Ex Parte Whitten et al

Patent Trial and Appeal Board

Aug 31, 2016

13171342 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/171,342 06/28/2011 Robert Clark Whitten
124538 7590 09/02/2016
Cox Communications, Inc,
c/o Next IP Law Group LLP
Two Ravinia
Suite 500
Atlanta, GA 30346
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.
33020-RA3/10212-US 1 5380
EXAMINER
SMITH, CREIGHTON H
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
bgunter@nextiplaw.com
bbalser@nextiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CLARK WHITTEN and BRANDON HALL GOODE
Appeal2014-007033
Application 13/171,342
Technology Center 2600
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-9 and 11-20. (Final Act. l;
App. Br. 1.) 1 The Examiner indicates claim 10 includes allowable subject
matter. (Final Act. 1, 5---6.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants' Specification ("Spec."), filed June 28, 2011;
Appeal Brief ("App. Br.") filed Feb 13, 2014; and Reply Brief ("Reply Br.")
filed June 4, 2014. We also refer to the Examiner's Answer ("Ans.") mailed
Apr. 4, 2014, and Final Office Action (Final Rejection) ("Final Act.")
mailed Sept. 13, 2013.
Appeal2014-007033
Application 13/171,342
Appellants ; Invention
The invention concerns apparatuses and methods for third-party call
control in a voice communication network. In one embodiment, the method
communicates content to the calling party's communication device by
presenting content utilizing (through) a website during connection of a call
to the receiving (called) party's communication device. (Spec. i-fi-f l, 4, and
6-7; Abstract.)
Representative Claim
Independent claim 1, reproduced below with and the key disputed
limitations emphasized, further illustrates the invention:
1. A method comprising:
receiving input indicating a calling party's desire to
establish a communication session with a called party between a
calling party communication device and a called party
communication device;
establishing a call with the calling party communication
device;
initiating a call to the called party communication device;
communicating content to the calling party
communication device by presentation of the content through a
website while waiting on an answer of the call to the called party
communication device; and
connecting the call with the calling party communication
device and the call to the called party communication device after
answer of the call to the called party communication device.
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Application 13/171,342
Rejections on Appeal
1. The Examiner rejects claims 1-3, 11, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Ho (US 2009/0182616 Al, pub. July 16,
2009) and Cazanas (US 2011/0028128 Al, pub. Feb. 3, 2011).
2. The Examiner rejects claims 4, 5, and 7-9 under 35 U.S.C.
§ 103(a) as being unpatentable over Ho, Cazanas, and Stifelman (US
2012/0076290 Al, pub. Mar. 29, 2012 (filed Aug. 30, 2011 (claiming
benefit of US 12/563,946, filed Sept. 21, 2009 and US 11/274,945, filed
Nov. 15, 2005))).
3. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Ho, Cazanas, and Chatterjee (US 8,019,052 B2, issued
Sept. 13, 2011 (filed Aug. 31, 2007)).
4. Claim 9 is rejected under 35 U.S.C. 103(a) as being
unpatentable over Ho, Cazanas, and Vishwanathan (US 200710173236; pub.
July 26, 2007).
5. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Ho, Cazanas, and Batni (US 2006/0182247 Al,
pub. Aug. 17, 2006).
6. The Examiner rejects claim 13 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Ho, Cazanas, and Mani (US 2009/0214008 Al,
pub. Aug. 27, 2009).
7. The Examiner rejects claims 12, 15, 16, 18, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Ho, Cazanas, and Jiang (US
2007 /0030338 Al, Feb. 8, 2007).
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Appeal2014-007033
Application 13/171,342
ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding that Ho and Cazanas collectively
would have taught or suggested "communicating content to the calling party
communication device by presentation of the content through a website
while waiting on an answer of the call to the called party communication
device" (claim 1) within the meaning of Appellants' claim 1 and the
commensurate limitations of claims 11 and 17?
ANALYSIS
Appellants make essentially the same arguments with respect to
claims 1-9 (App. Br. 5-8), claims 11-16 (App. Br. 9-11), and claims 17-20
(App. Br. 11-14). Accordingly, we select independent claim 1 as
representative of Appellants' arguments and grouping with respect to claims
