Ex Parte Gross et al

Board of Patent Appeals and Interferences

Sep 23, 2010

10843705 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN A. GROSS, THOMAS JOSEPH GALVIN,
and RUPIKA CHIB
_____________

Appeal 2010-005845
Application 10/843,705
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
non-final rejection of claims 30-53. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to a subscriber being
assigned a single telephone number which may be used by other parties to
send a fax, to leave a voicemail, or to page the subscriber (Spec. 6:6-14).
The subscriber may distribute personal identification numbers (PINs) to
appropriate parties to specify services available to those parties. For
example, a first PIN may be given to family members of a subscriber so that
they have access to a first set of services, whereas a second PIN may be
given to business associates of the subscriber so that they have access to a
second set of services. See Spec. 6:24–7:5.
Claim 30, reproduced below, is representative of the subject matter on
appeal:
30. A method for supporting telecommunication services, the
method comprising:
designating a telephone number for a subscriber for placing calls to a
platform, wherein the subscriber is a person;
assigning a plurality of passcodes to the subscriber; and
establishing a menu of service options for presentation to a caller
upon receipt of a call to the platform using the designated telephone number,
wherein the menu of service options is based on one of the passcodes
supplied by the caller, and the caller is not the subscriber,
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wherein different ones of the passcodes correspond to different ones
of the service options.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Brennan US 5,329,578 Jul. 12, 1994
Slusky US 5,440,620 Aug. 8, 1995
Gross US 6,931,116 B1 Aug. 16, 2005
The following rejections are before us for review:
1. The Examiner rejected claims 30, 36, and 37 under obviousness-
type double patenting over claims 13-17 of Gross in view of Brennan.
2. The Examiner rejected claims 30-34, 36-42, 44-50, 52, and 53
under 35 U.S.C. § 102(b) as anticipated by Brennan.
3. The Examiner rejected claims 35, 43, and 51 under 35 U.S.C.
§ 103(a) as unpatentable over Brennan in view of Slusky.

ISSUE
The pivotal issue is whether Brennan teaches the limitation of: “the
menu of service options is based on one of the passcodes supplied by the
caller” as recited in claim 30.

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ANALYSIS
Obviousness-Type Double Patenting Analysis
The Examiner rejected claims 30, 36, and 37 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 13-17 of Gross in view of Brennan. Appellants argue, inter alia,
Brennan does not teach that “the menu of service options is based on one of
the passcodes supplied by the caller” as recited in claim 30 (App. Br. 9).
Appellants explain that at best, Brennan’s TABLE 1.0, in column 5, teaches
that passwords entered to reach a family or to reach the boss are given a
“priority treatment,” but this priority treatment does not result in the
presentation of a “menu” of service options to the caller (App. Br. 9-10).
Initially, we agree with the Examiner (Ans. 12) that the passwords are
not to reach the family or reach the boss, but rather the passwords are
entered by the family or by the boss to reach the subscriber. This is evident
by Brennan’s teaching that if a caller enters a password, the caller will be
identified to the subscriber (col. 5, ll. 42-46). Thus, it is the caller (i.e.,
“FAMILY” or “BOSS”) that tries to reach the subscriber.
Nonetheless, we are persuaded by Appellants’ argument (App. Br. 9-
10) that Brennan does not teach a menu of service options based on one of
the passcodes. Brennan teaches that passwords provide callers special
treatment by being given a “priority status” (col. 5, ll. 54-59). We note that
Brennan’s TABLE 1.0 shows that when “FAMILY” calls and enters the
password 911911, they receive a special treatment of “priority” as a special
treatment. Brennan’s TABLE 1.0 also shows that when the “BOSS” calls
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and enters the password 8020, he or she receives a special treatment of
“priority” and an announcement. Note that while different passwords (i.e.,
911911 or 8020) correspond to different special treatments (i.e.,
“PRIORITY” status versus “PRIORITY” status and
“ANNOUNCEMENT”), that does not equate to the caller being presented
with different “menu options.” In other words, the boss is not presented
with the option to receive either priority status or an announcement. Rather,
the boss receives the special treatment of priority status and an
announcement, but does not receive menu options from which to select an
option (see Brennan’s TABLE 1.0).
We are also not persuaded by the Examiner’s reasoning (Ans. 12,
(citing Brennan col. 7, ll. 51-56)) that the priority treatments result in
different combinations of choices of messaging, paging, and routing being
presented to the caller (i.e., different menu options). Brennan teaches that
there are different treatments when a call could not be connected to the
subscriber (col. 7, ll. 51-53). Brennan further teaches that the options
include “Message,” “Pager,” “Operator,” and “Query” (col. 7, ll. 53-54).
Brennan states that the “Query” treatment results in the caller being asked
for his choice of 2 or more of the available treatments (col. 7, ll. 54-56). To
the extent that Brennan teaches that a priority caller receives a “Query” with
the options of either leaving a message or paging the subscriber (col. 7,
TABLE 4.0, third entry in the table) this query constitutes a menu of service
options, but this menu is not based on the password/passcode of the caller.
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Instead, the difference in the menu of service options is based on the
day and time of the day the call is received. Brennan teaches that if a
“priority” call is received on a weekday (i.e., Monday-Friday) at a time
corresponding to 9:00-17:00, the caller is directed to the “OPERATOR”
(TABLE 4.0, second entry). Brennan also teaches that if a “priority” call is
received on a weekday (i.e., Monday-Friday) at a time corresponding to
17:00-23:00, or at any time on the weekend, the caller is given the option to
either leave a message or page the subscriber (TABLE 4.0, third and fifth
entries).
Because Brennan contains no disclosure of different “treatment”
based on password or passcode entry, the “menu of service options” is based
on the time of the day and the day the call is received and is not based on the
passwords/passcodes. We are unable to discern whether the different
“PRIORITY” calls as presented in TABLE 4.0 correspond to a password of
a family member or the boss.
For the above reasons, we will reverse the Examiner’s obviousness-
type double patenting rejection of claim 30 and for similar reasons the
rejections of claims 36 and 37.

Anticipation Rejection Analysis
Because we find supra that Brennan does not teach a menu of service
options based on one of the passcodes supplied by the caller, we will reverse
the Examiner’s rejection of claims 30-34, 36-42, 44-50, 52, and 53 under 35
U.S.C. § 102(b) as anticipated by Brennan.
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Obviousness Rejection Analysis
Because we find supra that Brennan does not teach a menu of service
options based on one of the passcodes supplied by the caller, we will reverse
the Examiner’s rejection of claims 35, 43, and 51 under 35 U.S.C. § 103(a)
as unpatentable over Brennan in view of Slusky, as Slusky does not cure
Brennan’s deficiencies.

CONCLUSION
Brennan does not teach the limitation of: “the menu of service options
is based on one of the passcodes supplied by the caller” as recited in claim
30.
ORDER
The decision of the Examiner to reject claims 30-53 is reversed.

REVERSED

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