Ex Parte NguyenDownload PDFPatent Trial and Appeal BoardMay 7, 201411561574 (P.T.A.B. May. 7, 2014) Copy Citation 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 2 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). Appeal 2011-009901 Application 11/561,574 3 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). Appeal 2011-009901 Application 11/561,574 4 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 Appeal 2011-009901 Application 11/561,574 5 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, Appeal 2011-009901 Application 11/561,574 6 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 Appeal 2011-009901 Application 11/561,574 7 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). Appeal 2011-009901 Application 11/561,574 8 AFFIRMED tj Copy with citationCopy as parenthetical citation