Ex Parte Naik et alDownload PDFPatent Trial and Appeal BoardMar 8, 201612854863 (P.T.A.B. Mar. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/854,863 08/11/2010 61947 7590 03/10/2016 Apple - Blank Rome c/o Blank Rome LLP 717 Texas Avenue, Suite 1400 HOUSTON, TX 77002 FIRST NAMED INVENTOR Devang K. Naik 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. P9057US1 (119-0406US1) 8725 EXAMINER PATEL, NIMESH ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 03/10/2016 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): mbrininger@blankrome.com houstonpatents@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEV ANG K. NAIK and KEVIN TIENE Appeal2014-002889 Application 12/854,863 Technology Center 2600 Before ROBERT E. NAPPI, JAMES W. DEJMEK, and JOHN D. HAMANN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 4, 8 through 10, 12 through 21, and 23 through 25. The Examiner has identified claims 5 and 6 as being allowable if written in independent form. Answer 2. We affirm-in-part. INVENTION Appellants' invention relates to a method that allows call participants to transfer more easily media items to other call participants using one or more user interfaces. Abstract. Appeal2014-002889 Application 12/854,863 Claim 1 is illustrative of the invention and is reproduced below: 1. A computer-implemented method performed by one or more hardware processors of a mobile device, comprising: detecting an ongoing voice call; presenting, in response to the detection of the ongoing voice call, a user interface to enable selection of media items to transfer to a participant of the ongoing voice call; receiving, via the user interface, a selection of one or more media items; automatically binding the one or more media items to the voice call in response to the received selection; receiving a request to transfer the one or more media items; and transferring the one or more media items to the call participant based on the binding. REJECTION AT ISSUE The Examiner has rejected claims 1through4, 8 through 10, 12 through 21, and 23 through 25 under 35 U.S.C. § 103 as unpatentable over Schmidt (US 200710160085 A 1; July 12, 2007) and Donoghue (US 2006/0193448 Al; Aug. 31, 2006). Final Office Action 8-31. 1 ISSUES Independent Claims 1 and 1 7 Appellants argue, on pages 9 through 12 of the Appeal Brief, and pages 3 through 5 of the Reply Brief, that the Examiner's rejection of independent claims 1 and 17 is in error. These arguments present us with 1 Throughout this opinion we refer to the Appeal Brief filed August 5, 2013; Reply Brief filed December 23, 2013; Final Office Action mailed March 13, 2013; and the Examiner's Answer mailed on October 25, 2013. 2 Appeal2014-002889 Application 12/854,863 the issue: Did the Examiner err in finding the combination of Schmidt and Donoghue teaches or suggests automatically binding media items to an on- going voice call as recited in representative claim 1? Independent claims 12 and 23 Appellants' arguments on pages 12 and 13 of the Appeal Brief, directed to the Examiner's rejection of independent claims 12 and 23 present us with the issue: Did the Examiner err in finding the combination of Schmidt and Donoghue teaches or suggests automatically binding media items to a voice call before initiating the call? Independent claims 15 and 25 Appellants' arguments on pages 13 and 14 of the Appeal Brief, directed to the Examiner's rejection of independent claims 15 and 25 present •,1 .1 • T"""\,.. 1 .1 T"""'1 • • (""" 1• .1 1. ,. .. us wnn me issue: u10 1ne bXammer err m nnamg me comomauon or Schmidt and Donoghue teaches or suggests determining that an incoming voice call includes bound media items? Dependent claims 3 and 19 Appellants' arguments on pages 14 and 15 of the Appeal Brief, directed to the Examiner's rejection of dependent claims 3 and 19 present us with the issue: Did the Examiner err in finding the combination of Schmidt and Donoghue teaches or suggests selecting a communication modality? 3 Appeal2014-002889 Application 12/854,863 Dependent claim 4 Appellants' arguments on page 15 of the Appeal Brief, directed to the Examiner's rejection of dependent claim 4 presents us with the issue: Did the Examiner err in finding the combination of Schmidt and Donoghue teaches or suggests transferring the media over a secure data channel? Dependent claim 9 Appellants' arguments on pages 15 and 16 of the Appeal Brief, directed to the Examiner's rejection of dependent claim 9 presents us with the issue: Did the Examiner err in finding the combination of Schmidt and Donoghue teaches or suggests attaching media items to a voice or video mail message? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. Further, we have reviewed the Examiner's response to Appellants' arguments. We disagree with Appellants' contention that the Examiner erred in rejecting claims 1, 2, 3, 8, 10, and 17 through 21under35 U.S.C. § 103. However, we agree with Appellants that the Examiner erred in rejecting claims 4, 9, 12 through 16, and 23 through 25 under 35 U.S.C. § 103. Claims 1, 2, 8, 10, 17, 18, 20, and 21 Appellants assert that automatically binding within claim 1 requires: detecting an ongoing voice call, presenting a user interface to select a media item, and receiving the selection. App. Br. 9-10. Appellants argue Schmidt teaches a linkage of a media device with a communication session such that 4 Appeal2014-002889 Application 12/854,863 the relationship can be recognized by the recipient, but the linkage is not automatic. App. Br. 10-11. Further, Appellants argue Donoghue teaches generating a message to be sent during a voice call but does not teach binding that message to the call so the recipient of the message can discover the message is bound to the call. App. Br. 11. In response to Appellants' arguments, the Examiner finds Schmidt teaches a system in which video images are transmitted with a voice call. Answer 13. Further, the Examiner finds Schmidt teaches the communication terminal has a display in which a user can construct the supplementary data. Answer 13-14. Additionally, the Examiner finds