Ex Parte Schmitz

Patent Trial and Appeal Board

Jan 7, 2013

11044132 (P.T.A.B. Jan. 7, 2013)

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.
11/044,132 01/27/2005 Ulrich Schmitz 2004P00099US 1150
7590 01/08/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE, SOUTH
ISELIN, NJ 08830
EXAMINER
PATEL, HEMANT SHANTILAL
ART UNIT PAPER NUMBER
2653
MAIL DATE DELIVERY MODE
01/08/2013 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 ULRICH SCHMITZ
_____________________

Appeal 2010-011592
Application 11/044,132
Technology Center 2600
_____________________

Before: ST. JOHN COURTENAY III, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011592
Application 11/044,132

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 9-15 and 20-28. Claims 1-8 and 16-19 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
THE INVENTION
The disclosed invention relates “to a communication arrangement for
automatically accepting and switching an incoming communication
connection and to a method for operating a processing unit for interactively
requesting, storing, and evaluating information from a caller.” (Spec, 1, ll.
6-10). Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A communication arrangement for automatically
accepting and switching an incoming communication
connection, comprising:

a switching center configured to receive the incoming
communication connection and forward that incoming
communication connection;

a plurality of clients;

a communication server configured to receive the
forwarded incoming communication connection from the
switching center, the communication server having a processing
mechanism comprised of a first processing unit, a second
processing unit and a waiting device;

the first processing unit configured to interactively
request caller information, the first processing unit adapted to
transmit an address information to the switching center to
transfer the incoming communication connection to one of the
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Application 11/044,132

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clients after that client has been identified as an acceptable
destination for the incoming communication connection;

the waiting device configured to receive the forwarded
incoming communication connection and hold the forwarded
incoming communication connection until the acceptable
destination is available for receiving the forwarded incoming
communication connection;

the second processing unit configured to interactively
request further information while the incoming communication
connection is held by the waiting device; and

a call distribution device configured to receive the
information requested by the first processing unit and the
further information requested by the second processing unit to
determine at least one client of the plurality of clients that is the
acceptable destination and communicate the acceptable
destination to the communication server.

(disputed limitations emphasized

REJECTIONS
1. Claims 9-11, 20, 21, 27, and 28 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Draginich (US Patent No.
6,560,329 B1), and further in view of Judkins (US Patent No.
6,587,556 B1).
2. Claims 12-14 and 22-23 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Draginich, Judkins,
and Brown (U.S. Patent No. 7,139,390).
3. Claims 15 and 24-26 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Draginich and Brown.
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Application 11/044,132

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4. Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.

Rejection under 35 U.S.C. §112, second paragraph
At the outset, we pro forma sustain the Examiner’s rejection of
claim 28 under 35 U.S.C. § 112, second paragraph, as being indefinite,
because Appellant admits that the antecedent basis problem for “the
alternative client” may be cured by an amendment. (Reply Br. 1). We note
that the Examiner withdrew the rejection of claims 15 and 23-26 under 35
U.S.C. § 112, second paragraph. (See Ans. 3).

GROUPING OF CLAIMS
Based on Appellant’s arguments and claim grouping (App. Br. 8-11),
we decide the appeal of the first-stated obviousness rejection of on the basis
of representative claim 9. See 37 C.F.R. § 41.37(c)(1)(iv). The remaining
claims are addressed infra.
ISSUES
Under § 103, did the Examiner err in finding that the cited references,
either alone or in combination, would have taught or suggested the following
disputed limitation :
the waiting device configured to receive the forwarded
incoming communication connection and hold the forwarded
incoming communication connection until the acceptable
destination is available for receiving the forwarded incoming
communication connection,
within the meaning of independent claim 9 (emphasis added)?

