Ex Parte Chavez et al

Patent Trial and Appeal Board

Oct 20, 2016

12722262 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121722,262 03/11/2010
48500 7590 10/24/2016
SHERIDAN ROSS P,C
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
David L. Chavez
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.
4366-463 2729
EXAMINER
ZENATI, AMAL S
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
10/24/2016 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID L. CHAVEZ and LARRY J. HARDOUIN
Appeal2015-005785
Application 12/722,262 1
Technology Center 2600
Before BRUCE R. WINSOR, IRVINE. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-5, 7-11, and 13-23, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The technology relates to starting an application upon the termination
of a communications session. Abstract. Claims 1 and 22 are illustrative and
reproduced below with the limitations at issue emphasized:
1. A method for initiating a process, comprising:
establishing a first communication session between a first
party associated with a communication device and a second party
associated with a second communication device;
1 Appellants state the real party in interest is Avaya Inc. App. Br. 2.
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during the first communication session, identifying one or
more variables associated with the first communication session
and comparing the one or more variables associated with the
first communication session to one or more rules to determine a
first process to initiate, wherein the one or more rules specifies
the one or more variables that are to be present in order to initiate
the first process;
detecting a termination of the first communication session;
and
in response to detecting the termination of the first
communication session, initiating the first process.
22. The method of claim 1, wherein the first communication
session further includes a third communication device, wherein
the termination of the first communication session is with respect
to the first communication device such that the first process
initiated in response to detecting the termination of the first
communication session collects information including content
from at least a portion of the communication session between the
second communication device and the third communication
device, and wherein the first process provides a first output to the
first party containing at least a portion of the collected
information.
Rejections
Claims 1, 3-5, 7-11, and 13-23 stand rejected under 35 U.S.C.
§ 103(a) as obvious over one or more of Bataillard (GB 2,403,621 A; Jan. 5,
2005); Cyriac et al. (US 8,537,981 Bl; Sept. 17, 2013); and Ali et al. (US
7,379,538 Bl; May 27, 2008). Final Act. 2, 9 (Apr. 17, 2014); Non-Final
Act. 2 (Sept. 18, 2013); Ans. 3-12.
ISSUES
1. Did the Examiner err in concluding that independent claims 1,
14, and 18 were obvious in light of Bataillard and Cyriac considered
individually or in combination?
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2. Did the Examiner err in finding the combination of Cyriac and
Bataillard teaches or suggests "identifying at least the first party to the first
communication session," as recited in claim 3?
3. Did the Examiner err in concluding that dependent claims 4, 5,
7, and 20 were obvious in light of Cyriac?
4. Did the Examiner err in finding Cyriac teaches or suggests
"determining a second process to initiate in response to the termination of
the first communication session," as recited in claim 8?
5. Did the Examiner err in finding Cyriac teaches or suggests "the
second process provides an output to at least one of the first party and the
second party," as recited in claim 9?
6. Did the Examiner err in finding Cyriac teaches or suggests "a
third communication device, wherein an output from the at least one
operation of the one or more sequenced applications is provided to the third
communication device," as recited in claim 15?
7. Did the Examiner err in finding Cyriac teaches or suggests
"collects information including content from at least a portion of the
communication session between the second communication device and the
third communication device" and "the first process provides a first output to
the first party containing at least a portion of the collected information," as
recited in claim 22?
ANALYSIS
We have only considered those arguments Appellants raised in the
briefs. Arguments that Appellants could have made but chose not to have
not been considered and are deemed waived. 37 C.F.R. § 41.37(c)(l)(iv).
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ISSUE 1
Claims 1, 14, and 18: Bataillard
Independent claim 1 recites "during the first communication session,
... comparing the one or more variables associated with the first
communication session to one or more rules to determine a first process to
initiate." The other independent claims (14 and 18) recite similar limitations
for activities "during" a communication session.
Bataillard relates to "[n]otifying a caller of a user's availability
following a missed call." Bataillard at Abstract Title.
When a caller attempts to call a user and the call attempt is
terminated ( eg because the user is engaged, not answering, or, in
the case of mobile telephones, out of range), the call attempt is
recognised ( eg in response to a message left on the user's
voicemail system) and the caller's contact details are identified.
When the user subsequently becomes available, or decides to let
callers know that he is available ( eg by pressing a dedicated
"availability" key on the telephone handset), an availability
message is generated and sent to the caller using the caller's
contact details.
Id. at Abstract.
