Ex Parte South et al

Patent Trial and Appeal Board

Aug 2, 2016

12841290 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,290 07/22/2010
96355 7590 08/04/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Michael South
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5524-14-JCE 1745
EXAMINER
CHU, WUTCHUNG
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SOUTH and JOHN ERICKSON
Appeal2015-003986 1
Application 12/841,290
Technology Center 2400
Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 "[C]opending Application Nos. 12/841,250, 12/841,258, 12/841,285,
12/856,140, 12/822,970, and 13/244,898." App. Br. 4.
Appeal2015-003986
Application 12/841,290
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21, 23, and 24, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Exemplary Claims
Exemplary claims 1 and 11 under appeal read as follows (emphasis
added):
1. A method of processing communication requests based on
handling instructions in an Internet Protocol (IP) environment,
compnsmg:
receiving an outgoing communication request, for a
communication directed to one or more members outside of a user
group, that originates from a communications device of a first
member of the user group;
obtaining predetermined communication handling instructions,
that are registered Jvith an IP telephony seri'ice pro1lider, for the user
group based on an identifier associated with the user group, wherein
the predetermined communication handling instructions indicate how
outgoing communications that originate from members of the user
group are handled; and
attempting to transmit the communication request, for the
communication directed to the one or more members outside of the
user group, based on the obtained predetermined communication
handling instructions.
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Application 12/841,290
11. The method of claim 1, wherein the outgoing communication
request is a request to deliver an SMS message that responds to an
SMS message received by the first member of the group, wherein the
predetermined communication handling instructions specify whether
other members of the group will receive a copy of the reply SMS
message, and wherein the attempting step comprises attempting to
deliver the SMS message based on the predetermined communication
handling instructions.
References and Rejections on Appeal
1. The Examiner rejected claims 1, 7, 20, 21, 23, and 24
provisionally on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1, 9, 19, 20, 22, and 23 of
copending U.S. Application No. 12/856,140 in combination with
Neelakantan et al. (US 2009/0061825 Al; Mar. 5, 2009). 2
2. The Examiner rejected claim 1-15, 20, 21, and 23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Gagne et
al. (US 2007/0286101 Al; Dec. 13, 2007) and Neelakantan. 3
3. The Examiner rejected claims 16 and 24 under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Gagne, N eelakantan,
and Tofighbakhsh et al. (US 2011/0142221 Al; June 16, 2011). The
Examiner rejected claims 1 7-19 under 3 5 U.S. C. § 1 0 3 (a) as being
2 Arguments are not presented for this provisional rejection. Therefore, we
affirm the Examiner's rejection proforma. Except for our ultimate decision,
this rejection of these claims is not discussed further herein.
3 Separate patentability is not argued for claims 1-10, 14, 15, 20, and 21.
Except for our ultimate decision, the Examiner's rejection of these claims is
not discussed further herein.
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Application 12/841,290
unpatentable over the combination of Gagne, Neelakantan, and Watler et al.
(US 2002/0022472 Al). 4
Appellants ' Contentions
1. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Neither Gagne nor Neelakantan disclose or suggest an IP
telephony service provider registering handling instructions that
indicate how outgoing communications that originate from
members of a user group are handled. Consequently, Gagne and
N eelakantan would thus not attempt to transmit a
communication request to members outside the user group
based on the registered and obtained handling instructions.
App. Br. 9.
2. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Neelakantan is simply adding members to a message group by
sending an invitation message to non-members. Neelakantan is
not obtaining predetermined handling instructions (let alone
instructions registered by an IP telephony service provider) that
determine how messages from members of a user group are to
be distributed.
App. Br. 13.
4 In addressing these § 103 rejections, Appellants merely reference the
arguments directed to the underlying § 103 rejection of Claim 1. Without
more, the patentability of these claims rejected under§ 103(a) are not
separately argued from that of claim 1 rejected on a separate basis under
§ 103. Except for our ultimate decision, the rejections of these claims are
not discussed further herein.
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Application 12/841,290
3. Appellants contend the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
Gagne does not provide any disclosure of instructions that
specify whether other members of the conference group will
receive a copy of a reply message . . . . While Neelakantan
sends messages to different members of a messaging group,
Neelakantan does not provide any disclosure of determining
which members of a group are copied on a reply message.
App. Br. 14--15.
4. Appellants contend the Examiner erred in rejecting claim 23
under 35 U.S.C. § 103(a) because:
Gagne does not describe an IP telephony service provider that
