Avaya Inc.

Patent Trials and Appeals Board

Jul 28, 2020

14920021 - (D) (P.T.A.B. Jul. 28, 2020)

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.
14/920,021 10/22/2015 Lin Lin 4366-769 4556
48500 7590 07/28/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LIN LIN and PING LIN
____________

Appeal 2019-001417
Application 14/920,021
Technology Center 2600
____________

Before JUSTIN BUSCH, CATHERINE SHIANG, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–3 and 5–20. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies the
real party in interest as Avaya, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates generally to “computer recognition of
human speech.” Spec. ¶ 1. According to the Specification, “the source (user
device and/or server) and the destination (destination server) dynamically
negotiate who performs speech recognition so that it is possible for the
source to perform speech recognition, entirely or partially, rather than
requiring all recognition services to be performed by the destination.”
Spec. ¶ 7; see Appeal Br. 2 (“[C]laims . . . are generally directed to systems
and methods for providing, from a source server associated with a speaker to
a destination server associated with a recipient, speaker attributes to aid the
destination server in understanding the spoken content provided by the
speaker.”).
Claim 18, reproduced below, is illustrative of the subject matter on
appeal:
18. A method, comprising:
establishing a call between a source endpoint and a
destination server on a voice channel;
indicating an ability to perform speech recognition at a
processing component associated with the source endpoint;
monitoring, by the processing component, the call for
speech provided to the source endpoint;
analyzing, by the processing component, the speech to
provide a machine-readable content of a portion of the speech;
and
providing, by the processing component, the machine-
readable content of the portion of the speech to the destination
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server on a data channel established between the processing
component and the destination server.
Appeal Br. 18 (Claims App.).
The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Jefferson US 2007/0165554 A1 July 19, 2007
Yadgar US 2013/0152092 A1 June 13, 2013
Schuster US 2014/0278416 A1 Sept. 18, 2014
The Examiner’s Rejections
Claims 8–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.2 Ans. 3.
Claims 1–3, 5, 6, 8–13, and 15–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Yadgar and Schuster.
Final Act. 6–11.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Yadgar, Schuster, and Jefferson. Final
Act. 11–12.

2 In the Final Action, the Examiner also had similarly rejected claims 1–3
and 5–7 under 35 U.S.C. § 101, but subsequently withdrew this rejection in
the Answer without explanation. See Ans. 3; Final Act. 4–5. Because the
rejection of these claims under § 101 is no longer presented on appeal, we do
not address the rejection herein. However, although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.
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ANALYSIS3
Section 101 Analysis
Appellant disputes the Examiner’s determination that claims 8–20 are
directed to patent-ineligible subject matter. Appeal Br. 4–10; Reply Br. 1–7.
Appellant argues these pending claims as a group. See Appeal Br. 4–10;
Reply Br. 1–7. Thus, for purposes of our analysis, we select independent
claim 18 as the representative claim, and any claim not argued separately
will stand or fall with our analysis of the rejection of claim 18.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Examiner failed to consider the claims as a
whole (Appeal Br. 4–6); “[t]he claims, at most, merely ‘involve’ an
exception” (Appeal Br. 6–7 (emphasis omitted)); “the claims do not merely
recognize and store data” (Appeal Br. 7–8); “operations performed on
generic computers [do not] doom a claim” (Appeal Br. 8–9); and “no
evidence is provided to support a position that what is claimed is widely
prevalent or in common use” (Appeal Br. 9–10).
More specifically, Appellant argues:
While the claims speak for themselves, they do go beyond “data
recognition and storage,” and include limitations providing
information over two communication channels, one of which is
utilized for voice, which is then processed via speech
recognition, utilizing cue data obtained via the second
communication channel, and executing a command contained in