The Examiner finds "Bataillard[] showes [sic] all the limitation[ s] of
independent claims 1, 14, and 18."2 Ans. 3. Specifically, the Examiner
finds that ( 1) Bataillard' s attempted call resulting in a voicemail constitutes
the claimed "first communication session"; (2) the identification of the
caller's contact details constitutes the claimed one or more variables; and
2 The rejection in the Final Action was for obviousness under 35 U.S.C.
§ 103(a). Final Act. 2. We note, however, "[i]t is well settled that
anticipation is the epitome of obviousness." In re McDaniel, 293 F.3d 1379,
1385 (Fed. Cir. 2002) (quotation omitted).
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(3) consulting which particular callers the user specifies should be sent
availability messages constitutes the claimed "rules." Id. at 3--4.
Appellants contend the Examiner erred because consulting
Bataillard's "rules" for availability messages "occurs after the call attempt,"
not during the call attempt. Reply Br. 3. We agree with Appellants.
According to Bataillard, "[o]nce the user becomes available and reviews
missed calls and voice mail messages ... , he can decide whether or not to
send an availability message." Bataillard 17: 13-15 (emphasis added). A
call is missed and a voice mail message is played back after the call attempt
is over. Thus, Bataillard teaches the decision to send an availability message
occurs later when the user becomes available, not during the call attempt.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
14, and 18 or their dependent claims based on Bataillard alone.
Claims 1, 10, 11, 13, and21: Cyriac
The Examiner finds that "given the broadest reasonable interpretation,
Cyria[ c] clearly teaches ... all limitation[ s] of independent claims 1, 14, and
18." Ans. 6 (emphasis removed).
Cyriac relates to "interrupting a conference call for an emergency
situation." Cyriac Title (uppercase removed). Figure 4 outlines the steps in
Cyriac' s process. First, when an event occurs, the urgency and location of
the event are determined. Id. at 8:58---65, FIG. 4. Next, "the recipients for
the event notification are identified" based on "comparing the location of
communication devices 112, 124 to the location and risk/urgency level of
the event." Id. at 8:66-9:3. An event notification message is then prepared
for each recipient, and different messages may be prepared for different
recipients. Id. at 9:20-30. The next step is determining if a recipient is
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already on a call. Id. at 9:31-34. "If a recipient is actively participating in a
call, then the notification agent 120 interrupts the connection of the
recipient's call," such as "by breaking the connection between the switch
and the recipient's communication device 112, 124." Id. at 9:34--39. After
successful interruption, "then the event notification and the corresponding
message therein can be transmitted to the recipient." Id. at 9:47-50. "Once
the event notification has been successfully transmitted, it is determined if
the call that has been interrupted should be resumed," which may be "based
upon the risk and/or urgency associated with the event." Id. at 10:3---6.
In the present application, Claim 1 recites "during the first
communication session, identifying one or more variables associated with
the first communication session." Appellants argue "the variables relied
upon by the Examiner appear to be associated with the 'event' and not the
first communication session." Reply Br. 4. Appellants also argue the
Examiner has not shown identifying variables "during the first
communication session." App. Br. 14--15. We are not persuaded of error.
The Examiner relies on Cyriac "comparing the location of communication
devices 112, 12 4 to the location and risk/urgency level of the event." Ans. 5
(italics added, original emphasis omitted). The Examiner finds Cyriac
teaches "identifying variables: such as ... (2) identify recipients based upon
the switch 108 or IP addresses that they are using." Id. (citing Cyriac 9:1-
19) (emphasis omitted). We agree with the Examiner that the location of
call recipients falls within the broadest reasonable interpretation of
"variables associated with the first communication session," and that the
locations are identified "during" the call.
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Claim 1 also recites "comparing the one or more variables associated
with the first communication session to one or more rules to determine a first
process to initiate." Appellants contend "the Examiner has not identified
one or more rules." App. Br. 15; Reply Br. 4. We are not persuaded of
error. The Examiner correctly finds Cyriac teaches "comparing the location
of communication devices 112, 124 to the location and risk/urgency level of
the event" to identify which recipients to notify of the event. Cyriac 8:66-
9:3; Ans. 5-6. Appellants have not sufficiently addressed this teaching.
Claim 1 further recites "detecting a termination of the first
communication session" and "in response to detecting the termination of the
first communication session, initiating the first process." Appellants contend
"Cyriac teaches quite the opposite; instead of terminating the call to provide
an event notification, Cyriac teaches interrupting the call" and "after the
event notification has been provided, the call may be resumed or
terminated." Reply Br. 7. However, we are not persuaded of error. Cyriac
teaches the system "may interrupt the call by breaking the connection
between the switch and the recipient's communication device." Cyriac
9:36-39 (emphasis added). Thus, we agree with the Examiner that Cyriac's
teaching of interrupting the call meets the claimed "termination." The prior
art need not use the same words as the patentee. Teva Pharm. Indus. Ltd. v.
