Ex Parte Samayamantry

Patent Trial and Appeal Board

Nov 26, 2013

11065852 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MALLIKARJUNA SAMAYAMANTRY
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Appeal 2011-009967
Application 11/065,852
Technology Center 2400
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–15, 17–20, and 31. We have jurisdiction under
35 U.S.C. § 6(b). Claim 16 is canceled. Appellant does not appeal the
rejections of claims 21–30.1 App. Br. 1. The Examiner withdrew a
35 U.S.C. § 101 rejection of claims 14 and 19. Ans. 14. An oral hearing
was conducted on this appeal on October 22, 2013.
We affirm-in-part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
Illustrative Claim
Appellant’s invention relates to routing a communications link to a
proper destination. Abstract.
Claims 1 and 11, reproduced below with the disputed limitations
italicized, are illustrative of the claimed subject matter:
1. A method for routing communication links in a
communications system to a respective correct destination
comprising said communications system:
connecting a communication link to a communications
device at a first destination;
requesting a response from the communications device
indicating whether the first destination is correct, said
communications system requesting said response responsive to
connection to said communications device;
validating the response from the communication device,
validation indicating connection to the correct destination; and

1 Following our decision, the Examiner should cancel the non-appealed
pending claims 21–30. See Ex parte Ghuman, 88 USPQ2d 1478 (BPAI
2008); see also Manual of Patent Examining Procedure (MPEP) § 1215.03,
Rev. 8, July 2010.
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otherwise disconnecting the communication link to the
communication device if the response fail to validate.

11. A server for connecting a telephone call to an individual,
comprising:
a connecting module connecting telephone calls to first
communications device at a respective first phone number
associated with a particular individual;
a requesting module requesting a response from the first
communication device responsive to connection, the response
indicating whether the particular individual is present at the first
communications device;
a validating module validating the response from the first
communications device;
a disconnecting module disconnecting a telephone call
from the first communications device when the response does
not validate.
Rejections
The Examiner made the following rejections:
Claims 11–13, 15, 17, 18, 20, and 31 under 35 U.S.C. § 101 (Ans.
3-5);
Claims 1, 2, 5–12, 15, 17–20, and 31 under 35 U.S.C. § 102(b) as
anticipated by Kung (US 6,252,952) (Ans. 6-11); and
Claims 3, 4, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over
Kung and Florkey (US 7,154,999) (Ans. 12-14).

ISSUES
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (“App. Br.” filed Jan. 26, 2011) and Reply
Brief (“Reply Br.” filed May 27, 2011). We refer to the Briefs and the
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Answer (“Ans.” mailed Mar. 29, 2011) for the respective positions of
Appellant and the Examiner.
Appellant’s arguments raise the following dispositive issues:
1) Whether claims 11–13, 15, 17, 18, 20, and 31 recite patent
eligible subject matter; and
2) Whether Kung describes “requesting a response from [a]
communications device indicating whether [a] first destination is correct”
and “validating [a] response from the communication device, validation
indicating connection to the correct destination,” as recited in claim 1 and
similarly recited in claim 11.
ANALYSIS
35 U.S.C. § 101 Rejection of Claims 11–13, 15, 17, 18, 20, and 31
The Examiner finds that claims 11–13, 15, 17, 18, 20, and 31 are
ineligible for patent as being directed to software per se. Ans. 3–5, 14–16.
Appellant argues that because these claims recite a “server,” they clearly are
directed to a computer, which is a machine, and thus, directed to statutory
subject matter. App. Br. 8; Reply Br. 1–2. Appellant also argues that these
claims are at least sufficiently tied to a machine so as to impart patent
eligibility because they, for example, connect calls to communication
devices and validate and/or disconnect calls (claim 12), provide telephone
calls to members of a telephone conference (claim 13), provide the tangible
result of providing a telephone call to an active member (claim 15), provide
a response in a particular format (claims 17 and 18), and transmit audio
segments (claims 20 and 31). App. Br. 10–11. Appellant argues further that
paragraph 39 of Appellant’s Specification, which recites in part that “[t]he
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systems and methods may also be incorporated in software used with a
computer,” ties the claims to a machine. Id. at 9–10.
We are not persuaded by Appellant’s arguments that the Examiner’s
rejection is erroneous. “Abstract software code is an idea without physical
embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449
(2007). A claim that recites no more than software, logic, or a data structure
(i.e., an abstraction) does not fall within any statutory category. See In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). A reasonable
interpretation of claims 11–13, 15, 17, 18, 20, and 31 consistent with
Appellant’s Specification is that the claims recite no more than software per
se.
We do not find that the nominal recitation of “server” in the
preambles and otherwise sufficiently limits any of claims 11–13, 15, 17, 18,
20, and 31 such that hardware is required. See C.R. Bard, Inc. v. M3 Sys.,
Inc., 157 F.3d 1340, 1350 (Fed. Cir. 1998) (“[A] preamble usually does not
limit the scope of the claim unless the preamble provides antecedents for
ensuing claim terms and limits the claim accordingly.”).
If . . . the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). “Where . . . the
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effect of the words [in the preamble] is at best ambiguous . . . a compelling
reason must exist before the language can be given weight.” Arshal v.
United States, 621 F.2d 421, 431 (Ct. Cl. 1980) (citing In re de Castelet, 562
F.2d 1236, 1244 n.6 (CCPA 1977)). Here, the term “server” appears
primarily in the preamble of the claims. References to “server” in the bodies
of the claims do not structurally limit the term. See, e.g., claim 15 (“and the
server is providing the telephone call to an active member”). Because the
language in the body of the claims, standing alone, is clear and
unambiguous, there is no compelling reason to give the term “server”
patentable weight.
Even if, however, we were compelled to give the term “server”
patentable weight in construing the claims, Appellant has not presented
persuasive argument or evidence that the Examiner erred in finding that the
server could be software. The Examiner provides a dictionary definition of
server (Ans. 15 (“[T]he software component on one device that provides
services for use by clients on the same or another device.” (citing The
Authoritative Dictionary of IEEE Standards, 7th edition) (emphasis and
internal quotation marks omitted))), that is consistent with Appellant’s
Specification (discussed infra) and demonstrates that at least one reasonable
interpretation of “server” includes purely software.
We do not find that Appellant’s Specification, which states, for
example, the “systems and methods may also be incorporated in software
used with a computer” (Spec. ¶ 39) requires a construction of the claims that
includes more than software. Appellant does not point us to evidence that
the claimed modules are or incorporate hardware; the Specification’s
recitation of “software used with a computer” does not require a construction
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that includes hardware; and the Specification is phrased so as to be
exemplary, and thus, non-limiting. Id. (“may also be”) (emphasis added).
We also do not find that recitations of devices in the claims (see, e.g.,
claims 11 and 12 connecting calls to first and second “communication
devices”) require those devices within the structural scope of the claims such
that the Examiner’s conclusion that the claims are directed to non-statutory
subject matter is clearly erroneous. The claims can be interpreted
reasonably to recite only software interacting with devices, which does not
alone render the claimed invention patent eligible. Warmerdam, 33 F.3d at
1361.
Accordingly, on the record before us, we do not find error in the
Examiner’s rejection of claims 11–13, 15, 17, 18, 20, and 31 under
35 U.S.C. § 101 as being directed to non-statutory subject matter, software
per se.

