Ex Parte Gress et al

Board of Patent Appeals and Interferences

Apr 23, 2010

09633899 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID S. GRESS, ROBERT RAYMOND SEALEY, and
THOMAS BRYANT SEALEY II
____________

Appeal 2009-001175
Application 09/633,899
Technology Center 2400
____________

Decided: April 23, 2010
____________

Before JOHN A. JEFFERY, JOSEPH L. DIXON, and THU A. DANG,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-38. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
recording and playing a personalized voice message by a subscriber when a
specific calling party reaches the subscriber’s voice mail (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method in an application server for playing a
messaging prompt of a called party to a calling party, the
method comprising:
receiving calling party number information specifying a
calling party;
accessing stored calling party number information from
an Internet Protocol (IP) based database server configured for
storing calling party number information;
comparing the received calling party number information
to the stored calling party number information to determine if
there is a match between the received calling party number
information and the stored calling party number information;
and
based on a determined match of the stored calling party
number information identifying the calling party as a matched
calling party, retrieving a personalized, non generic [sic] voice
message having a recorded voice of the called party
corresponding to the matched, stored calling party number
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information, for playback as the messaging prompt to the
matched calling party.

The References
The Examiner relies on the following references as evidence:
Bobo US 5,870,549 Feb. 9, 1999
Ng US 6,243,376 B1 June 5, 2001
(filed Nov. 3, 1997)
Albal US 2003/0147518 A1 Aug. 7, 2003
(filed June 30, 1999)

The Rejections
The following rejections are before us for review:
Claims 1-38 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1, 2, 5, 9-13, 15, 18, 19, 22, 26-29, 31, and 34-381 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Albal.
Claims 4, 14, 20, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Albal and Ng.
Claims 3, 6-8, 16, 17, 21, 23-25, 32, and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Albal
Ng, and Bobo.

1 Although the Examiner omits claims 35-38 in the statement of the
anticipation rejection, the Examiner nonetheless includes these claims in the
body of the rejection. Compare Ans. 4 with Ans. 7. We therefore presume
that the Examiner intended to include these claims in the anticipation
rejection.
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Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

II. ISSUES
Has the Examiner erred in finding that claims 1-38 fail to comply
with the written description requirement under 35 U.S.C. § 112, first
paragraph, in particular whether the non-generic message claimed in
independent claims has written description support in the Specification
in such a way as to reasonably convey to a skilled artisan that the
Appellants had possession the claimed invention as of the filing date?
Has the Examiner erred in finding that Albal discloses “retrieving a
personalized, non generic voice message having a recorded voice of the
called party corresponding to the matched, stored calling party number
information, for playback as the messaging prompt to the matched calling
party,” as recited in claim 1?

III. PRINCIPLES OF LAW

Written Description Requirement
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
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subject matter, rather than the presence or absence of literal
support in the specification for the claim language.

In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
The term “possession,” however, has never been very
enlightening. It implies that as long as one can produce records
documenting a written description of a claimed invention, one
can show possession. But the hallmark of written description is
disclosure. Thus, “possession as shown in the disclosure” is a
more complete formulation. Yet whatever the specific
articulation, the test requires an objective inquiry into the four
corners of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.

Ariad Pharmaceuticals, Inc. v Eli Lilly & Com. 598 F.3d 1336, 1351 (Fed
Cir. 2010) (en banc)

Anticipation
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . .” In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571 (Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse
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Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337
(Fed.Cir. 2004).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of
a claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation
omitted).

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (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 pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Specification
1. The Specification describes utilizing a personalized voice
message for a preferred caller that reaches the called party’s voice mail and
otherwise utilizing a generic voice message (Spec. 4 and 11).
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Albal
2. Albal discloses that “the subscriber may instruct the
communication node to play a pre-recorded message or announcement or
disconnect the call.” ¶ ([0031]).
3. Albal further discloses that “[a]fter the communication node
verifies the call, the node provides a greeting to the user (i.e., ‘Hi, this is
your personal agent, Maya. Welcome Bob. How may I help you?’).”
¶ ([0048]).

V. ANALYSIS
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth in detail a reasoned conclusion of
unpatentability in the Examiner’s Answer. Therefore, we look to
Appellants’ Briefs to show error in the proffered reasoned conclusion.

The Common Claimed Features
Independent claim 1, recites, inter alia, “retrieving a personalized,
non generic [sic] voice message having a recorded voice of the called party
corresponding to the matched, stored calling party number information, for
playback as the messaging prompt to the matched calling party.”
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Independent claims 12, 18, and 29, with different wording, contain similar
limitations.