AstraZeneca Pharm. LP, 661F.3d1378, 1384 (Fed. Cir. 2011).
Accordingly, we sustain the Examiner's rejection of independent
claim 1 based on Cyriac, whether considered alone or in combination with
Bataillard, and dependent claims 10, 11, 13, and 21, which Appellants argue
are patentable for similar reasons. See App. Br. 22-23, 33; 37 C.F.R.
§ 41.37(c)(l)(iv).
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Claims 14, 16, and 17: Cyriac
For claim 14, in addition to any arguments in common with claim 1,
Appellants contend the Examiner "failed to consider the Appellant's
previously entered amendments," yet Appellants fail to identify the specific
amended limitations they believe have not been addressed. App. Br. 24
(emphasis omitted). Accordingly, we are not persuaded of error.
With respect to Cyriac, Appellants contend:
Cyriac fails to teach .... during the first communication session,
the application sequence process compares one or more variables
associated with the first communication session to one or more
rules to determine one or more sequenced applications to be
applied in association with the first communication session and
the one or more rules specifies the one or more variables that are
to be present in order to initiate the determined one or more
sequenced applications.
App. Br. 27. However, Appellants have not adequately explained this
argument, particularly given the Answer relying on Cyriac' s teaching of an
event notification message interrupting a call between two participants and
using rules based on the location of the participants' communication devices
to determine who should receive a message. Ans. 5---6.
Appellants also contend that "nowhere has the Examiner addressed
the feature of a second communication device associated with a second
party, wherein the second communication device is included in the first
communication session." App. Br. 26. Yet the Examiner relies upon
"participants of one or more calls," including the communication device
labeled "112 for the [claimed] second communication device." Ans. 5.
Accordingly, we sustain the Examiner's rejection of claim 14 based
on Cyriac, whether considered alone or in combination with Bataillard, and
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claims 16 and 1 7, which Appellants argue are patentable for similar reasons.
See App. Br. 28; 37 C.F.R. § 41.37(c)(l)(iv).
Claims 18 and 19: Cyriac
As with claim 14, Appellants contend "several features in claim 18
have not been addressed as it appears the Examiner has failed to consider the
Appellant's previously entered amendments." App. Br. 29 (emphasis
omitted). Yet, as above, Appellants fail to identify which specific amended
limitations they believe the Examiner failed to address.
Appellants further contend the Examiner fails to show "the
application sequence process accesses the set of sequenced application rules
during a first communication session." App. Br. 31. However, Appellants
do not adequately support this argument, and we are not persuaded of error
as Cyriac teaches determining which devices should receive a notification
message while those devices are on a call, as discussed above.
Accordingly, we sustain the Examiner's rejection of claim 18 based
on Cyriac, whether considered alone or in combination with Bataillard, and
claim 19, which Appellants argue is patentable for similar reasons. See App.
Br. 32; 37 C.F.R. § 41.37(c)(l)(iv).
lSSUE2
Claim 3: Cyriac & Bataillard
Claim 3 recites "identifying at least the first party to the first
communication session." The Examiner finds "Bataillard teaches upon
connecting a caller to a voice message system ... , the caller may [be] asked
for contact information." Ans. 7 (citing Bataillard 7: 15-19). Appellants
contend "such identifying information is related to a communication
attempt," not a communication session. App. Br. 17 (emphasis added). We
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are not persuaded by Appellants' argument. We agree with the Examiner
that a caller being connected to a voice message system and leaving a voice
message falls within the broadest reasonable interpretation of a
"communication session." For the same reason, we reject Appellants'
argument that "Bataillard explicitly teaches away from establishing a first
communication session" because it only teaches an "attempt." App. Br. 36.
Appellants also contend any combination of Cyriac and Bataillard is
improper because the combination would render Bataillard "unsatisfactory
for its intended purpose." App. Br. 35. Specifically, Appellants argue
"Bataillard solves a problem concerning what to do when a communication
attempt is unsuccessful" whereas Cyriac teaches what to do when "a
communication session is established or successful." Id. (emphasis added).
However, this generalized argument fails to address the specific combination
for claim 3, where the only use of Bataillard is the simple idea of identifying
the caller (Ans. 7), a teaching which applies regardless of whether a
communication attempt was successful. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 420-21 (2007) ("The idea that a designer hoping to make an
adjustable electronic pedal would ignore Asano because Asano was designed
to solve the constant ratio problem makes little sense" because "[ c ]ommon
sense teaches ... that familiar items may have obvious uses beyond their
primary purposes"). For example, although not necessary for our decision,
we note that Cyriac also teaches identifying the devices on a call, a teaching
which the Examiner relies upon for all of the independent claims. E.g.,
Cyriac 8:67-9: 19; Ans. 5---6.