1-9 and 11-20. 37 C.F.R. § 41.37(c)(l)(iv).
We adopt as our own ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2-3; see
Ans. 2-3), and (2) the reasons set forth by the Examiner in the Examiner's
Answer (Ans. 7-9) in response to Appellants' Appeal Brief. We concur
with the findings and conclusions reached by the Examiner, and we provide
the following for emphasis.
Appellants contend that Ho and Cazanas do not teach the disputed
features of representative claim 1, namely, "communicating content to the
calling party communication device by presentation of the content through a
website while waiting on an answer of the call to the called party
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Application 13/171,342
communication device" (claim 1) (See App. Br. 6-8; Reply Br. 2-5.)
Specifically, Appellants contend that "the instant claim involves the playing
of the content through a website accessible on the phone during the call"
(App. Br. 7), that the combination of Ho and Cazanas "results in a purchase
of a ringback tone through the internet by a calling party and then playing a
ringback tone during a call" (App. Br. 7-8), and "that this fails to disclose or
make obvious playing the ringback tone through a website during the call"
(App. Br. 8).
We find Appellants' contentions unpersuasive of Examiner error. As
an initial matter, we give claim language its "broadest reasonable
interpretation consistent with the [S]pecification" in accordance with our
mandate that "claim language should be read in light of the [S]pecification
as it would be interpreted by one of ordinary skill in the art." In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and
internal quotation marks omitted). We broadly but reasonably construe
"through" as "by means of." (See Webster's New World College
Dictionary, 4th Ed. (1999), available at httn://www.yourdictionarr.com/).
As described in Appellants' Specification (see Spec. i-fi-121, 42, 52) a
website provides "services to and interaction with" (i-f 21) or "content
to" (i-f 52) the calling party device while waiting for the called party to
answer a call. Nothing in Appellants' Specification limits presentation of
content through a website to "playing" of the content or ring back tone
through a website accessible during the call, as asserted by Appellants
(supra). Appellants claim merely requires that content be provided by
means of a website during a call. Thus, Appellants' arguments are not
commensurate with the scope of the limitations recited in claim 1.
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Appeal2014-007033
Application 13/171,342
As found by the Examiner (Final Act. 2-3; Ans. 7-9), Ho describes
advertisements as ringback tones presented to a caller, including a cell phone
user, during a call. (Ho i-fi-13, 4, 14, 21, 27). Cazanas describes providing
content through a media store or on-demand server (ODS) at a website
accessible by a computer or a mobile device (cell phone) (a personal media
device (PMD), see i134). (Cazanas i-fi-134, 50, 51). Appellants concede
(supra) that the combination of Ho and Cazanas teaches purchasing a
ringback tone via a website (through the Internet) by a caller and playing the
ringback tone during a call. Therefore, we agree with the Examiner's
findings and conclusions and find that the combination of Ho and Cazanas
would have at least suggested to one of ordinary skill in the art at the time of
Appellants' invention provided content (a ringback tone) by means of a
website to be presented (played) during a call.
Thus, Appellants do not persuade us of error in the Examiner's
obviousness rejection of representative independent claim 1. Accordingly,
we affirm the Examiner's obviousness rejection of representative claim 1,
independent claims 11 and 1 7, and dependent claims 2 and 3, not separately
argued with particularity (supra).
With respect to the additional grounds of rejection rejecting dependent
claims 4--9, 12-16, and 18-20, Appellants do not separately argue these
claims or corresponding rejections (supra). Thus, Appellants do not
persuade us of error in the Examiner's obviousness rejections of claims 4--9,
12-16, and 18-20 and we affirm the Examiner's obviousness rejections of
claims 4--9, 12-16, and 18-20.
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Application 13/171,342
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-9 and 11-20 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-9 and 11-20.
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
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