Ex Parte McConnell et al

Patent Trial and Appeal Board

Dec 17, 2015

12576652 (P.T.A.B. Dec. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/576,652 10/09/2009 Von K. McConnell 1811a 2577
28005 7590 12/17/2015
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
12/17/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VON K. McCONNELL and ARUN SANTHARAM
____________________

Appeal 2014-002295
Application 12/576,652
Technology Center 2400
____________________

Before WILLIAM M. FINK, JESSICA C. KAISER, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 The real party in interest is identified as Sprint Spectrum L.P. App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ invention relates to communication services in a
communication network using voice mail servers. Abstract.2
Claims 1, 11, and 16 are the independent claims on appeal. Claim 1 is
illustrative of Appellants’ invention and is reproduced below:
1. A method comprising:
receiving into a network entity a signaling message
indicative of a call attempt from a calling party to a called
party;
the network entity extracting from a data store an
outgoing media message playable by a voice mail server to the
calling party; and
the network entity (i) outputting the signaling message
for transmission over a network to the voice mail server and (ii)
making the outgoing media message available for the voice
mail server to play to the calling party in a session established
between the voice mail server and the calling party in response
to the signaling message.

App. Br. 13.
Claims 1, 3–6, 10, 16, and 20 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Wolfe (US 6,779,025 B1; August 17, 2004).
Claims 2, 11–15, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wolfe and Pelaez (US 2003/0147373; August 7,
2003).

2 Our decision refers to Appellants’ Appeal Brief filed September 9, 2013
(“App. Br.”); the Examiner’s Answer mailed October 2, 2013 (“Ans.”);
Appellants’ Reply Brief filed December 2, 2013 (“Reply Br.”); the Final
Office Action mailed March 13, 2013 (“Final Act.”); and the original
Specification filed October 9, 2009 (“Spec.”).
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Claims 7, 8, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolfe and Katseff (US 6,768,722 B1; July 27, 2004).
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolfe and IETF (“Message Bus for Local Coordination,”
IETF, May 30, 2001).

ANALYSIS
I. Claims 1–9 and 16–20
Issue: Does Wolfe disclose: “the network entity (i) outputting the
signaling message for transmission over a network to the voice mail server
and (ii) making the outgoing media message available for the voice mail
server to play to the calling party in a session established between the voice
mail server and the calling party in response to the signaling message,”
where “the signaling message” is “a signaling message indicative of a call
attempt from a calling party to a called party”?
In rejecting claim 1, the Examiner relies on Wolfe’s description of an
HTTP request received by the application server as disclosing the recited
“receiving a signaling message indicative of a call attempt from a calling
party to a called party.” Final Act. 2 (citing Wolfe, col. 8:30–42). The
Examiner finds Wolfe’s “application server generates an HTML page that
includes media content (i.e., audio message) . . . for playback of [the] remote
subscriber greeting” discloses the recited “(i) outputting the signaling
message for transmission . . . to the voice mail server” and “(ii) making the
outgoing media message available . . . to play . . . .” Id. at 3 (citing Wolfe,
col. 11:25–31); see also Ans. 19.
In disputing the Examiner’s findings, Appellants argue:
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[N]either of these disclosures of Wolfe amounts to the network
entity (application server) outputting the signaling message
(namely, the HTTP request that the network entity (application
server) received) for transmission over a network to the voice
mail server (proxy browser). . . . We should be careful here to
note the distinction between the HTML page that the network
entity (application server) sends to the voice mail server (proxy
browser) and the HTTP request that the network entity
(application server) received from the voice mail server (proxy
browser). Those are two separate concepts.

App. Br. 6; see also Reply Br. 4–5.
We are not persuaded by Appellants’ arguments. Essentially,
Appellants argue that, in column 11, a different message is sent from
the application server to the proxy server (i.e., voice mail server) and,
therefore, that message cannot disclose “the signaling message” sent
to the application server in column 8. We disagree. The Specification
states:
[I]t should be understood that sending or receipt of “a signaling
message” could equally mean sending or receipt of multiple
signaling messages. For instance, a sequence of signaling
messages together might have a given meaning and cause a
given effect that any one of the signaling messages alone might
not.

Spec. 13:6–9. For example, the Specification explains that a service agent
could receive a signaling message and “add the data into the signaling
message that it sends . . . to the application server.” Id. at 16:11–12, 21–22.
In other words, according to the Specification, as long as the signaling
messages “cause a given effect” (and are “indicative of a call attempt,” as
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the claim requires), “the signaling message” sent by the network entity does
not need to be the identical message received by the network entity.
We are persuaded the Examiner’s findings are consistent with the
foregoing claim interpretation. As an initial matter, we agree an “HTTP
message” discloses “a signaling message,” as the Examiner finds. Ans. 19–
20. Therefore, we also agree the HTTP request sent to the application server
in column 8 constitutes “receiving into a network entity a signaling
message.” Moreover, it is not disputed that this request, which occurs when
called party 18d1 is unavailable, is “indicative of a call attempt from a
calling party to a called party.” See Wolfe, 8:36–43. As the Examiner finds
(Final Act. 3), application server 66a, upon receiving the HTTP request,
generates an HTML page that includes the information for playback of the
remote subscriber’s greeting and forwards to proxy browser 62 for playback.
See id. at 11:25–37. Because it is indicative of a call attempt and
accomplishes the result of making the outgoing media message available at
the voice mail server, the HTML page in column 11 reads on “the signaling
message,” as the claim requires.
Because we are not persuaded the Examiner erred in finding Wolfe
discloses the limitations of independent claim 1, we sustain the Examiner’s
rejection of claim 1 as well as claim 2–9, for which Appellants do not
present separate patentability arguments. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 16, Appellants present substantially similar arguments.
App. Br. 9–10. Accordingly, we sustain the rejection of claim 16 as well as
dependent claims 17–20, not argued separately, for the foregoing reasons.

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II. Claims 10–15
In disputing the Examiner’s rejection of claim 10, Appellants argue
the Examiner errs in finding Wolfe discloses “the network entity
(application server) sending the signaling message to the called party and
then determining that the called party does not respond.” App. Br. 8.
According to Appellants, the relied upon “teaching of Wolfe relates to a
mobile switching center terminating the call,” which is not the network
entity. App. Br. 9.
On this record, we are persuaded by Appellants’ argument. For
purposes of claim 1, the Examiner relies on the description of the application
server as the “network entity” receiving a signaling message from the mobile
switching center. See Wolfe, 8:36–43; Ans. 19. However, for purposes of
claim 10, the Examiner relies on the mobile switching center as the network
entity for determining the called party does not respond. See Wolfe, 10:45–
50; Ans. 25–26. We disagree that network entity can be construed to include
both the mobile switching center and application server, for purposes of
claim 10, and be construed as the application server only to receive a
signaling message from the mobile switching center for purposes of claim 1.
Moreover, Wolfe discloses that the mobile switching center is separated
from the application server, with the proxy server (i.e., the recited voice mail
server) situated in between. See Wolfe, Fig. 2. Given these inconsistencies,
we do not sustain the Examiner’s rejection of dependent claim 10.
Independent claim 11, rejected over the combination of Wolfe and
Pelaez, contains a similar disputed limitation to that recited in claim 10.
Because the Examiner’s § 103 rejection does not cure the deficiency
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discussed above, we also do not sustain the rejection of claim 11 and
dependent claims 12–15.

DECISION
We affirm the Examiner’s final rejection of claims 1–9 and 16–20 and
reverse the Examiner’s final rejection of claims 10–15.
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-IN-PART

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