We find Appellants' further contention that "there is no motivation
nor suggestion to combine Bataillard with Cyriac" unpersuasive for the same
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reasons. App. Br. 37. As the Supreme Court has explained, "[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton" and
"[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 421, 416. Here, Appellants have not persuaded us against
the Examiner's conclusion of obviousness based on the familiar element of
Bataillard relied upon for claim 3 (i.e., identifying the caller).
Accordingly, we sustain the Examiner's rejection of claim 3 over the
combination of Cyriac and Bataillard.
ISSUE 3
Claim 4, 5, 7, and 20: Cyriac
For claims 4, 5, 7, and 20, the Final Action relied on teachings from
Bataillard. Final Act. 7, 9. In the Answer, the Examiner relied on further
teachings from Cyriac. Ans. 7-8, 10-11. Appellants "note" that the
reasoning in the Examiner's Answer is different from that in the Final
Action (Reply Br. 8-9), but Appellants did not petition "to designate a
rejection as a new ground of rejection in an examiner's answer" under 37
C.F.R. § 41.40(a) and Appellants do not provide any substantive argument
against the teachings of Cyriac for these claims. Accordingly, we sustain the
Examiner's rejection of claims 4, 5, 7, and 20 based on Cyriac alone or in
combination with Bataillard.
IssuE4
Claim 8: Cyriac
For claim 8, Appellants' only argument against the Examiner's
findings for Cyriac is premised on Cyriac "fail[ing] to teach a termination of
the first communication session." Reply Br. 8. We reject this "termination"
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argument for the same reasons as in claim 1. Accordingly, we sustain the
Examiner's rejection of claim 8 based on Cyriac alone or in combination
with Bataillard.
ISSUE 5
Claims 9 and 23: Cyriac
For claim 9, Appellants argue Cyriac "fails to teach that the
reconnection of the recipients provides an output to at least one of the first
party and the second party." Reply Br. 8. However, Appellants have not
further explained this argument, and we are not persuaded by it. First,
Cyriac does teach or suggest output to both parties once a call is restored:
"the recipients may be reconnected to the call (step 436). This way the call
can continue, or at a minimum the recipients that may be impacted by the
event can quickly talk to the other participants to tell them they will call
back later." Cyriac 10:7-12. Second, Appellants' argument does not
address the Examiner's actual rejection, which was instead based on Cyriac
teaching "different event notifications" for different recipients. Ans. 9.
Accordingly, we sustain the Examiner's rejection of claim 9 based on
Cyriac alone or in combination with Bataillard, and claim 23, which
Appellants argue is patentable for similar reasons. See App. Br. 35; 37
C.F.R. § 41.37(c)(l)(iv).
ISSUE 6
Claim 15: Cyriac
Claim 15 recites "a third communication device, wherein an output
from the at least one operation of the one or more sequenced applications is
provided to the third communication device." Appellants contend "the
Examiner fails to identify what output is being provided to a third
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communication device." Reply Br. 9. We agree with the Examiner, though,
as Cyriac teaches "the notification agent 120 is operable to interrupt multiple
calls and provide multiple event notifications to a number of recipients using
a single call." Cyriac 9:65-10:2 (emphasis added); Ans. 9-10.
Accordingly, we sustain the rejection of claim 15 based on Cyriac
alone or in combination with Bataillard.
ISSUE 7
Claim 22: Cyriac
Claim 22 recites "the first process initiated in response to detecting
the termination of the first communication session collects information
including content from at least a portion of the communication session
between the second communication device and the third communication
device" and "the first process provides a first output to the first party
containing at least a portion of the collected information."
The Examiner relies on claim 7 of Cyriac teaching "third and fourth
participants are participating in the common call with the first and second
recipients" and "maintaining the connection between the third and fourth
participants while the first and second recipients have their connections
interrupted." Ans. 11; see also Final Act. 10 (citing Cyriac 9:58-10:30, FIG.
4). However, we agree with Appellants that the cited portions of Cyriac do
not teach collecting information about the ongoing communication session,
nor teach providing output to the first party (i.e., the party whose connection
was terminated) where the output contains at least a portion of the collected
information. Reply Br. 9; App. Br. 34.
Accordingly, we do not sustain the Examiner's rejection of claim 22.
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DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3-5, 7-11, 13-21, and 23. 3 We reverse the Examiner's decision
rejecting claim 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
3 In the event of further prosecution, the Examiner may wish to consider any
applicability of 35 U.S.C. § 101 to independent claim 1 and its dependent
claims. Whereas the other independent claims recite limitations requiring
execution on a server, claim 1 could be performed by the mental processes
of two individuals talking who just happened to have mobile phones in their
pockets, as the claim does not expressly require the utilization of any
communication device or server.
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