Ex Parte Yoakum

Patent Trial and Appeal Board

Jan 25, 2017

12980968 (P.T.A.B. Jan. 25, 2017)

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.
12/980,968 12/29/2010 John H. Yoakum 4366-956 5667
48500 7590
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
MOHAMMED, ASSAD
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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_Avay a @ 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 JOHN H. YOAKUM
Appeal 2016-004078
Application 12/980,9681
Technology Center 2600
Before KRISTEN L. DROESCH, MATTHEW J. McNEILL, and
ALEX S. YAP, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1-9 and 11-21, which are all the claims pending in
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Avaya Inc. Br. 1.
2 Claim 10 is canceled. Br. 16.
Appeal 2016-004078
Application 12/980,968
STATEMENT OF THE CASE
Introduction
Appellant’s application relates to delivering prioritized audio
messages to a recipient. Abstract. Claim 1 is illustrative of the appealed
subject matter and reads as follows with the disputed limitations italicized'.
1. A method for delivering a message, comprising:
receiving, by a computing device, a plurality of audio
messages destined for a recipient from a corresponding plurality
of senders, respective ones of the plurality of audio messages
including a corresponding first sender designated priority
designated by a corresponding sender, the plurality of senders
and the recipient being members of a messaging system;
accessing, by the computing device, member
configuration data that identifies a first recipient prioritization
attribute, the first recipient prioritization attribute being based at
least in part on a message attribute associated with the respective
ones of the plurality of audio messages;
determining, for the respective ones of the plurality of
audio messages, an aggregate message priority value based on a
first weight associated with the corresponding first sender
designated priority and a second weight associated with the first
recipient prioritization attribute;
generating, by the computing device, a prioritized list of
the plurality of audio messages based on the aggregate message
priority value associated with the respective ones of the plurality
of audio messages; and
providing, by the computing device, a subset of the
plurality of audio messages from a top of the prioritized list to a
client device associated with the recipient [the “providing” step].
The Examiner’s Rejections
Claims 1, 4-7, 11, 13, and 16-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Perkowitz et al. (US 8,095,613 Bl; Jan. 10,
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Appeal 2016-004078
Application 12/980,968
2012), Dillard et al. (US 7,590,226 B2; Sept. 15, 2009), and Hale et al. (US
2008/0075244 Al; Mar. 27, 2008). Final Act. 3-19.
The Examiner adds Stifelman et al. (US 8,126,120 B2; Feb. 28, 2012)
to reject claim 2 (Final Act. 19-20); Kung (EP 1113631 Al; July 4, 2001) to
reject claim 3 (Final Act. 20-21); Cai (US 2007/0274468 Al; Nov. 29,
2007) to reject claims 8 and 9 (Final Act. 22-24); Cai, Moore (US
2011/0161436 Al; June 30, 2011), and Balasaygun et al. (US 8,306,191 B2;
Nov. 6, 2012) to reject claim 12 (Final Act. 24-27); Inon (US 7,522,712 B2;
Apr. 21, 2009) to reject claim 14 (Final Act. 27-28); and Balasaygun to
reject claim 15 (Final Act. 29-30).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
contentions. 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. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Appellant argues the Examiner erred in rejecting claim 1 because the
combination of Perkowitz, Dillard, and Hale does not teach or suggest
“providing, by the computing device, a subset of the plurality of audio
messages from a top of the prioritized list to a client device associated with
the recipient.” Br. 9-11. In particular, Appellant argues the cited portion of
Hale teaches organizing a list of messages such that higher priority messages
appear at the top of the list, but does not teach limiting the provision of
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Appeal 2016-004078
Application 12/980,968
messages to “a subset of the plurality of audio messages from a top of the
prioritized list.” Br. 10.
Appellant has not persuaded us the Examiner erred in finding Hale
teaches or suggests the “providing” step. As a matter of claim construction,
we apply the broadest reasonable interpretation of claim terms, consistent
with the specification, as would be understood by one of ordinary skill in the
art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Accordingly, arguments must be commensurate in scope with the actual
claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 1 recites “a method for delivering a message, comprising” five
steps. The term “comprising” is open-ended and does not exclude
additional, unrecited elements or method steps. CIAS, Inc. v. Alliance
Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). Claim 1 requires that
the computing device provide a subset of the plurality of audio messages,
but because “comprising” is open-ended, claim 1 does not preclude the
remainder of the plurality of audio messages from also being provided.
As acknowledged by Appellant (Br. 10), Hale teaches sorting a list of
a plurality of audio messages such that higher priority messages are at the
top of the list. Hale 133. Hale teaches providing these sorted messages to
the user. See, e.g., Hale Fig. 2. Appellant’s argument assumes that the
claim language requires providing only a subset of the plurality of audio
messages, not the entire set of the plurality of audio messages, but claim 1
does not recite such a limitation. Accordingly, Appellant’s argument is
unpersuasive because it is not commensurate with the scope of the claim.
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Application 12/980,968
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Perkowitz, Dillard, and Hale teaches or suggests the
“providing” step. We, therefore, sustain the rejection of claim 1. Appellant
argues the patentability of independent claims 16 and 20 for the same
reasons as claim 1. Br. 11. We, therefore, sustain the rejection of
independent claims 16 and 20 for the same reasons. We also sustain the
rejections of claims 2-9, 11-15, 17-19, and 21, which were not argued
separately from their respective independent claims. Br. 11-13.
DECISION
We affirm the decision of the Examiner to reject claims 1-9 and 11-
21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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