Appeal 2010-011592
Application 11/044,132

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ANALYSIS (§103)
Appellant contends, inter alia:
The Examiner cited Draginich et al. as disclosing a call
server holding an incoming call for interactive communication
until a desired agent is selected at Column 6, line 9 through
Column 7, line 4. (Office Action of August 18, 2009, at 4). To
the contrary, the call server 22 in Draginich et al. does not have
any waiting device and is not configured to hold a call. (See e.g.
Draginich et al. at Figure 4 and Col. 6, lines 27-29). As
explicitly disclosed in Draginich et al., a routing controller 20 is
holding a call. The routing controller 20 is not the call server
22, as may be appreciated from Draginich et al. (See e.g.
Draginich et al., Figures 2,5, 6A, 6B, Col. 6, line 9- Col. 7, line
4). As explicitly taught by Draginich et al. "The routing
controller 20 continues to cue the call if a suitable agent exists,
but is not in the ready state." (Draginich et al., at Col. 6, lines
27-29) (emphasis added). Draginich et al. also teach that "the
routing controller uses the call information received from the
call server ... to determine how to process the call." (Draginich
et aI., at Col. 6, lines 14-19) (emphasis added).
Draginich et al. clearly do not teach or suggest any call
server that includes a waiting device as required by claim 9.
Indeed, the call server 22 of Draginich et al. does not cue or
otherwise hold any call. To the contrary, the routing controller
20 holds the call as taught by Draginich et al.
(App. Br. 9-10) (emphasis added.)
The Examiner disagrees:
Since the call server is holding the call and the call is waiting at
the call server, the call server is able to perform these
interactive telephony functions of prompting the caller and
holding the call waiting for the caller responses for the call
(Draginich, col. 5 ll. 52-67). This is similar to central office or
signal switching point (SSP) as a call server querying the
service control point (SCP) as a routing controller and receiving
call handling directives in advanced intelligent network (AIN)
as was well known in the art. In such case, the central office or
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SSP suspends and holds the call to send query to SCP and get
response from SCP for processing the call. Thus, the call server
(Fig. 2 item 22) with its waiting device (Fig. 2 item 48 VRU as
caller promoting unit) in Draginich suspends and holds call
and makes the call wait during interaction of prompting the
caller and waiting for response from the caller. Draginich
clearly teaches that the routing controller merely receives call
information data messages from the call server and directs the
call server using data messages to process the call (Draginich,
col. 5 II. 64-67, col. 6 II. 9-20), while the call is waiting at the
call server.
Further, the Appellant has argued that "Eliminating the
holding of calls made by the routing controller 20 of Draginich
et al, would impermissibly alter the principle of operation for
the system taught by Draginich et al, Indeed, Draginich et al.
teach that the routing controller is critical to the holding of calls
and determines where to route a call it is holding. (See e.g., Col.
6, lines 14-19 and 27-29 and Figure 4)" (Appeal Brief, pg. 10).
The Examiner respectfully disagrees. There is no disclosure in
Draginich that the routing controller is critical to holding the
call. Contrary to this alleged assertion by the Appellant,
Draginich clearly teaches that the call server with special
programs and local database within itself performs all
interactions with the caller and makes call routing decisions
automatically by itself (Draginich, col. 7 ll. 51-col. 8 ll. 15).
Thus, the routing controller is NOT critical to the functioning of
Draginich system.
(Ans. 15-16).
We begin our analysis with claim construction of the disputed claim
term “waiting device.” (Independent claims 9, 13, and 15). During patent
examination, the pending claims must be given their broadest reasonable
interpretation consistent with the specification. In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000).
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When we look to Appellant’s Specification for context, we observe
that the claimed waiting device is described as providing “a waiting melody
or an audio file containing music and speech”:
In addition, the processing unit IVl terminates the
communication connection element al and transfers an
instruction to the switching center VE when the communication
connection element al is cleared down, according to which
instruction the communication connection a is connected to a
waiting device Wl ("waiting field") at the communication node
KNl by the switching center VE via the (internal)
communication connection element a2. The caller then hears a
waiting melody or an audio file containing music and speech.
In 25 the case of "multimedia clients", it is naturally also
possible to use video clips or the like as "waiting information".
(Spec. 10, ll. 15-27).
The Examiner finds the claimed waiting device is taught or suggested
by Draginich’s VRU (item 48, Fig. 20):
Thus, the call server (Fig. 2 item 22) with its waiting device
(Fig. 2 item 48 VRU as caller prom[p]ing unit) in Draginich
suspends and holds call and makes the call wait during
interaction of prompting the caller and waiting for response
from the caller.
(Ans. 16).
We observe that Draginich expressly teaches that “[t]he call sever 22
may operate the caller prompting unit 48 to play a welcoming message to the
waiting caller (step 88)” (Draginich, col. 5, ll. 58-60, emphasis added):
The call server 22 may operate the caller prompting unit 48 to
play a welcoming message to the waiting caller (step 88). Then,
the caller prompting unit 48 plays a menu 56 to the caller (step
89). The menu includes one or more questions based on the
directive of the routing controller 20. The caller responds, for
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example, by using dial pad tones or by voice 58. After receiving
the caller's responses, the call server 22 transmits a message 60
with call information including the caller responses to the
routing controller 20 (step 90).
(Draginich, col. 5, ll. 58-67, emphasis added).
Given these teachings regarding the caller prompting unit 48 which
operates under the control of Draginich’s server 22 to play a welcoming
message to the waiting caller (Id.), we find the weight of the evidence
supports the Examiner’s position. Thus, we find no support for the
Appellant’s additional contention that “[t]he Examiner has also failed to
meet his burden of showing how one of ordinary skill in the art would be
motivated to give a call server functionality for holding a communication
connection when the cited prior art shows that a call server is not utilized for
such functionality.” (App. Br. 10, last paragraph). Moreover, Appellant
does not directly address the Examiner’s findings regarding Draginich’s
caller prompting unit 48 in the Reply Brief. We also observe that Appellant
expressly admits that at least Draginich’s “routing controller 20 is holding a
call” 1 (App. Br. 9, ¶3), which lends support to the Examiner’s additional
finding that such holding (i.e., wait) devices were well known in the art.
(Ans. 16, l. 3).
Appellant’s arguments notwithstanding, on this record we are not
persuaded that the Examiner’s claim construction is overly broad,
unreasonable, or inconsistent with the Specification. Because we are not

