Ex Parte McCormack et al

Board of Patent Appeals and Interferences

Aug 15, 2012

09878874 (B.P.A.I. Aug. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TONY MCCORMACK, JOSEPH SMYTH,
and MICHAEL HARTMAN
____________________

Appeal 2011-003823
Application 09/878,874
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT, and JUSTIN
BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 10-11, 19-21, 25, and 27. We have jurisdiction under 35 U.S.C.
§ 6(b).1
We REVERSE and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
According to Appellants, the invention relates to a “method and
apparatus to establish a telephone call over a communications network at a
specified time using a web-based telephony application.” Spec. p. 1, ll. 5-7.

Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of establishing a telephone call over a
communications network between a call source and one of a
plurality of call destinations using a web based telephony
application hosted by a web server, said method comprising the
steps of:
(i) receiving at the web server a uniform resource
identifier (URI) comprising information about the plurality of
call destinations and time ranges associated with said plurality
of call destinations;
(ii) arranging the web based telephony application to
access the URI in response to a call event to compare a current
time with the associated time ranges to select an appropriate
one of the plurality of call destinations according to the time
comparison and to instruct a telephony apparatus in the

1 The Examiner finds that claims 8 and 28 contain allowable subject matter.
Final Rej. 2.
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communications system to establish said call to said selected
one of the plurality of call destinations.

Rejections
(1) Claims 1 and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Drozdzewicz (US Pub 2002/0091769 A1; July 11, 2002,
provisional filed January 11, 2001). Ans. 5-6.
(2) Claims 1 and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Jonsson (US 6,272,214 B1; August 7, 2001, filed November
24, 1997). Ans. 6-7.
(3) Claims 1 and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Doganata (US 6,798,753 B1; September 28, 2004, filed
October 14, 1999). Ans. 7-8.
(4) Claims 1-3, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Summers (US 6,876,734 B1; April 5, 2005, filed
February 29, 2000) and Linden (US 6,549,773 B1; April 15, 2003, filed
September 20, 1999). Ans. 9-12.
(5) Claims 4 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summers, Linden, and Higgins (US Pub 2001/0116505
A1; August 22, 2002, foreign filed February 19, 2001). Ans. 13-14.
(6) Claims 5, 25, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Summers, Linden, and Lippert (US 6,626,957 B1;
September 30, 2003, filed October 1, 1999). Ans. 14-16.
(7) Claims 6-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summers, Linden, and Voit (US 6,215,790 B1; April 10,
2001, filed March 11, 1997). Ans. 16-18.
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(8) Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summers, Linden, and Yiu (US Pub 2003/0181205 A1;
September 25, 2003, provisional filed January 25, 2001). Ans. 18.
(9) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summers, Linden, and Low (US 6,798,771 B1; September
28, 2004, PCT filed December 11, 1996). Ans. 19.

