Ex Parte Kovales et al

Board of Patent Appeals and Interferences

Jul 18, 2012

09782772 (B.P.A.I. Jul. 18, 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.
09/782,772 02/13/2001 Renee M. Kovales RSW920000127US1 2011
75949 7590 07/19/2012
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
PHAN, JOSEPH T
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
07/19/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RENEE M. KOVALES, EDITH S. STERN,
and BARRY E. WILLNER
____________________

Appeal 2010-011321
Application 09/782,772
Technology Center 2600
____________________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 6-14, 17-33, 35, 37-41, 44-58, 61-68, and 71-88. Claims 2, 4, 5,
15, 16, 34, 36, 42, 43, 59, 60, 69, 70, and 89-91 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF CASE
Introduction
Appellants’ invention relates to providing bookmarks for voice mail
messages in order to facilitate improved navigation thereof (see Abstract).
Claim 1 reproduced below with disputed limitations emphasized, is
illustrative of the claimed subject matter:
1. A method comprising:
providing bookmarks for a voice mail message by a
caller leaving the voice mail message; and
creating a bookmarked message from the voice mail
message and the bookmarks,
wherein at least two of the bookmarks are used to mark
respective segments of the voice mail message as having
degrees of importance, and wherein at least some of the
bookmarks correspond to respective topics and some of the
respective segments have different ones of the degrees of
importance.

The Examiner’s Rejections
The Examiner rejected claims 1, 3, 6, 7, 12-14, 17-20, 22-33, 35, 37,
41, 44-47, 49-58, 61, 62, 67, 68, 71, 72, and 74-88 under 35 U.S.C. § 103(a)
as being unpatentable over Hamel (US 5,943,402, Aug. 24, 1999), in view of
Valco (US 6,442,243 B1, Aug. 27, 2004). Ans. 3-8.
The Examiner rejected claims 8-10, 12, 38, 40, and 63-66 under 35
U.S.C. § 103(a) as being unpatentable over Hamel in view of Valco further
in view of Parsons (US 6,970,906 B1, Nov. 29, 2005). Ans. 8-9.
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The Examiner rejected claims 11, 21, 39, 48, and 73 under 35 U.S.C.
§ 103(a) as being unpatentable over Hamel in view of Valco further in view
of Haddock (US 5,742,736, Apr. 21, 1998). Ans. 9-10.

Appellants’ Contentions
With respect to exemplary claim 1, Appellants contend that the
Examiner erred in rejecting the claim because neither Hamel nor Valco
teaches or suggests “at least two of the bookmarks are used to mark
respective segments of the voice mail message as having degrees of
importance” and “some of the respective segments have different ones of the
degrees of importance.” (Br. 11). Appellants specifically point to the
teachings of Valco (citing to col. 12, lines 55-59) related to the marking of
voicemails as urgent or private (id.), and contend that “Valco only teaches
marking an entire voicemail message with a single degree of importance,
Valco cannot teach or suggest a single voice mail message having different
degrees of importance associated therewith.” (Br. 11-12).
Finally, Appellants contend that neither Hamel nor Valco teaches or
suggests bookmarks that not only segment a voicemail message, but also
indicate the degree of importance associated with each segment. (Id.).
With respect to the remaining claims, Appellants recite the limitations
of claims 71, 12, 13, 22, and 242, and assert that the references do not teach
or suggest the limitations they are purported to teach (Br. 16-19).
Appellants further assert the patentability of claims 8-10, 12, 38, 40, and 63-

1 Appellants admit that claims 37 and 62 “recite similar subject matter” as
claim 7. (Br. 16).
2 Appellants have grouped together claims 24, 49, and 74. (Br. 19).
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66 based on the same reasons stated for claims 1, 33, and 57, respectively.
(Br. 19). Finally, Appellants assert the patentability of claims 11, 21, 39, 48,
and 73 based on the same reasons stated for claims 1, 33, and 57,
respectively. (Br. 20).

Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
Hamel and Valco because the references fail to teach or suggest “at least two
of the bookmarks are used to mark respective segments of the voice mail
message as having degrees of importance” and “some of the respective
segments have different ones of the degrees of importance?”

