Ex Parte Nguyen

Patent Trial and Appeal Board

May 7, 2014

11561574 (P.T.A.B. May. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HAI DUONG NGUYEN
____________________

Appeal 2011-009901
Application 11/561,574
Technology Center 2600
____________________

Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
JEREMY M. PLENZLER, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009901
Application 11/561,574

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STATEMENT OF CASE1
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-20, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Appellant invented a system and method for a subscriber of a first
mobile device to place a second party associated with a second mobile
device on hold, wherein a multimedia component provides the on-hold party
with multimedia content. Specification ¶¶ 0004-0007.
An understanding of the invention can be derived from a reading of
exemplary claim 15, which is reproduced below:
15. A system for multimedia hold, comprising:
a telecommunications network operable to promote
communication between at least a first and second mobile
device; and
a component operable such that when the users of the
first and second mobile devices are communicating and the user
of the first mobile device places the communication on hold,
the component promotes providing to the second mobile device
multimedia through a connection in-between the second mobile
device and the component wherein the component is configured
to reconnect the first and second mobile device after the first
user resumes the communication.

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Feb. 14, 2011), Reply Brief (“Reply Br.,” filed May 2, 2011), and the
Examiner’s Answer (“Ans.,” mailed Mar. 1, 2011).
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REFERENCES
The Examiner relies on the following prior art:
Gerszberg et al.
Bilder
McCormack et al.
Storrie et al.

US 6,020,916
US 6,400,804 B1
US 6,853,719 B2
US 2008/0080478 A1

Feb. 1, 2000
Jun. 4, 2002
Feb. 8, 2005
Apr. 3, 2008

REJECTIONS
Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bilder and McCormack. Ans. 3-6.
Claims 1-11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bilder, Storrie, and McCormack. Ans. 6-11.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bilder, Storrie, McCormack, and Gerszberg. Ans. 11.

ISSUE
The issue of whether the Examiner erred in rejecting the claims as
being unpatentable over the cited prior art turns on whether the combination
of Bilder and McCormack teaches or suggests a “component [ ] configured
to reconnect the first and second mobile device after the first user resumes
the communication,” as recited by independent claim 15, and as similarly
recited by independent claim 12, and “the multimedia provided to the second
mobile device is designated by the user of the first mobile device,” as recited
by dependent claim 16.

2 Claim 1 recites “multimedia hold server disconnects the media path
between the first and second mobile device” (emphasis added).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions that the Examiner has erred.
We disagree with the Appellant’s conclusions. 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 the Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

Claims 15-20 Rejected under 35 U.S.C. § 103(a) as Being
Unpatentable over the Cited Bilder and McCormack
A. Independent Claim 15
Appellant acknowledges that McCormack discloses that the music-on-
hold (MOH) server promotes providing the second mobile device with
multimedia while the call server instructs the phone to reconnect the first
and second device, but Appellant contends that the combination of Bilder
and McCormack does not teach or suggest a single component that both
“promotes providing to the second mobile device multimedia” and is also
“configured to reconnect the first and second mobile device.” App. Br. 15.
Although Appellant acknowledges that the call server described in
McCormack is configured to reconnect the first and second device,
Appellant argues that the call server in McCormack does not also “promote[]
providing to the second mobile device multimedia through a connection in-
between the second mobile device . . .” Id.
We are not persuaded by this argument. The Examiner found that
Bilder discloses an on-hold activity selection device and only relied on
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McCormack to disclose a server for reconnecting the first and second
device. Ans. 4-5. Based on the combination of these teachings, the
Examiner concluded that modifying Bilder’s on-hold activity selection
device to include McCormack’s feature of reconnecting the first and second
device would have been obvious. Ans. 5. Accordingly, Appellant’s
argument that McCormack’s call server fails to describe “providing to the
second mobile device multimedia” is tantamount to an attack on the
references individually because the Examiner has relied on Bilder to
describe this functionality. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).

B. Dependent Claim 16
Appellant asserts that the combination of Bilder and McCormack fails
to teach or suggest the limitation “wherein the multimedia provided to the
second mobile device is designated by the user of the first mobile device,” as
recited in claim 16. App. Br. 16-17. Appellant specifically argues that
“Bilder does not teach how the message from [the user of the first mobile
device] is included in the menu options presented to [the on-hold party].”
Reply Br. 4.
We are not persuaded by this argument. Although the Specification
provides examples as to how the first mobile device user may choose
different combinations of multimedia elements to be displayed on the call
hold screen of a particular holding party, claim 16 does not recite these
limitations. Although the claims are interpreted in light of the specification,
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limitations from the specification are not read into the claims. See In re Van
Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Claim 16 requires that the multimedia provided to the second device
is designated or specified by the user of the first mobile device. Bilder
describes a custom message from the user of the first mobile device may be
presented to the second mobile device as a multimedia option. Bilder, 7:60-
63. We find that this custom message provided by the user of the first
mobile device in Bilder is a multimedia message provided to the second
mobile device that is designated by the first user. Accordingly, we are not
persuaded that the Examiner erred in rejecting claim 16.

Claims 1-11, 13, and 14 Rejected under 35 U.S.C. § 103(a) as
Being Unpatentable over the Cited Bilder, Storrie and
McCormack
Appellant states that the combination of Bilder, Storrie, and
McCormack does not teach or suggest “the at least one extended markup
language file comprising information for layouts and contents of a call hold
screen,” as recited in claim 1, and similarly recited in claim 8. App. Br. 18.
Appellant, however, merely recites the rejection set forth by the Examiner
and states that the cited prior art references do not describe the disputed
limitation. App. Br. 18. We do not find these statements to be tantamount
to arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
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were not found in the prior art.”). Accordingly, we are not persuaded that
the Examiner erred in rejecting claims 1-11, 13, and 14.

Claim 12 Stands Rejected under 35 U.S.C. § 103(a) as Being
Unpatentable over the Cited Bilder, Storrie, McCormack, and
Gerszberg
Appellant argues that the Examiner erred in rejecting claim 12 for the
same reasons asserted above in support of claim 8. App. Br. 19. We are not
persuaded by Appellant’s argument in support of claim 8 and accordingly
we are not persuaded that the Examiner erred in rejecting claim 12 here for
the same reasons.

CONCLUSION
The Examiner did not err in rejecting claims 15-20 under 35 U.S.C. §
103(a) as unpatentable over Bilder and McCormack.
The Examiner did not err in rejecting claims 1-11, 13, and 14 under
35 U.S.C. § 103(a) as unpatentable over Bilder, Storrie, and McCormack.
The Examiner did not err in rejecting claim 12 under 35 U.S.C. §
103(a) as being unpatentable over Bilder, Storrie, McCormack, and
Gerszberg.

DECISION
The rejection of claims 1-20 is sustained.

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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