Ex Parte Suder et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10447607 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC G. SUDER and HAROLD E. A. HANSEN II
____________________

Appeal 2010-000868
Application 10/447,607
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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INTRODUCTION
Appellants request rehearing of our Decision (“Decision”) mailed
April 23, 2012, wherein we affirmed the rejection of claims 1-6, 8, 9, 17-20,
22, 24- 34, 36-38, and 40 as being unpatentable over various combinations
of references.

ANALYSIS
In their Request for Rehearing, Appellants allege that the Board’s
Decision misapprehended or Appellants’ arguments (Req. 8-9).

ISSUE 1
35 U.S.C. § 103(a): claims 1, 3, 8, 9, 17, 22, 24, 29, and 30
Claim 1
Appellants contend the references of Guy and Wilson cannot be
combined together “because the references had particular features that would
not lead one of ordinary skill in the art to the combination of the references”
(Req. 2). We disagree.
The Examiner relies upon Wilson as teaching or suggesting “first circuitry
for enabling a user of the first telecommunication device [coupled to the first
LAN] to observe/view a list of the plurality of telecommunications
extension” (which are coupled to the second LAN), and “second circuitry for
automatically calling one of the plurality of telecommunications extensions
in response to the user selecting one of the plurality of telecommunications
extensions from the observed list” (Ans. 4-5 and 11).
To justify combining reference teachings in support of a rejection it is
not necessary that a device shown in one reference can be physically
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inserted into the device shown in the other. In re Griver, 53 CCPA
815, 354 F.2d 377, 148 USPQ 197 (1966); In re Billingsley, 47 CCPA
1108, 279 F.2d 689, 126 USPQ 370 (1960). The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.
In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re
Passal, 57 CCPA 1151, 426 F.2d 828, 165 USPQ 720 (1970); In re
Richman, 57 CCPA 1060, 424 F.2d 1388, 165 USPQ 509 (1970); In
re Rosselet, 52 CCPA 1533, 347 F.2d 847, 146 USPQ 183 (1965).

In re Keller, 642 F.2d 413, 425 (CCPA 1981).

Here, Wilson teaches or suggests that an observer on one network can
observe a list of extensions in a second network (Ans. 3-4; Decision 5).
Thus, we agree with the Examiner that Appellants are arguing the references
individually. Additionally, although not relied upon, we agree with the
Examiner (Ans. 11) that Wilson teaches or at least suggests LAN/WAN
technology (see also, Fig. 4). (Note Appellants have indicated the WAN
may be several types of networks including a PSTN network (Spec. 6, ll. 4-
6; and Fig. 3).
Appellants argue the specific circuitry of Wilson (Req. 2-4); however,
the specific circuitry is not recited in claim 1. As both Wilson and Guy
teach or at least suggest the use of LANs and WANs, we find an ordinary
artisan at the time of the invention would have had the skills to connect LAN
and WAN networks.
Appellants further argue Wilson does not teach “automatically”
calling a telecommunication extension in response to the user selecting one
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of the telecommunications extensions from the observed list (Req. 2-4). We
disagree with Appellants that Wilson does not teach or suggest this feature
as set forth in our Decision (Decision 5). Thus, given the teaching or at least
suggestion of Wilson to automatically dial a selected number, we conclude it
would have been obvious to an ordinary artisan at the time of the invention.
Moreover, consistent with the Examiner’s and our conclusion (Ans. 12-14;
Decision 5-6) and, further, going to the obviousness of such a feature at the
time of the invention, we find incorporating the feature – speed dialing –
would have been within the skills of an ordinary artisan at the time of the
invention.
Therefore, Appellants did not persuade us of error in the Examiner’s
findings and conclusions. Accordingly, consistent with the Examiner’s
conclusions, we agree one of ordinary skill in the art at the time of the
invention would have found it obvious to combine the technique of Wilson
into the system of Guy.