ISSUES
Appellants argue that none of the cited anticipating references
(Drozdzewicz, Jonsson, and Doganata) anticipate claim 1 because “none of
them relate to establishing a telephone call over a communications network
between a call source and one of a plurality of call destinations as required
by all of the claims.” App. Br. 6. Appellants further argue that none of the
cited anticipating references teach “receiving at a web server ‘a uniform
resource identifier (URI) comprising information about the plurality of call
destinations and time ranges associated with said plurality of call
destinations’” or “comparing ‘a current time with the associated time ranges
to select an appropriate one of the plurality of call destinations.’” App. Br. 7;
See also App. Br. 6, 8, and 9. Similarly, Appellants argue that the
combination of Summers and Linden does not render independent claim 1
obvious for the same reasons that Drozdzewicz, Jonsson, and Doganata do
not anticipate claim 1. App. Br. 9. These arguments apply equally to
independent claim 11 as similar elements are present in claim 11. Therefore,
the issues before the Board are:
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(1) Did the Examiner err in finding that each of Drozdzewicz,
Jonsson, and Doganata anticipates claims 1 and 11, including disclosing
receiving a plurality of call destinations and time ranges associated with
those call destinations and comparing a current time with associated time
ranges to select a call destination?
(4) Did the Examiner err in finding that the combination of Summers
and Linden teaches the limitations of claims 1 and 11, including comparing a
current time with associated time ranges to select a call destination?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments and Appellants’ arguments in
the Reply Brief.
The Examiner concluded that each of three different references—
Drozdzewicz, Jonsson, and Doganata—anticipates independent claim 1. The
Examiner has also concluded that the combination of Summers and Linden
renders claim 1 obvious. For each rejection, with respect to the limitation of
claim 1 that recites “compare a current time with the associated time ranges
to select an appropriate one of the plurality of call destinations according to
the time comparison and to instruct a telephony apparatus in the
communications system to establish said call to said selected one of the
plurality of call destinations,” the Examiner points to a figure or figures from
each reference and certain elements therein, as well as a particular portion of
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the respective references’ specification and states that Appellants “ignored
the usage” of those elements. Ans. 34-35, 40, 45-46, and 50-51.
Appellants respond by asserting that none of the references teach or
disclose a comparison of the current time with times in the received URI,
then using the comparison to select a number with which to establish a
connection. Reply Br. 4-5. In reviewing the references and figures, we do
not find any disclosure in the cited portions of Drozdzewicz, Jonsson,
Doganata, Summers, or Linden related to comparing the current time with
any other time and using that comparison to select a number with which the
system establishes a connection. In fact, of all the identified portions of
those references, the only disclosure that we see relating to a conferencing
system’s use of time is in Figure 5 of Summers. However, Figure 5 of
Summers merely shows the ability to enter standard conferencing options,
including a start time and an end time (or duration) for a conference.
Summers, Fig. 5. See also Summers, col. 9, ll. 21-40.
We have thoroughly reviewed the Examiner’s rejections and the
Examiner’s responses to Appellants’ arguments in an effort to understand
how the Examiner is applying each reference to teach or disclose the
claimed limitation: “compare a current time with the associated time ranges
to select an appropriate one of the plurality of call destinations according to
the time comparison and to instruct a telephony apparatus in the
communications system to establish said call to said selected one of the
plurality of call destinations.” However, even when viewing the claims in
light of the broadest reasonable interpretation, we do not see, nor has the
Examiner sufficiently shown, how the cited portions of Drozdzewicz,
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Jonsson, Doganata, Summers, or Linden teach or disclose the
aforementioned limitation. While a prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production, the
rejection may not be so uninformative as to prevent Appellants from
recognizing and seeking to counter the grounds for rejection. In re Jung, 637
F.3d 1356, 1362-63 (Fed. Cir. 2011).
With respect to the Examiner’s rejection under Doganata, we find that
the portions upon which the Examiner relies do not clearly describe the
invention as recited. However, other portions of Doganata, which include
further explanation of elements disclosed in the cited portions, support a
rejection of claims 1 and 11; thus, we enter new grounds of rejection as set
forth below.
Because we agree with at least one of the arguments advanced by
Appellants with respect to the rejections based on Drozdzewicz, Jonsson,
Doganata, and the combination of Summers and Linden, we need not reach
the merits of Appellants’ other arguments. The same analysis applies to
independent claim 11 because claim 11 includes a similar limitation. The
same analysis also applies to the rejection of dependent claims 2-7, 10, 19-
21, 25, and 27 because each ultimately depends from one of independent
claims 1 and 11, and therefore includes the same or a similar limitation.

CONCLUSION
Based on the analysis above, we conclude that:
(1) the Examiner erred in rejecting claims 1 and 11 under 35 U.S.C.
§ 102(e) as being anticipated by Drozdzewicz;
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(2) the Examiner erred in rejecting claims 1 and 11 under 35 U.S.C.
§ 102(e) as being anticipated by Jonsson;
(3) the Examiner erred in rejecting claims 1 and 11 under 35 U.S.C.
§ 102(e) as being anticipated by Doganata; and
(4) the Examiner erred in rejecting claims 1-7, 10, 11, 19-21, 25, and
27 as unpatentable under 35 U.S.C. § 103(a) over Summers and Linden in
various combinations with other references.