ANALYSIS
Rejection #1: The Obviousness Rejection over Hamel and Valco
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 10-20) that the Examiner has erred. We
disagree with Appellants’ conclusions.
We concur with the conclusions reached by the Examiner (Ans. 3-13).
We also agree with the Examiner’s findings with respect to the individual
references, and with the Examiner’s determination that it would have been
obvious to combine the references based on the rationale set forth by the
Examiner (Ans. 3-4). We note that each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
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Appellants make arguments with regard to claim 1 (Br. 10-13)
concerning the individual shortcomings in the teachings of each of the
applied references to Hamel and Valco. We have carefully reviewed these
arguments, however, and they are not convincing of the non-obviousness of
the claimed invention set forth in representative claim 1. For example,
Appellants criticize Hamel and Valco individually for not teaching or
suggesting “at least two of the bookmarks are sued to mark respective
segments of voice mail messages as having degrees of importance” and that
“some of the respective segments having different ones of the degrees of
importance”, when the Examiner has relied upon the combination of Hamel
and Valco to teach or suggest these features. One cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references. In re Merck, 800 F.2d at 1097.
We note that the Examiner has combined Hamel’s “teach[ing]
segmentation (bookmarking) of a voicemail message (Hamel Fig.3A-3B and
co1.1 lines 58-67)” with Valco’s “teach[ing] the degrees of importance
(Valco co1.12 lines 55-59).” (Ans. 11). We agree with the Examiner’s
stated rationale for combining the references (see, e.g., Ans. 3-4) and adopt
them as our own.
Additionally, we note the Examiner has identified the relevant
portions of Hamel and Valco and has properly equated the features disclosed
in the references with the disputed features in claim 1. In response to each
of the arguments raised by Appellants, the Examiner has presented detailed
findings and responses (Ans. 3-13). We agree with these findings and
conclusions and adopt them as our own. Regarding Appellants’ contention
challenging the propriety of the rejection and whether the proposed
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combination teaches or suggests all the claimed features, we find that the
Examiner has articulated how the claimed features are met by the reference
teachings with a rational underpinning to combine Hamel and Valco. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
With respect to the rejection of dependent claims 7, 12, 13, 22, and
24, we also agree with the Examiner’s findings and conclusions (Ans. 4-13)
that the combination of Hamel and Valco teaches or suggests the disputed
features of these claims.
In view of the foregoing, we conclude that the inventions recited in
claim 1 and claims 3, 6, 7, 12-14, 17-20, 22-33, 35, 37, 41, 44-47, 49-58, 61,
62, 67, 68, 71, 72, and 74-88, not separately argued, have not been shown to
be patentably distinguishable from the combined teachings of the applied
prior art.

Rejection #2: The Obviousness Rejection over Hamel, Valco, and
Parsons
The Examiner finds that Hamel is “silent about disclosing wherein at
least one of the special types of information is one of a: callback telephone
number for the caller; a callback time at which to respond to the voice mail
message; a callback date on which to respond to the voice mail message; a
name of the caller; a URL; or an email address.” Ans. 8. The Examiner cites
Parsons as teaching these features. Ans. 8-9. The Examiner adds that it
would have been obvious to combine the references, which are all in the
same field—“managing voicemails.” Ans. 8.
Appellants raise no new arguments for this rejection, instead relying
on arguments that were previously addressed. Br. 19-20. For the same
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reasons addressed above, we sustain the rejections of claims 8-10, 12, 38,
40, and 63-66.

Rejection #3: The Obviousness Rejection over Hamel, Valco, and
Haddock
Appellants raise no new arguments for this rejection, instead relying
on arguments that were previously addressed. Br. 20. For the same reasons
addressed above, we sustain the rejections of claims 11, 21, 39, 48, and 73.

CONCLUSIONS
The Examiner’s rejection of claims 1, 3, 6, 7, 12-14, 17-20, 22-33, 35,
37, 41, 44-47, 49-58, 61, 62, 67, 68, 71, 72, and 74-88 under 35 U.S.C.
§ 103(a) as being unpatentable over Hamel and Valco is affirmed.
The Examiner’s rejection of claims 8-10, 12, 38, 40, and 63-66 under
35 U.S.C. § 103(a) as being unpatentable over Hamel, Valco and Parsons is
affirmed.
The Examiner’s rejection of claims 11, 21, 39, 48, and 73 under 35
U.S.C. § 103(a) as being unpatentable over Hamel, Valco, and Haddock is
affirmed.

DECISION
The Examiner’s rejections of claims 1, 3, 6-14,17-33, 35, 37-41, 44-
58, 61-68, and 71-88 under 35 U.S.C. § 103(a) is affirmed.
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).
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AFFIRMED

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