3 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed July 19, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed
December 5, 2018 (“Reply Br.”); the Examiner’s Answer mailed
October 12, 2018 (“Ans.”); the Final Office Action mailed February 21,
2018 (“Final Act.”); and Appellant’s Specification filed October 22, 2015
(“Spec.”).
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the recognized speech—a recognition that is improved by
utilization of the cue provided by the source server.
Reply Br. 2 (emphases added); see id. at 5 (arguing “information is provided
to a receiving server that is utilized in performing a speech recognition task”
and “performing an action, based on recognized speech, is not incidental to
speech recognition but its purpose”). But Appellant’s arguments are not
commensurate in scope with representative independent claim 18 (or
independent claim 8), as claim 18 does not recite any of “utilizing cue data”
obtained via a second communication channel, “executing a command
contained in the recognized speech,” and improving speech recognition “by
utilization of the cue provided by the source server.” Appellant also argues
“the claims herein recite the use of dual channel communications and
providing specific content on the data channel in the form of a cue,” and that
“[t]he cue is received and used to seed the speech recognition process and
thereby improve the speed and/or accuracy of machine-performed speech
recognition.” Reply Br. 6 (emphases added). But again, Appellant’s
arguments are not commensurate in scope with representative claim 18
(or independent claim 8), as claim 18 does not recite “providing specific
content on the data channel in the form of a cue” or receiving and using a
“cue” “to seed the speech recognition process.” Accordingly, Appellant’s
arguments are not persuasive of Examiner error at least because they are not
commensurate in scope with the pertinent claim language. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office has published revised
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guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
In this case, we conclude Appellant’s independent claim 18 recites an
abstract idea because it recites mental processes. If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
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processes category unless the claim cannot practically be performed in the
mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (holding that the incidental use of a “computer” or “computer
readable medium” does not make a claim otherwise directed to a process
that “can be performed in the human mind, or by a human using a pen and
paper” patent eligible); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not
patentable); Office Guidance, 84 Fed. Reg. at 52–53 nn.14–15.
More specifically, Appellant’s independent claim 18 recites the
recognition of human speech. This is consistent with how the Examiner
describes the claimed invention. See Final Act. 4 (finding independent
claims recite “the abstract idea of recognizing human speech”). This also is
consistent with how Appellant describes the claimed invention. See Spec.
¶ 1 (“The present disclosure is generally directed toward computer
recognition of human speech.” (emphasis added)), ¶¶ 7 and 17 (describing
that “the source (user device and/or server) and the destination (destination
server) dynamically negotiate who performs speech recognition,” and
defining “source” and “destination” to include “components or individuals”
(emphases added)), ¶ 37 (describing embodiments of invention as
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“recogniz[ing] spoken content 106 provided by user 102”); see also Appeal
Br. 2 (describing independent claims as “providing . . . speaker attributes to
aid the destination server in understanding the spoken content provided by
the speaker” (emphasis added)).
Claim 18 is reproduced below and includes the following claim
limitations that recite the recognition of human speech, emphasized in
italics:
18. A method, comprising:
establishing a call between a source endpoint and a
destination server on a voice channel;
indicating an ability to perform speech recognition at a
processing component associated with the source endpoint;
monitoring, by the processing component, the call for
speech provided to the source endpoint;
analyzing, by the processing component, the speech to
provide a machine-readable content of a portion of the speech;
and
providing, by the processing component, the machine-
readable content of the portion of the speech to the destination
server on a data channel established between the processing
component and the destination server.
Appeal Br. 18 (Claims App.) (emphases added). As shown in the marked-up
claim above, we find at least the steps of (i) monitoring a call for speech
provided to a source, and (ii) analyzing the speech to provide a machine-
readable content of a portion of the speech, under their broadest reasonable
interpretation, constitute the types of observations, evaluations, and
judgments that are characteristic of mental processes that may be practically
performed in the human mind.
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Consistent with our Office Guidance and case law, we conclude that
the recognition of human speech is a mental process, namely, a series of
observations, evaluations, and judgments that can be practically performed
by a human, mentally or with pen and paper, and, thus, an abstract idea. See
Office Guidance, 84 Fed. Reg. at 52; see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–
48 (Fed. Cir. 2014) (explaining that claims drawn to data collection,
recognition, and storage are “undisputedly well-known” and, absent more,
are directed to an abstract idea); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (concluding that “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–
94 (Fed. Cir. 2016) (concluding claims directed to “collecting and analyzing
information to detect misuse and notifying a user when misuse is detected”
to be mental processes within the abstract-idea category).
Because independent claim 18 recites a judicial exception, we next