NEW GROUNDS OF REJECTION FOR CLAIMS 1-7, 10, 11, 19-21, 25,
AND 27 UNDER 37 C.F.R. § 41.50(b)

Rejections:
We enter a new ground of rejection of claims 1 and 11 under
35 U.S.C. § 102 (e) as being anticipated by Doganata.
With respect to Doganata, the Examiner has pointed to a portion of
the reference that discloses establishing a dial-out conference. Ans. 45. We
also note Doganata discloses that, when the system is used to establish a
dial-out conference (as opposed to a dial-in conference), the “user inputs the
identities of the participants, and/or their telephone numbers along with the
other conference information” (web server receives information regarding a
plurality of call destinations) and the “conference information, includ[es]
start/end time” (time ranges) associated with the conference and its
participants. Doganata col. 6 ll. 3-6; Doganata Abstract. This “dial-out”
conference therefore establishes a call between a call source and one (or
more, depending on how many numbers are provided for that conference)
call destination. Doganata col. 6 ll. 31-52. Doganata also includes a process
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that checks to see when it should initiate the conference (compares current
time to conference time) by calling the participants at the numbers provided.
Doganata col. 6 ll. 20-30. Therefore, in light of the additional findings, and
giving the claims the broadest reasonable interpretation in light of the
Specification, we find Doganata discloses all of the limitations as claimed in
independent claims 1 and 11.

We enter a new ground of rejection of claims 2, 3, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Doganata and Summers.
Claims 2 and 3 are dependent upon claim 1 and claim 19 is dependent
upon claim 11. We find that Doganata teaches or suggests the limitations set
forth in claims 1 and 11 for the reasons discussed supra. Additionally, we
find Summers teaches or suggests the additional recited limitations for the
reasons set forth by the Examiner. Ans. 10-12.

We enter a new ground of rejection of claims 4 and 21 under 35
U.S.C. § 103(a) as being unpatentable over Doganata, Summers, and
Higgins.
Claims 4 and 21 are dependent upon claims 1 and 11, respectively.
We find that Doganata teaches or suggests the limitations set forth in claims
1 and 11 for the reasons discussed supra. Additionally, we find the
combination of Summers and Higgins teaches or suggests the additional
recited limitations for the reasons set forth by the Examiner. Ans. 13-14.

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We enter a new ground of rejection of claims 5, 25, and 27 under 35
U.S.C. § 103(a) as being unpatentable over Doganata, Summers, and
Lippert.
Claim 5 is dependent upon claim 1 and claims 25 and 27 are
dependent upon claim 11. We find that Doganata teaches or suggests the
limitations set forth in claims 1 and 11 for the reasons discussed supra. We
also find the combination of Summers and Lippert teaches or suggests the
additional recited limitations of claims 5, 25, and 27 for the reasons set forth
by the Examiner (Ans. 14-16), notwithstanding the Examiner’s typo in
referencing “Higgins-Sun” instead of “Lippert-Microsoft.”

We enter a new ground of rejection of claims 6 and 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Doganata, Summers, and Voit.
Claims 6 and 7 are dependent upon claim 1. We find that Doganata
teaches or suggests the limitations set forth in claim 1 for the reasons
discussed supra. We also find the combination of Summers and Voit teaches
or suggests the additional recited limitations for the reasons set forth by the
Examiner. Ans. 16-18.

We enter a new ground of rejection for claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Doganata, Summers, and Yiu.
Claim 10 is dependent upon claim 1. We find Doganata teaches or
suggests the limitations set forth in claim 1 for the reasons discussed supra.
We also find the combination of Summers and Yiu teaches or suggests the
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additional recited limitations for the reasons set forth by the Examiner. Ans.
18.

We enter a new ground of rejection for claim 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Doganata, Summers, and Low.
Claim 20 is dependent upon claim 11. We find Doganata teaches or
suggests the limitations set forth in claim 1 for the reasons discussed supra.
We also find the combination of Summers and Low teaches or suggests the
additional recited limitations for the reasons set forth by the Examiner. Ans.
19.

DECISION
The Examiner’s rejection of claims 1-7, 10-11, 19-21, 25, and 27 is
reversed.
Although the Examiner’s rejections have all been reversed, this
decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner.…
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…

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).

REVERSED
37 C.F.R. § 41.50(b)

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