Donoghue teaches a system where the user can send supplemental data (e.g., a photo or image) and the user device automatically forms and transmits the data message. Answer 13-14. We concur with the Examiner and are not persuaded of error by Appellants' arguments. Initially, we note that we do not construe the term "binding" to require that the recipient discover the message is bound to the call as argued by Appellants. Appellants' Specification does not specifically define "binding," however it is discussed as a process where the media item is coupled to a communication session. See generally paragraphs 4--10. We construe the claimed "binding" to mean that the multimedia item is associated or linked with the communication or call session. Given this interpretation, we consider both Schmidt and Donoghue teach binding, as the supplemental data is linked or coupled with the call. Inasmuch as the term could be construed as requiring the call and the multimedia content to be on the same transmission path, Schmidt teaches this. See Schmidt, para. 73. Further, we note Donoghue teaches that the user selecting the data 5 Appeal2014-002889 Application 12/854,863 element (i.e., multimedia object) results in automatic addressing of the data to the current call, which meets the claimed automatic binding. See Donoghue paras. 6, 8. Thus, Appellants' arguments directed to the Examiner's rejection of claim 1 have not persuaded us of error and we sustain the Examiner's rejection. As Appellants have not presented separate arguments directed to claims 2, 8, 10, 17, 18, 20, and 21, we similarly sustain the Examiner's rejection of these claims. Claims 12 through 14, 23, and 24 Appellants argue Schmidt teaches linking supplementary data to an active or previously conducted communication session, but does not teach linking prior to initiating the call. App. Br. 12. Further, Appellants argue Donoghue does not teach any actions occurring prior to initiating the call. App. Br. 13. In response, the Examiner finds Schmidt teaches a feature where the user can identify a communication session. Answer 7. Further, the Examiner finds Donoghue teaches a system where the user is able to compose and send a message using a voice call, and that the system may store messages in a queue until the network is available for transmission. Answer 8. We have reviewed the Examiner's response and the evidence relied upon by the Examiner. We agree with Appellants and do not find Schmidt and Donoghue teach automatically binding media items to a voice call before initiating the call. Accordingly, we do not sustain the Examiner's rejection of independent claims 12 and 23 or dependent claims 13, 14, 23, and 24, which recite after receiving an input for associating media with a content, initiating a voice call with the first contact. 6 Appeal2014-002889 Application 12/854,863 Claims 15, 16, and 25 Appellants argue independent claims 15 and 25 recite receiving an incoming call and determining that the call includes bound media items, which necessarily means that items are bound to the call prior to initiation of the call. App. Br. 13. Thus, Appellants argue the Examiner's rejection of these claims is in error because, as discussed with respect to claim 12, the prior art does not teach binding media items to a voice call before initiating the call. App. Br. 14. We concur with Appellants. As discussed above, the Examiner has not shown the prior art teaches media bound to a call prior to initiating a call, and as such, similarly does not teach determining if an incoming call has bound media. Accordingly, we do not sustain the Examiner's rejection of claims 15, 16, and 25. Claims 3 and 19 Appellants argue the Examiner has shown Schmidt teaches selecting an item to transfer but does not teach selecting a communication modality. App Br. 15. In response, the Examiner finds Schmidt teaches that there are several modalities which can be used to communicate the supplementary data. Answer 9-10. We concur with the Examiner, we also note Schmidt teaches that the modality selected to communicate the supplemental data is determined based upon user preferences (i.e., a user selection). See Schmidt para. 75. Thus, Appellants' arguments have not persuaded us of error in the Examiners' rejection of claims 3 and 19, and we sustain the Examiner's rejection. 7 Appeal2014-002889 Application 12/854,863 Dependent claim 4 Appellants argue the Examiner relies upon Schmidt to teach the limitation directed to transferring the data over a secure channel, but Schmidt does not teach such a channel. App Br. 15. In response to Appellants' arguments, the Examiner cites to paragraphs 1 7 and 65 of Schmidt to teach this feature. Answer 10-11. We have reviewed the cited teachings of Schmidt and do not find sufficient evidence to support the Examiner's finding that Schmidt teaches transferring media over a secure communication channel. Thus, Appellants' arguments have persuaded us of error in the Examiners' rejection of claim 4, and we do not sustain the Examiner's rejection. Dependent claim 9 Appellants argue the Examiner relies upon Schmidt to teach the limitation directed to attaching media items to a voice or video mail message. App Br. 15. In response to Appellants' arguments, the Examiner finds Schmidt teaches attaching video images or pictures to an ongoing call which meets the claimed attaching media items to a voice or video message. Answer 11. We have reviewed the teachings of Schmidt relied upon by the Examiner, and while we concur that Schmidt teaches attaching media to an ongoing call, we disagree that Schmidt teaches attaching media to a voice or video message. Accordingly, we do not sustain the Examiner's rejection of claim 9. 8 Appeal2014-002889 Application 12/854,863 DECISION We affirm the Examiner's rejections of claims 1, 2, 3, 8, 10, and 17 through 21under35 U.S.C. § 103. We reverse the Examiner's rejections of 4, 9, 12 through 16, and 23 through 25 under 35 U.S.C. § 103. 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-IN-PART 9 Copy with citationCopy as parenthetical citation