the company.
Hwang ,r 22 (emphasis added). Thus, despite Appellants' arguments that
Hwang does not cause the computer to call only the service phone number of
the company, Hwang explicitly teaches connecting the customer to the
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Application 12/603,683
service phone of the company. Again, even if Hwang teaches that a user
clicks on various web pages in addition to Hwang's teachings regarding the
processor, Hwang teaches a "processor further configured to customize the
software agent to cause said client computing device to call the called
terminal and only the called terminal," as recited in claim 12. Hwang ,r 22.
Appellants also argue Scardino does not teach the "transmitter"
recited in claim 12. Br. 14, 15. We are not persuaded by this argument.
Scardino teaches that in response to a user activating a button, software is
downloaded from a server. Scardino, Fig. 1, 6:67-7:1. Appellants do not
sufficiently explain why Scardino's system of downloading, i.e., transmitting
from the server, does not encompass the "transmitter" for "transmitting said
software agent to said client computing device through the data network," as
recited in claim 12. Our reviewing court has explicitly held that "[37 C.F.R.
§] 41.37 [] require[s] more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art." In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, for these reasons and for the reasons stated in the Final
Rejection and Answer, we sustain the§ 103 rejection of claims 1, 12, 38,
and 41. For the same reasons, we also sustain the rejections of the pending
dependent claims.
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Application 12/603,683
DECISION
We affirm the Examiner's rejection of claims 1--4, 12, 13, and 38--47.
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).
AFFIRMED
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