35 U.S.C. § 112 Rejection
With respect to claims 1-38, the Appellants contend that “the
personalized message has been defined as non generic [sic] in the claims.”
The Specification describes the personalized message and generic message
in such a way as to reasonably convey that one skilled in the art possession
the claimed invention as of the filing date (App. Br. 5).
We agree with the Appellants’ contention. In order to meet the
“written description” requirement, an Appellant does not have to utilize any
particular form of disclosure to describe the subject matter claimed, but “the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.” See In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989) (citation omitted). In other words, “the
applicant must . . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). Here, we find that the Specification describes a personalized
voice message and a generic voice message (FF 1). Clearly, the Appellants
do not need to use the particular word “non-generic” to distinguish a
“personalized” message from one that is generic. That is, a person of
ordinary skill in the art would have recognized that the personalized voice
message is tailored to a particular user and therefore would not be a generic
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voice message, such as “please leave a message.” Therefore, the
personalized voice message described in Appellants’ originally-filed
Specification would be a non-generic message. Accordingly, we conclude
that the written disclosure as originally filed reasonably conveys to the
artisan that the inventor had possession at the time of the invention, a
personalized non-generic voice message. We, thus, cannot sustain the
Examiner’s rejection under 35 U.S.C. § 112.

35 U.S.C. § 102(e) rejections
With respect to independent claim 1, Appellants contend that the
Examiner’s § 102(e) rejection is improper because Albal does not disclose
“retrieving a personalized, non generic voice message having a recorded
voice of the called party.” (Reply Br. 2). According to Appellants, Albal’s
pre-recorded message is not personalized to a particular calling party and the
personalized greeting message is also “not a recorded voice of a called party
as claimed, but a simulated voice produced by a machine.” (Id. at 3).
We agree with the Appellants’ contentions. We find that Albal
teaches that a pre-recorded message may be played according to the
subscriber’s instruction (FF 1). However, Albal does not specify the
particular type of this pre-recorded message. Nor does Albal specify who
makes this pre-recorded message. Furthermore, we find that it is the
communication node that provides a greeting—not the recorded voice of a
called party (FF 2). Thus, we do not find that the pre-recorded message is
inherently a personalized or “non-generic” message, let alone that the
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greeting generated by the communication node is a pre-recorded voice of a
called party as alleged by the Examiner (Ans. 11).
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of anticipation as
required for the invention as recited in claim 1 by Albal. The rejection of
dependent claims 2, 5, 9-11, and 35 contains the same deficiency.
Appellants, thus, have demonstrated error in the Examiner’s conclusion of
anticipation for the subject matter of claims 1-2, 5, 9-11, and 35.
The independent claims 12, 18, and 29 contain similar limitations to
those found in independent claim 1. Appellants present similar arguments as
set forth with respect to independent claim 1 in response to the rejections of
independent claims 12, 18, and 29 (App. Br. 5).
As we found above in our discussion with respect to independent
claim 1, we find that Appellants have demonstrated error in the Examiner’s
conclusion of anticipation for the subject matter of independent claims 12,
18, and 29. The rejection of dependent claims 13, 15, 19, 22, 26-28, 31, 34,
and 36-38 contains the same deficiency.
We, therefore, cannot sustain the rejection of claims 1, 2, 5, 9-13, 15,
18, 19, 22, 26-29, 31, and 34-38 under 35 U.S.C. § 102(e).

35 U.S.C. § 103(a) Rejection
With respect to claims 3, 4, 6-8, 14, 16, 17, 20, 21, 23-25, 30, and 32-
33, the rejection of these claims contains the same deficiencies as the
rejections of claims 1, 12, 18, and 29 under 35 U.S.C. § 102(e) discussed
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above. The Examiner has not identified how the cited references Ng and
Bobo remedy the noted deficiencies (Ans. 11-13). Therefore, we cannot
sustain the obviousness rejection of dependent claims 3, 4, 6-8, 14, 16, 17,
20, 21, 23-25, 30, 32, and 33.

VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that claims 1-38 fail to comply with the written description
requirement under 35 U.S.C. § 112, first paragraph.
We conclude that the Appellants have shown that the Examiner erred
in finding that Albal discloses “retrieving a personalized, non generic voice
message having a recorded voice of the called party corresponding to the
matched, stored calling party number information, for playback as the
messaging prompt to the matched calling party,” as recited in claim 1.

VII. DECISION
We reverse the written description rejection of claims 1-38 under
35 U.S.C. § 112.
We also reverse the anticipation rejection of claims 1, 2, 5, 9-13, 15,
18, 19, 22, 26-29, 31, and 34-38 under 35 U.S.C. § 102(e).
We further reverse the obviousness rejection of claims 3, 4, 6-8, 14,
16, 17, 20, 21, 23-25, 30, 32, and 33 under 35 U.S.C. § 103.

REVERSED
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erc

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