Claim 30
Appellants argue we considered only certain citations in the
Specification as showing the “means plus function” limitations (Req. 5).
However, the Examiner set forth the portions of Wilson and Guy that taught
the specific “means plus function” limitations (Ans. 3-5). We agree with the
Examiner that the cited prior art teaches or at least teaches the “means plus
function” structure for the recited limitations.
Appellants have not persuaded us that the Examiner was in error.
Indeed, Appellants did not articulate sufficient evidence or argument in their
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Appeal Brief as to why the Examiner’s mapping is in error. Instead,
Appellants merely argued the Examiner had not interpreted the “means for”
language.
Moreover, as we noted, the only indication by Appellants as to the
corresponding structure for the “means plus function” limitations disclosed
general structure (Decision 7; App. Br. 6-7). For example, Appellants set
forth “[a]utomatic dialing of the selected telephone destination and a
response to selection of one of the telephone destinations from a displayed
list is described on page 22, lines 4-24” (App. Br. 6-7). Thus, based on
Appellants’ citation, we found the “circuitry for automatically calling” to be
a key (Decision 7). We agree that this key only activates the automatic
dialing, however, in light of Appellants’ mapping, the structure disclosed
was limited to a key.
Now Appellants provide citations that encompass pages 16, line 21
through page 22, line 24 as disclosing the structure for the “means plus
function” limitations (Req. 5). However, even if we were to consider the
further citations, these portions disclose well-known elements such as a
Texas Instruments Model 54-2 DSP, an LCD display, and memory. Again,
Appellants have not specified the particular structure for each “means plus
function” limitation.
Therefore, In light of the record before us, Appellants have not
persuaded us of error in the Examiner’s findings and conclusions.

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Claim 2
Appellants argue the prior art, although teaching the Internet, does not
show that the prior art is operating under an IP protocol. Appellants merely
set forth conclusory statements (App. Br. 16). However, the Examiner
pointed to Guy as disclosing the Internet as an example of a WAN (Ans. 13-
15). Since the Internet operates using IP protocol and Guy teaches or at least
suggests LANs coupled to a WAN, we find Guy teaches or at least suggests
to an ordinary artisan at the time of the invention, communication among the
first and second LAN and the WAN uses an IP protocol.
Accordingly, Appellants have not persuaded us of error in our
findings and conclusions.

Claims 5 and 6
Appellants’ arguments were fully considered but were not persuasive
as we set forth in our Decision (Decision 9). Indeed, we conclude the
recited limitations would have been obvious to one of ordinary skill in the
art at the time of the invention. As such, we find Appellants’ assertions that
we overlooked the arguments for claims 5 and 6 unpersuasive

Claims 27 and 33
Appellants’ argument regarding claims 27 and 33 was that “[t]he
Examiner has not specifically addressed the limitations in Claims 27 and 33”
(App. Br. 20). The Examiner set forth specific findings regarding these
claims by providing specific citations to Guy (Ans. 3-4). The Examiner may
have made an abbreviated reference to the limitations; however, the cited
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portions fairly teach or suggest the specific limitations. Appellants provided
no additional arguments or evidence to persuade us otherwise. Thus, based
on our review, we are not persuaded of error in the Examiner’s findings and
conclusions.

Claim 4
Appellants, in their Appeal Brief, argued only that Wilson does not
teach or suggest “the list of plurality of telecommunications extensions is
played as audio to the user of the first telecommunications device” (App. Br.
21). As we set forth in our Decision (Decision 12), the Examiner is relying
on Stuntebeck as disclosing this limitation. Appellants did not present any
arguments or evidence regarding Stuntebeck. Moreover, Appellants’
argument as to why Wilson teaches away is unpersuasive. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). It follows
Wilson does not teach away from an audio communication of the IP address.
Thus, Appellants have not persuaded us of error.

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Claims 36-38 and 40
Appellants have not persuaded us of error in our finding that the
combination of Wilson and Guy teach or at least suggest the invention as
recited in claim 36. Again we find Appellants are arguing the references
individually.
We also emphasize, as set forth by the Examiner, Wilson teaches or at
least suggests displaying a list of data in response to user input and in
response to another input, displaying a subset of that data (col. 7, l. 45- col.
8, l. 15). One of ordinary skill in the art would have had the skills at the
time of the invention to display the list of LANs (see, e.g., Wilson, Fig. 6
displaying a directory; see also Reply Br. 7 – Guy discloses transferring
across a WAN a server code of a remote network. (We find since a server
may act as a gateway to a LAN, providing a server code may indicate the
LAN. Displaying the received server codes in a list would have been within
the skills of an ordinary artisan)).
As to Appellants additional arguments (Rehearing 7-9), we are not
persuaded the Examiner was relying upon incorrect factual findings or that
the Examiner provided inadequate or flawed reasoning for the combination
of references.

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.

REHEARING DENIED
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