determine whether the claim integrates the judicial exception into a practical
application. Office Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance, 84 Fed. Reg. at 54–55 (emphases added); see also MPEP
§§ 2106.05(a)–(c), (e)–(h).
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In this case, we find the additional limitations do not integrate the
judicial exception into a practical application. More particularly, contrary to
Appellant’s assertions (see Appeal Br. 4–10; Reply Br. 1–7), representative
independent claim 18 (or independent claim 8) does not recite (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply
or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular
transformation of an article to a different thing or state (see MPEP
§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See 84 Fed. Reg. at 55.
Specifically, the additional limitations in independent claim 18 merely
provide information over network communication channels (i.e., the steps of
“establishing a call between a source endpoint and a destination server on a
voice channel”; “indicating an ability to perform speech recognition at a
processing component associated with the source endpoint”; and “providing
. . . the machine-readable content of the portion of the speech to the
destination server on a data channel established between the processing
component and the destination server” (emphases added)). Appeal Br. 18
(Claim 18). These steps are extra-solution activity of data gathering and
providing data for further use, which do not confer patent eligibility. See,
e.g., Elec. Power, 830 F.3d at 1355 (explaining that “selecting information,
by content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes”);
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 771 F. Supp. 2d
1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d 1266 (Fed. Cir. 2012)
(explaining that “storing, retrieving, and providing data . . . are
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inconsequential data gathering and insignificant post solution activity”).
Further, as explained by the Federal Circuit in buySAFE, “[t]hat a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.” 765 F.3d at 1355.
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 4–5, 8; Reply
Br. 4–7), independent claim 18 does not recite an improvement to the
functionality of a computer or other technology or technical field, and we
find Appellant’s reliance on McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016) unavailing. See MPEP § 2106.05(a).
In McRO, the Federal Circuit held claimed methods of automatic lip
synchronization and facial expression animation using computer-
implemented rules to be patent eligible under Section 101, because they
were not directed to an abstract idea. McRO, 837 F.3d at 1316. The basis
for the McRO court’s decision was that the claims were directed to an
improvement in computer animation and thus did not recite a concept similar
to previously identified abstract ideas. Id. The court relied on the
specification’s explanation of how the claimed rules enabled the automation
of specific animation tasks that previously could not be automated. 837 F.3d
at 1313. The McRO court indicated that it was the incorporation of the
particular claimed rules in computer animation that “improved [the] existing
technological process”, unlike cases such as Alice where a computer was
merely used as a tool to perform an existing process. 837 F.3d at 1314. The
McRO court also noted that the claims at issue described a specific way (use
of particular rules to set morph weights and transitions through phonemes) to
solve the problem of producing accurate and realistic lip synchronization
and facial expressions in animated characters, rather than merely claiming
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the idea of a solution or outcome, and thus were not directed to an abstract
idea. 837 F.3d at 1313. Unlike the claims in McRO, we find claim 18 in this
case does not include additional limitations that provide a technological
improvement, but rather merely provide voice calls and data concerning the
voice calls over voice and data network channels, respectively.
For at least the foregoing reasons, independent claim 18 does not
integrate the judicial exception into a practical application.
Because we determine the invention of independent claim 18 is
directed to an abstract idea or combination of abstract ideas, we analyze the
claim under step two of Alice (i.e., step 2B of the Office Guidance) to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–
73, 77–79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that was not well-understood, routine, conventional activity in
the field, or simply append well-understood, routine, conventional activities
at a high level of generality. 84 Fed. Reg. at 56. “Whether something is
well-understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination.” Berkheimer v. HP, Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
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In this case, Appellant’s claim 18 does not recite specific limitations
(alone or when considered as an ordered combination) that were not well-
understood, routine, and conventional. Instead, when describing its method
and system for recognition of human speech, Appellant describes the system
and components at a high level of generality and states that its “description
omits well-known structures, components, and devices that may be shown in
block diagram form, and are well known or are otherwise summarized.”
Spec. ¶ 34. As for such well-known devices shown in block diagram form,
as shown for example in Figure 2, Appellant includes phone device 104 and
optionally source server 202 for making and receiving calls; destination
server 210 for receiving calls and other data; a first network channel for
communicating voice waveform 108; and a second network channel for
communicating other data, e.g., speech attributes 204. See, e.g., Spec. ¶ 37,
Figs. 1–2 (showing system at a high level of generality); see also Spec.,
Fig. 6 (“Initiate call”; “Establish data channel”; “Provide recognized
speech”).
Consistent with the Berkheimer Memorandum,4 we agree with the
Examiner’s findings that claim 18 merely recites generic computer

