Ex Parte Frank et al

Board of Patent Appeals and Interferences

May 8, 2012

10728374 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RANDALL FRANK, SCOTT J. PRUSINOSKI,
and VIJAY VUJJINI
____________

Appeal 2010-002749
Application 10/728,374
Technology Center 2400
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
BRUCE R. WINSOR, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-33, 89, and 90. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention enables communication between parties via
selected communication modes. See generally Spec. 1-2. Claim 1 is
illustrative with the key disputed limitation emphasized:
1. A method comprising:
receiving from a first person a request to converse with a second
person using a selected first one of two or more selectable communication
modes; and
in response to the received request, automatically performing an
action using a second one of the two or more communication modes,
selection of the second mode being determined by a rule created by the
second person.

THE REJECTIONS
1. The Examiner rejected claims 1-9, 11, 13-23, 25-28, 33, 89, and 90
under 35 U.S.C. § 103(a) as unpatentable over Tang (US 5,793,365; Aug.
11, 1998) and Loveland (US 6,895,558 B1; May 17, 2005 (filed Feb. 11,
2000)). Ans. 4-15.1
2. The Examiner rejected claims 10, 24, and 29-32 under 35 U.S.C.
§ 103(a) as unpatentable over Tang, Loveland, and Rudy (US 6,360,252 B1;
Mar. 19, 2002). Ans. 15-19.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 16,
2009; (2) the Examiner’s Answer mailed June 24, 2009; and (3) the Reply
Brief filed August 24, 2009.
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3. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Tang, Loveland, and Malik (US 2004/0078443 A1; Apr.
22, 2004 (filed Oct. 14, 2003)). Ans. 19-20.