obtains handling instructions from a database in the IP
telephony service provider system.
App. Br. 16.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 11, and 23 as being
obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. As
to claims 1 and 23, we disagree with Appellants' conclusions. Except as
noted below, we adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief. As to claims 1 and 23, we concur with the
conclusions reached by the Examiner. We highlight the following points.
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As to Appellants' above contentions 1 and 4, we disagree for the
reasons set forth by the Examiner. Contrary to Appellants' argument that
"Gagne fails to describe an IP telephony service provider per se" (App. Br.
11 ), Gagne teaches "voice over IP" (i.e., an IP telephony service provider).
Gagne i-f 40. Further, the Examiner correctly finds that Gagne teaches
"attempting to transmit the communication request based on the obtained
predetermined communication handling instructions" (Final Act. 9). In
particular, Gagne teaches:
Stored with the member identifiers is the communication
handle of each member 105 of the discussion group 103. Thus
the application controller 110 is able to transmit the message
relaying the conference request to each member by using the
communication handles and by formatting the message to be
compatible to each communication handle of the group
members 105. For example, if member 105a is part of the
discussion group 103, the application controller 110 is able to
determine that member 105a employs a laptop computer as a
communication device 107 to participate in conferences. This
knowledge is gained by accessing the group information in
the database 130. The application controller 110 may then
operate to format the conference request message in an email
message, which is a format compatible with the laptop
computer of member 105a.
Gagne i-f 45; emphasis added.
Further, Appellants' arguments are premised on a requirement that the
Examiner must show Gagne and Neelakantan disclose (i.e., teach) or suggest
every claim limitation. We disagree. Appellants overlook that the Court
specifically repudiated that such a "teaching or suggestion" is required to
show obviousness KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
("We begin by rejecting the rigid approach of the Court of Appeals.").
Rather, the requirement is only that the Examiner show "the subject matter
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as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains."
KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418
("[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ."). We conclude that the Examiner articulates just such a showing
in the rejection from which this appeal is taken. Final Act. 8-10.
Additionally, Appellants have not presented evidence sufficient to
show that combining the prior art was "uniquely challenging or difficult for
one of ordinary skill in the art" or "represented an unobvious step over the
prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
As to Appellants' above contention 2, we disagree. Appellants argue
that Neelakantan does not teach or suggest "obtaining communication
handling instructions that indicate how communications from group
members are to be handled." App. Br. 13. However, Examiner did not cite
Neelakantan for the limitation. Rather, the Examiner cited Gagne. Final
Act. 8-9. We conclude that Appellants' argument ignores the actual
reasoning of the Examiner's rejections. Instead, Appellants attack the
N eelakantan reference singly for lacking a teaching that the Examiner relied
on a combination of references to show. It is well established that one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
The effect of Appellants' argument is to raise and then knock down a straw
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man rejection of claim 1 that was never made by the Examiner in that the
Examiner did not rely solely on Neelakantan as argued. In other words,
Appellants argue Examiner findings that were never made. This form of
argument is inherently unpersuasive to show Examiner error. Our reviewing
court requires that references must be read, not in isolation, but for what they
fairly teach in combination with the prior art as a whole. Merck, 800 F .2d at
1097.
As to Appellants' above contention 3 covering claims 11-13, we
agree. We conclude, consistent with Appellants' argument, there is
insufficient articulated reasoning to support the Examiner's findings that
Neelakantan teaches, at paragraphs 24--27, "a request to deliver an SMS
message that responds to an SMS message received by the first member of
the group." Final Act. 17.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-10, 14--21, 23,
and 24 as being unpatentable under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 11-13 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 11-13 have not been shown to be unpatentable.
(4) Claims 1-7, 9-15, 17-20, and 22-24 are not patentable.
DECISION
The Examiner's rejections of claims 1-10, 14--21, 23, and 24 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
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The Examiner's rejection of claims 11-13 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
The Examiner's provisional rejection of claims 1, 7, 20, 21, 23, and
24 on the ground of nonstatutory obviousness-type double patenting is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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