35 U.S.C. § 102 Rejection of Claims 1 and 11
The Examiner finds that Kung describes “validating the response from
the communication device, validation indicating connection to the correct
destination.” Ans. 7 (citing Kung col. 20, ll. 28–55; col. 14, ll. 28–58; col.
3, ll. 20–33; col. 4, l. 50–col. 5, l. 28; and col. 25, l. 50–col. 28, l. 9).
Kung describes routing calls in a broadband network, including
internet protocol (IP) and public switched telephone network (PSTN)
elements. See, generally, Kung, col. 3, ll. 21–33. In particular, Kung
describes a signaling gateway sending an ISUP ANM (Answered) message
to a call manager indicating that a called party has answered, and the call
manager sending a call start message to an accounting gateway to be used
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for billing purposes. Id. at col. 27, ll. 13–21. Kung also describes a user
gaining access to a display to thereby receive a voicemail and/or multimedia
message, which may include a password-based user verification process. Id.
at col. 20, ll. 28–55.
The Examiner further relies on Kung, Figure 5, and the associated
description (col. 5, l. 50–col. 28, l. 9) as evidence that, to one skilled in the
art, Kung describes “establishing a valid connection . . . such validation
indicating connection to the correct destination and response from a
communication device.” Ans. 18–24.
Appellant argues that “[t]here is no showing of any validation of a
correct destination by merely causing a connection to occur as taught in
Kung.” Reply Br. 3. We agree.
On the record before us, we agree with Appellant: Kung does not
describe “validating the response from the communication device, validation
indicating connection to the correct destination” as recited in claim 1. The
Examiner has not presented persuasive evidence that Kung’s general
description of causing a connection to occur describes validation of
connection to a correct destination, much less doing so as validating the
response from the communication device. We do not, therefore, sustain the
Examiner’s rejection of claim 1. Our decision on this issue being
dispositive, we do not reach Appellant’s additional arguments. App. Br. 13,
15–19.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of claim 1, nor do we sustain the Examiner’s rejection of claim 11,
which recites “a validating module validating the response from the first
communications device.” We also do not sustain the Examiner’s 35 U.S.C.
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§ 102(b) rejection of claims 2 and 5–10, which depend from claim 1, and
claims 12, 15, 17–20, and 31, which depend from claim 11. We also do not
sustain the Examiner’s 35 U.S.C. § 103 rejection of claims 3, 4, 13, and 14.

CONCLUSIONS
On the record before us, we conclude that because the Examiner has
not erred in finding that claims 11–13, 15, 17, 18, 20, and 31 recite patent
ineligible subject matter, we sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 101. Further, on the record before us, we conclude that
because the Examiner erred in finding that Kung describes “validating [a]
response from the communication device, validation indicating connection
to the correct destination,” we do not sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b).

NEW GROUND OF REJECTION FOR CLAIMS 14 AND 19
For the reasons discussed above, we find that claims 14 and 19 do not
sufficiently limit the scope of the claims from which they depend (claims 13
and 11, respectively) such that claims 14 and 19 require more than software
per se. Although claims 14 and 19 recite specific communication devices,
the recited devices are not structurally encompassed within the scope of the
claims. Instead, the recited modules exist in a functional relationship with
the devices, but this does not require a construction of claims 14 and 19 that
includes more than software per se. Accordingly, we enter a new ground of
rejection for claims 14 and 19 as unpatentable under 35 U.S.C. § 101
because they are directed to non-statutory subject matter, software per se.
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DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 101 rejection of
claims 11–13, 15, 17, 18, 20, and 31 is affirmed, the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 1, 2, 5–12, 15, 17–20, and 31 is reversed, the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 3, 4, 13, and 14 is
reversed, and a new ground of rejection is entered under 35 U.S.C. § 101 for
claims 14 and 19.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”

TIME PERIOD
37 C.F.R. § 41.50(b) also provides that Appellant, 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. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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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
37 C.F.R. § 41.50(b)

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