Vishal DHAWAN et al.

Patent Trials and Appeals Board

Mar 31, 2021

2019006035 (P.T.A.B. Mar. 31, 2021)

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.
12/717,865 03/04/2010 Vishal DHAWAN 10286.001US6 3701
39564 7590 03/31/2021
FisherBroyles, LLP - MAIN CN
885 Woodstock Rd, Ste. 430-383
Roswell, GA 30075
EXAMINER
ZENATI, AMAL S
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VISHAL DHAWAN, TIMOTHY M. PRICE, and
MANOJ SINDHWANI
Appeal 2019-006035
Application 12/717,865
Technology Center 2600
Before ROBERT E. NAPPI, JAMES R. HUGHES, and JASON J. CHUNG,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–9, 11, and 13–21 are pending, stand rejected, are appealed
by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1, 11; Appeal Br. 33–34.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Xtone, Inc.
Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Mar. 4, 2010
(claiming benefit of multiple applications including US 60/712,808, filed
Appeal 2019-006035
Application 12/717,865
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CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally “relates
to systems and methods which allow multiple individual users to rapidly,
easily and inexpensively communicate with a single core entity, and which
likewise allow the core entity to rapidly, easily and inexpensively
communicate with multiple individual users.” Spec. ¶ 2. More specifically,
Appellant’s claims are directed to systems and methods for providing
interactive voice applications. See Spec. ¶¶ 33–36, 47–49, 78, 84–87, 110;
Abstract. Claims 1 (directed to a method), 11 (directed to a method), 16
(directed to a system), and 17 (directed to a system) are independent. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method of communicating with a plurality of
users who are connected to a distributed voice application
execution system via a digital data connection, comprising:
facilitating generation of a plurality of voice applications
that are designed to be performed on a corresponding plurality
of user local devices that are operated by a plurality of users, the
voice applications being configured to communicate with those
users, wherein each of the voice applications is customized for a
particular user in some fashion, and wherein the voice
applications are configured to be performed for the users upon
an occurrence of a triggering event;
causing the plurality of generated voice applications to be
stored, at least in part, on the plurality of respective user local
devices so that the voice applications are available for
performance on those user local devices upon the occurrence of
the triggering event.
Appeal Br. 32 (Claims App.) (emphasis added).

Sept. 1, 2005); Appeal Brief (“Appeal Br.”), filed Feb. 25, 2019; and Reply
Brief (“Reply Br.”), filed Aug. 8, 2019. We also refer to the Examiner’s
Final Office Action (“Final Act.”), mailed Feb. 28, 2018; and Answer
(“Ans.”) mailed June 18, 2019.
Appeal 2019-006035
Application 12/717,865
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Robinson US 5,918,014 June 29, 1999
Rodkey et al.
(“Rodkey”)
US 7,174,005 B1 Feb. 6, 2007
(filed May 19, 2005)
Vance et al. (“Vance”) US 7,844,215 B2 Nov. 30, 20103
Lambourne US 8,483,853 B1 July 9, 20134
Barak US 2007/0206758 A1 Sept. 6, 20075

REJECTIONS6
1. Claims 1, 2, 5, 6, 8, 9, 11, 14–17, 20, and 21,7 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Vance and Lambourne.
See Final Act. 2–8.

