Ex Parte Parasu

Patent Trial and Appeal Board

Dec 3, 2012

11251767 (P.T.A.B. Dec. 3, 2012)

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.
11/251,767 10/18/2005 Nagendran Parasu 10-056 8055
23164 7590 12/03/2012
Cisco
c/o Leon R Turkevich
2000 M STREET NW
SUITE 700
WASHINGTON, DC 20036-3307
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
12/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NAGENDRAN PARASU
____________________

Appeal 2010-004590
Application 11/251,767
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JOHN G. NEW, and JUSTIN BUSCH,
Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004590
Application 11/251,767

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 5-7, 10-13, and 16. Claims 3, 4, 8, 9, 14, and 15 were cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to an executable voice application,
where a first HTML document is generated for a user and a second HTML
document is generated for a second party. Each HTML document includes
instructions to its recipient. (See Spec. 4:9-16).
Exemplary Claims
Exemplary claims 1, 2, and 5 on appeal read as follows:
1. A method in an application server configured for responding to
hypertext transport protocol (HTTP) requests, the method comprising:
in response to a first HTTP request, storing an XML document that
specifies a call number of a second party for a user,
retrieving the stored XML document based on a second HTTP request
by the user;
based on the retrieved XML document, generating a first hypertext
markup language (HTML) document having instructions including the call
number for accessing the second party, and
based on a prescribed input received from the second party,
selectively generating a second HTML document having instructions for
connecting the second party with the user.
2. The method according to claim 1, wherein the stored XML
document includes a call number of the user and a prompt sequence for
accessing the second party, the first HTML document including the prompt
sequence and the second HTML document including the call number of the
user.
5. The method according to claim 1, wherein the instructions of the
first HTML document include recording a voice message indicating to the
second party that the user wants to speak with the second party.
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Rejections
The Examiner rejected claims 1, 2, 6, 7, 11-13, and 16 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Miloslavsky (US 6,597,685 B2) and Vange (US 2002/0004796 Al).
The Examiner rejected claims 5 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Miloslavsky, Vange, and
Casellini (US 6,404,860 B1).
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
because “[i]n Miloslavsky, the there [sic] is no second HTML document
generated based on an input received from the call center or second party.”
(App. Br. 7). Appellant also argues that “[t]he second HTML document is
different from the first HTML document.” (Reply 2).
2. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because of statements the Examiner made
“during the Interview of February 18, 2009.” (App. Br. 8).
3. Appellant contends that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a) because:
The Examiner contends that the “prompt sequence for accessing
the second party” is the web page of Miloslavsky that “includes
a button that allows the user to either call the call center or
request a callback”. Appellant submits that a button on a web
page is not an XML document that includes a prompt sequence
for accessing the second party.
(App. Br. 9).
4. Appellant contends that the Examiner erred in rejecting claims
12 and 13 under 35 U.S.C. § 103(a) because Miloslavsky fails to teach that
processing the documents includes “the application runtime environment
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insert[ing] an application parameter into an XML page” (claim 12) and
“specifying a blank form for creation of the XML document” (claim 13).
(App. Br. 10).
5. Appellant contends that the Examiner erred in rejecting claim 5
under 35 U.S.C. § 103(a) because Miloslavsky fails to teach the first HTML
document including “instructions for recording a voice message as claimed.”
(App. Br. 10).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellant’s 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 Appellant’s Appeal
Brief. Except as noted below, we concur with the conclusions reached by
the Examiner.
As to Appellant’s above contention 1, we disagree. At a minimum in
Miloslavsky, a second HTML document (the HTML document previously
sent to customer site 1104 is delivered to computer 1146) (col. 13, ll. 8-10)
is generated based on input such as the availability of agents (col. 13, l. 6).
Appellant’s argument that the HTML documents are required to be different
(in some patentable sense) is without merit. The non-functional descriptive
material content of the documents cannot serve to distinguish over the prior
art. Even if it could, Miloslavsky teaches that “other information about
customer site 1104 can also be sent to computer 1146.” (Col. 13, ll. 14-15).
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Inclusion of this “other information” in the second HTML document is
deemed to be trivial to one skilled in the art.
As to Appellant’s above contention 2, we do not reach this matter as it
is not part of any rejection before this Board.
As to Appellant’s above contention 3, we disagree. Although the
Examiner and Appellant engage in a debate about whether the button is
equivalent to a prompt sequence, we do not reach this issue. Rather, we find
that an artisan would recognize that Miloslavsky teaches such a prompt
sequence at column 15, lines 45-48, where a dialog box is provided (we
understand this to be an HTML document): “Referring now to FIG. 5, the
user requests a telephone call by clicking on button 118 (which could be
labeled a “call me” button). A dialog box appears. It asked the user to enter
the telephone number of phone 1128.”
As to Appellant’s above contention 4, we agree-in-part. We do not
agree with the Examiner’s reasoning as to the teachings of Miloslavsky
regarding claims 12 and 13. However, as discussed directly above,
Miloslavsky teaches data (parameter) entry into a blank HTML document at
column 15, lines 45-48, where a dialog box is provided to receive a
telephone number. We do agree with the Examiner’s reasoning that Vange
shows interchanging an HTML document and an XML page would be
known in the art. (Final Rej. 10).
As to Appellant’s above contention 5, we disagree. The Examiner
and Appellant engage in a debate about the proper construction of claim 5
(App. Br. 10-11; Ans. 27). We agree with Appellant’s claim construction.
Claim 5 is directed to “instructions” about “recording a voice message.”
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That the HTML document includes particular human readable information in
the form of instructions is of no moment.
The claim 5 subject matter argued on appeal relates to features that
differ from the prior art solely on the basis of “non-functional descriptive
material,” which is generally not given patentable weight when determining
patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983). The PTO may not disregard claim limitations
comprised of printed matter. See id. at 1384; see also Diamond v. Diehr,
450 U.S. 175, 191 (1981). However, the Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. See In re
Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994); See also Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative) (“[N]onfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art.”), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006)
(Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (“Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious.”), aff’d,
No. 06-1003 (Fed. Cir. 2006) (Rule 36).
We conclude that when the prior art describes all the claimed
structural and functional relationships between the descriptive material and
the substrate, but the prior art describes a different descriptive material than
the claim, then the descriptive material is non-functional and will not be
given any patentable weight. That is, we conclude that such a scenario
presents no new and unobvious functional relationship between the
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descriptive material and the substrate. In the instant case on appeal, we find
that claim 5 recites non-functional descriptive material which does not
provide a patentable distinction to the data or to the process of the claimed
methods. In other words, we find that the meaning relating to the human
readable information (instructions) cannot be used to distinguish the claimed
invention from prior art human readable information.
Given that our analysis above differs from the Examiner’s as to claims
2, 5, 7, 10, 12, and 13, we designate these as new grounds of rejection over
the art relied on by the Examiner.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Appeal 2010-004590
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 5-7, 10, 11,
and 16 as being unpatentable under 35 U.S.C. § 103(a).
(2) Appellant has shown that the Examiner erred in rejecting claims
12 and 13 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 2, 5-7, 10-13, and 16 are not patentable.

DECISION
The Examiner’s rejections of claims 1, 2, 5-7, 10, 11, and 16 are
affirmed. We have designated the affirmance of the rejections of claims 2,
5, 7, and 10, as new grounds of rejection.
The Examiner’s rejection of claims 12 and 13 is reversed. We have
designated the analysis of our reversal as a new ground of rejection.

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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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