4 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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components (e.g., a phone device/source server, destination server, and
communications network) performing generic computing functions that are
well-understood, routine, and conventional (e.g., receiving or generating
data, processing or analyzing data, and providing results of the data
processing over network communication channels). See Final Act. 4–5;
Ans. 8 (“The current claims [at issue] make no mention of the Appellant’s
assertions other than a generic processor that operate[s] in a conventional
fashion, which is evident on a routine basis. There is no improvement.”);
Ans. 6–9; see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components, such as
an “interface,” “network,” and “database,” fail to satisfy the inventive
concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will
include a ‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); buySAFE, 765 F.3d at 1355 (“That a
computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). We also find no
additional limitations in independent claim 18 that amount to “significantly
more” than the abstract idea itself. See MPEP § 2106.05(d).
For the reasons discussed supra, we are unpersuaded of Examiner
error in rejecting independent claim 18 under 35 U.S.C. § 101. Accordingly,
we sustain the Examiner’s rejection of independent claim 18 under
35 U.S.C. § 101. Further, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claims 8–17, 19, and 20, which were not argued
separately. See 37 C.F.R. § 41.37(c)(1)(iv).
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Obviousness Analysis
Appellant disputes the Examiner’s findings that the combination of
Yadgar and Schuster renders obvious claims 1–3, 5, 6, 8–13, and 15–20, and
that the combination of Yadgar, Schuster, and Jefferson renders obvious
claims 7 and 14. Appeal Br. 10–14; Reply Br. 7–9.
Appellant argues, inter alia:
Yadgar may disclose the recognition of speech but fails to
disclose the providing . . . of the recognized speech to an
endpoint, wherein the endpoint is engaged in a voice call with a
source user, the speech is recognized as the user engages in a
voice call with the destination endpoint, and the recognition is
provided to the destination endpoint engaged in the voice call.
Appeal Br. 13. Appellant also argues “[a]lthough required by the claims, no
call and no communication between servers is disclosed by Schuster”;
“[r]ather than the claimed microprocessor of a destination server engaging in
a call over a voice channel, Schuster teaches a ‘voice channel’ conveying
signals from one or more microphones.” Appeal Br. 11. In other words,
Appellant argues, in part, that the combination of applied art does not teach
establishing or engaging in a call over a network voice channel between
source and destination servers and providing data over a network data
channel between the source and destination servers.
The Examiner finds:
[Yadgar] does not specifically teach engaging a call with a
source server, the call comprising a voice channel comprising a
spoken portion provided by a source user and a data channel
comprising a machine-readable cue of the spoken portion
wherein the microprocessor executes a speech recognition
algorithm to recognize of the spoken portion and wherein the
speech recognition algorithm is seeded with the machine-
readable cue and wherein the microprocessor executes
instructions in accordance with the microprocessor recognized
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speech on the voice channel and the machine-readable cue
received on the data channel.
Final Act. 6–7 (emphases added). Nevertheless, the Examiner finds Shuster
teaches all of those missing limitations, citing as support Shuster
paragraphs 40, 52–55, and 62–65. Final Act. 7–8; Ans. 11. But the
Examiner does not sufficiently explain how these cited paragraphs support
the Examiner’s findings, and, based on the present record, like Appellant, we
do not readily discern how the cited Shuster disclosure provides sufficient
support either. For example, the Examiner cites Shuster paragraphs 52–55
for teaching “engaging in a call with a source server, the call comprising a
voice channel” (Final Act. 7), but Shuster specifically defines “voice
channel” or “voice input” as “audio information communicated from one or
more physical microphones or . . . one or more virtual microphones that is a
combination of multiple microphones” (Schuster ¶ 53), and not as a network
voice channel between source and destination servers. Further, having
found Yadgar does not teach many claimed features but that Shuster fills
that void as noted above, the Examiner merely states “it would have been
obvious to modify the invention . . . to allow spoken data by the user and
characteristics of the users’ spoken utterance to be considered when
processing the data” (Final Act. 8; Ans. 11–12), without articulating any
reason as to why it would have been obvious to combine Yadgar and
Shuster. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (To support the
legal conclusion of obviousness, “there must be some articulated reasoning
with some rational underpinning” for combining elements in the manner
claimed.).
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Based on the foregoing, we find the Examiner has not provided
sufficient evidence or technical reasoning to show that the combination of
Yadgar and Schuster teaches establishing or engaging in a call over a
network voice channel between source and destination servers and providing
data over a network data channel between the source and destination servers,
as variously recited in independent claims 1, 8, and 18.5 The Examiner also
has not persuasively shown how the other cited art remedies this deficiency.
Accordingly, constrained by the present record, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103 of independent claims 1, 8,
and 18. Additionally, we do not sustain the Examiner’s rejection under
35 U.S.C. § 103 of claims 2, 3, 5–7, 9–17, 19, and 20, which depend
therefrom.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Basis Affirmed Reversed
8–20 101 Eligibility 8–20
1–3, 5, 6, 8–13,
15–20
103 Yadgar,
Schuster
1–3, 5, 6,
8–13, 15–
20
7, 14 103 Yadgar,
Schuster,
Jefferson
7, 14
Overall
Outcome
8–20 1–3, 5–7

5 Because we find this issue dispositive, we do not address Appellant’s
other arguments concerning obviousness.
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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).
See 37 C.F.R. § 41.50(f).

AFFIRMED IN PART