3 Vance (US 7,844,215 B2) (issued Nov. 30, 2010) was filed on Aug. 7,
2007, and claims benefit of US 60/836,125, filed on Aug.
8, 2006. Appellant does not address the effective date of the instant
application, or whether Vance constitutes proper prior art.
4 Lambourne (US 8,483,853 B1) (issued July 9, 2013) was filed on Sept. 11,
2007, and claims benefit of US 60/825,407, filed on Sept.
12, 2006. Appellant does not address the effective date of the instant
application, or whether Lambourne constitutes proper prior art.
5 Barak (US 2007/0206758 A1) (published Sept. 6, 2007) was filed on Nov.
30, 2004, and claims benefit of US 60/525,844, filed on Dec. 1, 2003.
6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date prior to the AIA’s effective date (March 16,
2013), this decision refers to 35 U.S.C. § 103(a).
7 The Examiner includes canceled claim 10, but omits claim 21 in the
statement of the rejection. Claim 21 is discussed in the body of the
rejection. See Final Act. 8. We revise the statement of the rejection for
clarity and consistency of the record.
Appeal 2019-006035
Application 12/717,865
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2. Claims 3, 4, 18, and 19, are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vance, Lambourne, and Robinson. See Final
Act. 9.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vance, Lambourne, and Barak. See Final Act. 10.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vance, Lambourne, and Rodkey. See Final Act. 10–11.
ANALYSIS
The Examiner rejects independent claim 1 (as well as independent
claims 11, 16, and 17, and dependent claims 2, 5, 6, 8, 9, 14, 15, 20, and 21)
as obvious in view of Vance and Lambourne. See Final Act. 2–4; Ans. 3–9.
Appellant contends that Vance and Lambourne do not teach the disputed
limitations of claim 1. See Appeal Br. 17–23; Reply Br. 1–3. Specifically,
Appellant contends, inter alia, that Vance and Lambourne do not teach
generating voice applications that are customized for a particular user, stored
(at least in part) on respective users’ local devices, and executed (performed)
on the local devices. See Appeal Br. 18–22; Reply Br. 1–3.
We agree with Appellant that the Examiner-cited portions of Vance
and Lambourne do not teach or suggest generating customized voice
applications that are stored and executed on a user’s local device. See
Appeal Br. 18–22; Reply Br. 1–3. The Examiner cites Vance to teach the
disputed features of Appellant’s claim. Indeed, the Examiner states that
Vance anticipates Appellant’s claim 1. Ans. 7 (“Vance teaches all the
limitation of claim 1 and Vance reference can be used as 102 rejection.”).
The Examiner-cited portions of Vance describe an interactive voice
recognition (IVR) telephone system, and delivering selected audio content
Appeal 2019-006035
Application 12/717,865
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and customized advertisements to a user’s device. See Final Act. 2–4 (citing
Vance cols. 5:15–25; 14:5–22, 36–45; 15:30–42; 16:1–3, 14–17; 17:12–25;
18:41–55; and Fig. 2); Ans. 3–9 (citing Vance cols. 4:43–63; 3:8–27, 56–57;
6:61–67; 7:1–7; 16–36; 13:15–67; 14:1–46, 14–17; 17:12–25; 18:41–55).
Vance’s IVR is not generated, customized, or stored on a user device. Even
if we were to interpret Vance to describe a voice browser or application, as
urged by the Examiner (see Ans. 4–5), Vance does not describe how such an
application is generated, customized, or stored. At best, Vance describes
selecting (using the IVR system) and storing selected audio content
including customized advertisements. Audio content and advertisements are
not applications (executable software), even under the Examiner’s broad
interpretation (see Ans. 4–5). See Reply Br. 3.
The Examiner additionally cites Lambourne to teach a second
instance of stored voice applications (see Final Act. 3–4) and supplement the
teachings of Vance (see Ans. 7–8). The Examiner-cited portions of
Lambourne describe controlling multimedia (audio) players located in
various zones. See Final Act. 3–4 (citing Lambourne cols. 4:50–66; 5:42–
50; 7:1–20; 8:55–68); Ans. 7–8 (citing Lambourne cols. 1:56–57; 2: 21–37;
4:43–63; 7:1–20; 8:55–67; 9:20–21; and Figs. 1, 6). The Examiner-cited
portions of Lambourne do not explicitly describe generating customized
voice applications or storing such applications on user devices. At best, the
Examiner-cited portions of Lambourne describe controlling audio players
using customized configuration files. Configuration files are not
applications. See Appeal Br. 21–22.
The Examiner has not explained sufficiently how Vance and
Lambourne, individually or in combination, teach or suggest the disputed
features of claim 1. Consequently, we are constrained by the record before
Appeal 2019-006035
Application 12/717,865
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us to find that the Examiner erred in concluding Vance and Lambourne
render obvious Appellant’s claim 1. Independent claims 11, 16, and 17
include limitations of commensurate scope. Dependent claims 2, 5, 6, 8, 9,
14, 15, 20, and 21 depend from and stand with their respective base claims.
Accordingly, Appellant’s contentions persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1 and we reverse
the Examiner’s rejection of claims 1, 2, 5, 6, 8, 9, 11, 14–17, 20, and 21.
With respect to claims 3, 4, 7, 13, 18, and 19, the Examiner rejects
claims 3, 4, 18, and 19 under 35 U.S.C. § 103(a) as obvious in view of
Vance, Lambourne, and Robinson (see Final Act. 9), claim 7 under 35
U.S.C. § 103(a) as obvious in view of Vance, Lambourne, and Barak (see
Final Act. 10), and claim 13 under 35 U.S.C. § 103(a) as obvious in view of
Vance, Lambourne, and Rodkey (see Final Act. 10–11). Claims 3, 4, 7, 13,
18, and 19 depend from claims 1, 11, and 17, respectively. The Examiner
does not suggest, and we do not find, that the additional cited references
(Robinson, Barak, or Rodkey) cure the deficiencies of Vance and
Lambourne (supra). Therefore, we do not sustain the Examiner’s
obviousness rejection of dependent claims 3, 4, 7, 13, 18, and 19 for the
same reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–9,
11, and 13–21 under 35 U.S.C. § 103(a). We, therefore, do not sustain the
Examiner’s rejection of claims 1–9, 11, and 13–21.
Appeal 2019-006035
Application 12/717,865
7
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 8,
9, 11, 14–
17, 20, 21
103(a) Vance, Lambourne 1, 2, 5, 6, 8,
9, 11, 14–
17, 20, 21
3, 4, 18, 19 103(a) Vance,
Lambourne,
Robinson
3, 4, 18, 19
7 103(a) Vance,
Lambourne, Barak
7
13 103(a) Vance,
Lambourne,
Rodkey
13
Overall
Outcome
1–9, 11, 13–
21

REVERSED