THE OBVIOUSNESS REJECTION OVER TANG AND LOVELAND
The Examiner finds that Tang’s system receives a request from a first
person to converse with a second person using a selected first
communication mode as recited in representative claim 1, but does not
automatically perform an action using a second communication mode
responsive to the received request, where the second mode’s selection is
determined by a rule created by the second person. Ans. 4, 22-24. The
Examiner, however, cites Loveland as teaching this feature in concluding
that the claim would have been obvious. Id.
Appellants argue that Loveland does not teach or suggest (1) selecting
a communication mode determined by a rule created by a person, and (2)
automatically performing an action using the selected second mode
responsive to the received request as claimed. App. Br. 8-11; Reply Br. 1-2.
Appellants add that (1) the Examiner’s motivation to combine Tang and
Loveland is merely conclusory, and (2) these references teach away from
determining the second mode’s selection by a rule created by the second
person as claimed. App. Br. 11-13; Reply Br. 3-7.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Tang and Loveland collectively would have taught or suggested
automatically performing an action using a second communication mode
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responsive to a request received from a first person, where the second
mode’s selection is determined by a rule created by the second person?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which recites, in pertinent
part, that the second mode’s selection is determined by a rule created by the
second person. In particular, we see no error in the Examiner’s reliance on
Loveland’s personal Interactive Multimedia Response (IMR) application
202 as teaching this feature (Ans. 22-24)—an application that (1) receives
communications in various formats, and (2) routes communications to
various destinations via the best available method according to rules defined
for particular recipients based, in part, on their capabilities. See Loveland,
col. 12, ll. 37-59. Notably, users can configure these systems and their
associated rules as the Examiner indicates—a fact that Appellants
acknowledge. See Ans. 22-24 (citing Loveland, col. 4, l. 1; col. 12, ll.
35-60; Figs. 5-6); Reply Br. 2-3 (admitting that a user may configure rules
used by Loveland’s IMR system in determining a response). See also
Loveland, col. 12, ll. 16-19 (noting that the IMR application enables
authorized users to configure customized interactive multimedia response
systems unique to the user’s phone or other end-terminals).
Although Loveland’s IMR application may determine selection of the
second communication mode (i.e., the best method available), this
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determination is nonetheless dictated by the IMR’s rules that can be created
by a person as noted above. We therefore see no error in the Examiner’s
position that it would have been obvious for these rules to have been created
by the recited “second person” (i.e., the recipient of the communication) as
claimed, particularly since the recipient’s communication capabilities are
key aspects of the associated IMR rule. See Loveland, col. 12, ll. 16-19; col.
13, ll. 8-25.
Nor are we persuaded of error in the Examiner’s combining this
teaching with Tang’s communication system as the Examiner proposes,
particularly in view of Tang’s multi-mode communication capabilities
between individual users as the Examiner indicates. See Ans. 23-24. In this
regard, we find the combination merely predictably uses prior art elements
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Nor do the references
teach away from their combination as Appellants assert. App. Br. 12; Reply
Br. 6. Notably, Tang’s preferred automatic mode selection that is based on
user preferences does not preclude manually-created rules dictating that
selection (see Tang, col. 8, ll. 10-18)—a fact that likewise applies to
Loveland’s rule-based IMR mode selection noted above. In any event, it is
well settled that merely preferring one alternative over another (e.g.,
automatic versus manual mode selection in Tang) is insufficient to teach
away from the inferior alternative unless the disclosure criticizes, discredits,
or otherwise discourages that alternative—which it does not. See In re
Fulton, 391 F.3d 1195, 1200-01 (Fed. Cir. 2004). In any event, that Tang’s
mode selection is based in part on the recipient’s preferences only bolsters
the Examiner’s position. See Tang, col. 8, ll. 10-14. We therefore find the
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Examiner’s reason to combine the teachings of Tang and Loveland
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-9, 11, 13-23, 25-28, 33, 89, and 90 not
separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER TANG, LOVELAND, AND RUDY
The Examiner finds that Tang and Loveland teach all recited
limitations of representative claim 29 except for a switched local area
network (LAN) configured to connect to an internet protocol/public
switched telephone network gateway, but cites Rudy for teaching this feature
in concluding that the claim would have been obvious. Ans. 17-18, 24-25.
Appellants argue that Rudy’s client machines, namely telephones and
pagers, do not teach a switched LAN or an internet protocol/public switched
telephone network gateway as claimed. App. Br. 16-17. Appellants add that
the Examiner does not explain why it would have been obvious to combine
the references’ teachings as proposed. App. Br. 14-15.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 29 by
finding that Tang, Loveland, and Rudy collectively would have taught or
suggested a switched LAN configured to connect to an internet
protocol/public switched telephone network gateway?
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(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 29. Appellants’ contention
regarding the Examiner’s equating telephones and pagers in Rudy to a
switched LAN (App. Br. 16-17) does not persuasively rebut the Examiner’s
obviousness position based on the cited references’ collective teachings and
the common knowledge of ordinarily skilled artisans. See Ans. 17-18,
24-25. Specifically, Appellants do not squarely address—let alone
persuasively rebut—the Examiner’s finding that (1) the client machines in
the Tang/Loveland system can be implemented via remote or mobile devices
such as those described in Rudy (e.g., cellular telephones, pagers, landline
screen telephones, computers, etc.); (2) landline screen telephones
commonly use switched LANs; and (3) communication is conducted via
computers using an internet protocol. Ans. 25.
Nor are we persuaded of error in the Examiner’s combining the
references in concluding that claim 29 would have been obvious. In short,
we see no reason why providing the recited network-based features in the
Tang/Loveland system as the Examiner proposes (Ans. 17-18, 24-25) does
not predictably use prior art elements according to their established
functions—an obvious improvement. KSR, 550 U.S. at 417. We therefore
find the Examiner’s reason to combine the teachings of the cited references
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supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
We reach a similar conclusion regarding the Examiner’s rejection of
claim 10, for the Examiner cites Rudy merely to show that retrieving
calendar-based information is known in the art, and that providing such a
feature in the Tang/Loveland system would have been obvious. Ans. 16, 24.
As noted above, we see no reason why providing such a feature in the
Tang/Loveland system does not predictably use prior art elements according
to their established functions—an obvious improvement. KSR, 550 U.S. at
417. Appellants’ combinability arguments (App. Br. 14; Reply Br. 7) are
therefore unavailing.
We are therefore not persuaded that the Examiner erred in rejecting
claims 10 and 29, and claims 24 and 30-32 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER TANG, LOVELAND, AND MALIK
The Examiner finds that Tang and Loveland teach all recited
limitations of claim 12 except for forwarding the request to converse to a
third person if the second person is currently unavailable to converse, and
the third person is available to converse, but cites Malik for teaching this
feature in concluding that the claim would have been obvious. Ans. 19-20,
25-26.
Appellants argue that the Examiner’s reliance on Malik is misplaced
since Malik automatically forwards and transfers messages regardless of the
second and third users’ availability. App. Br. 15-16; Reply Br. 7-9.
Appellants also reiterate that the Examiner does not explain why it would
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have been obvious to combine the references’ teachings as proposed. App.
Br. 15.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 12 by
finding that Tang, Loveland, and Malik collectively would have taught or
suggested forwarding a conversation request to a third person if (1) the
second person is currently unavailable to converse, and (2) the third person
is available to converse?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
We will sustain the Examiner’s rejection of claim 12 which recites
forwarding the conversation request to a third person under the two distinct
conditions noted above. We see no error in the Examiner’s reliance on
Malik for this functionality. Ans. 26. Malik’s instant message (IM)
handling client 115a includes presence logic 325 that determines an intended
message recipient’s presence (“Romeo” in Malik’s example) at all of
Romeo’s IM addresses as well as the presence of his IM contacts. Malik, ¶¶
0069, 0073; Fig. 3A. The client also includes convey logic 330 that
automatically (1) forwards incoming instant messages to an alternative
address of the intended recipient (“Romeo”), or (2) transfers incoming
messages to a different recipient (“Mercutio”). Malik, ¶¶ 0074-76; Fig. 3A.
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Indicator messages 360, including automatic reply messages, are also
provided in connection with this functionality. Malik, ¶ 0076. In one
example, the system sends the auto-reply message “Romeo is currently
unavailable to reply to your IM message.” Id. (emphasis added). For
automatic message transfers, the indicator message can read “Your message
is being forwarded to Mercutio.” Id.
The clear import of this discussion is that messages are automatically
transferred to a third person (“Mercutio”) when the intended recipient
(“Romeo”) is unavailable—an unavailability that is prominently indicated in
the auto-reply message noted above. See Malik, ¶ 0076. Although Malik
does not explicitly indicate that Mercutio is available in this scenario, skilled
artisans would nonetheless reasonably infer that this is the case, particularly
in view of Malik’s presence logic that determines the presence of all of
Romeo’s contacts (and hence their availability). See Malik, ¶ 0073; see also
¶ 0075 (noting the message forwarding logic’s presence-determining
capabilities). Therefore, Malik at least suggests automatically transferring
messages to available (i.e., present) third parties when the intended recipient
is unavailable.
Nor are we persuaded of error in the Examiner’s combining Malik’s
teaching with the Tang/Loveland system since, as the Examiner indicates
(Ans. 20), doing so would ensure that communication occurs despite the
unavailability of the intended recipient. Such an enhancement merely
predictably use prior art elements according to their established functions—
an obvious improvement. KSR, 550 U.S. at 417. Accordingly, we find the
Examiner’s reason to combine the teachings of these references supported
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by articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
claim 12.

CONCLUSION
The Examiner did not err in rejecting claims 1-33, 89, and 90 under
§ 103.

ORDER
The Examiner’s decision rejecting claims 1-33, 89, and 90 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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