1 Cf. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed.
Cir. 2009) (In the context of §103, “[c]ombining two embodiments disclosed
adjacent to each other in a prior art patent does not require a leap of
inventiveness.”).
Appeal 2010-011592
Application 11/044,132

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persuaded of Examiner error, we sustain the Examiner’s obviousness
rejection of representative claim 9. Associated dependent claims 10, 11, 27,
and 28 (not argued separately) fall with independent claim 9. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 20 and 21
Although Appellant nominally argues claims 20 and 21separately, the
arguments are similar to those presented for claim 9 − Appellant again
contends that Draginich’s server does not include a waiting device. (App.
Br. 12). We do not find this argument persuasive for the reasons discussed
above regarding claim 9. Therefore, we sustain the rejection of claims 20
and 21 for the reasons discussed above regarding caller prompting unit 48
(i.e., corresponding to the claimed wait device) which operates under the
control of Draginich’s server 22 to play a message to the waiting caller.
(Draginich, col. 5, ll. 58-67; see also Fig. 4).
Claims 12-14, 22, and 23
Although Appellant nominally argues these claims as a separate group
(App. Br. 12-13), the arguments urging patentability are based on the same
arguments previously advanced for claim 9, which we do not find
persuasive. Therefore, we sustain the second -stated rejection of claims
12-14, 22, and 23 for the same reasons discussed above regarding caller
prompting unit 48 (i.e., corresponding to the claimed wait device) which
operates under the control of Draginich’s server 22 to play a message to the
waiting caller. (Draginich, col. 5, ll. 58-67; see also Fig. 4).

Appeal 2010-011592
Application 11/044,132

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Claims 15 and 24-26
Although Appellant nominally argues these claims as a separate
group, the arguments urging patentability are based on the same arguments
previously advanced for claim 9, which we do not find persuasive.
Therefore, we sustain the third-stated obviousness rejection of claims 15,
and 24-26 for the same reasons discussed above regarding caller prompting
unit 48 (i.e., corresponding to the claimed wait device) which operates under
the control of Draginich’s server 22 to play a message to the waiting caller.
(Draginich, col. 5, ll. 58-67; see also Fig. 4).

DECISION
We affirm the Examiner’s rejections of claims 9-15 and 20-28 under
§ 103.
We affirm the Examiner’s rejection of claim 28 under § 112, second
paragraph.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

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