APPLE INC.

Patent Trials and Appeals Board

Oct 22, 2020

2019002855 (P.T.A.B. Oct. 22, 2020)

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.
14/501,706 09/30/2014 Harshit CHUTTANI 30134/18401 (P21632US1) 5812
114746 7590 10/22/2020
Apple Inc. -- FKM
150 Broadway
Suite 702
New York, NY 10038
EXAMINER
HARLEY, JASON A
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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):
fhall@fkmiplaw.com
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARSHIT CHUTTANI, SOMEET LAL, and KWANGHO BYUN
____________

Appeal 2019-002855
Application 14/501,706
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s disclosed and claimed invention is directed to improved
transitions continuity between wireless protocol states. (Abstract.)

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Apple Inc. as the real party in interest.
(Appeal Br. 2.)
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Application 14/501,706

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Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method, comprising:
at a user equipment (“UE”):
establishing a connection to a first wireless
network in accordance with a first wireless communication
protocol, wherein the first wireless communication protocol is
used for voice communications and data communications
between the UE and the first wireless network;
receiving a user request to disable the voice
communications with the first wireless network;
registering for voice communications with a
second wireless network in accordance with a second wireless
communication protocol; and
maintaining the connection to the first wireless
network to continue data communications between the UE and
the first wireless network, wherein the UE simultaneously
operates in the first wireless communication protocol and the
second wireless communication protocol.
Appeal Br. 12. (Claims Appendix.)

REJECTIONS
The Examiner rejected claims 1, 3–9, 12, and 14–20 under 35 U.S.C.
§ 103 as being unpatentable over Ramachandran et al (US 2012/0236709
A1, pub. Sept. 20, 2012) (hereinafter “Ramachandran”), Hansen et al (US
2008/0240058 A1, pub. Oct. 2, 2008) (hereinafter “Hansen”), and Kim (US
2002/0042264 A1, pub. Apr. 11, 2002) (hereinafter “Kim”). (Final Act. 3.)
The Examiner rejected claims 2, 10, 11, and 13 under 35 U.S.C. § 103
as being unpatentable over Ramachandran, Hansen, Kim, and Kollu et al
(US 2016/0050618 A1, pub. Feb. 18, 2016) (hereinafter “Kollu”). (Final
Act. 10.)
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Application 14/501,706

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ISSUE ON APPEAL
Appellant’s arguments in the Appeal Brief presents the following
issue:2
Whether the Examiner erred in finding the combination of
Ramachandran, Hansen, and Kim teaches or suggests the limitation of
“receiving a user request to disable the voice communications with the first
wireless network,” as recited in independent claim 1, and the commensurate
limitation recited in independent claims 12 and 19. (Appeal Br. 4–10.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We disagree
with Appellant’s arguments, and we adopt as our own: (1) the pertinent
findings and reasons set forth by the Examiner in the Action from which this
appeal is taken (Final Act. 3–16); and (2) the corresponding reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief. (Ans. 3–10.) We concur with the applicable conclusions
reached by the Examiner and emphasize the following.
In finding that the combination of Ramachandran, Hansen, and Kim
teaches or suggests the independent claim 1 limitation at issue, the Examiner
relies on Kim’s disclosure of:

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 29, 2018); the Reply Brief
(filed Feb. 26, 2019); the Final Office Action (mailed Apr. 18, 2018); and
the Examiner’s Answer (mailed Dec. 26, 2018) for the respective details.
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Application 14/501,706

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(1) a mobile terminal receiving a call canceling request message upon
completion of a data transmission, in which the system can be
converted to a fax mode by sending an ATD command from the data
terminal to the mobile terminal or sending a fax signal after the
opposite side mobile terminal converts to a fax mode during the voice
communication; and
(2) a method for transmitting data using a mobile terminal in which
following the voice communication line connection, a transmitting
data terminal sends an ATD comment and a receiving side telephone
number to the mobile terminal in order to convert the mode of the
communication system to a data mode without disconnecting the
voice communication line made earlier.
(Final Act. 4–5; Ans. 6–7, 8–9; Kim Fig. 3, ¶¶ 10–11, 26– 29.)
Appellant argues that “Kim fails to disclose or suggest, ‘receiving a
user request to disable the voice communications with the first wireless
network’ as recited in claim 1” (Reply Br. 2), in which
[t]he Examiner’s interpretation of the above recited portion of
claim 1 is unreasonably broad. The Examiner appears the
believe that any request that is associated with the terms
“voice” or “call” would be encompassed by the above recited
portion of claim 1.

(Reply Br. 3, citing Ans. 5.) Appellant contends that “Kim’s call cancelling
request” is unrelated to the cited limitation because the call cancelling
request “relat[es] to fax communications.” (Reply Br. 4, citing Kim ¶ 10.)
Particularly, Appellant contends Kim teaches
maintaining a voice communication line between a mobile
device and a terminal via a network results in an available voice
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Application 14/501,706

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connection between the mobile device and the terminal via a
network,
which is “the exact opposite of disabling voice communications with the
network” as recited in the claim. (Reply Br. 5, citing Kim ¶¶ 14, 29.)
We are not persuaded the Examiner erred. The Examiner finds, and
we agree, that Kim shows
either a call canceling request message or converting a voice
communication to data communication. Under [the] broadest
reasonable interpretation a call, voice mode, and voice
communication all three [correspond to] applicant’s [claimed]
voice communication.
(Ans. 6–7, citing Kim ¶¶ 10, 26, Fig. 3.) The Examiner’s construction is
reasonable. Particularly, we agree with the Examiner that
Applicant’s specification does not define disabling as
disconnecting the voice communication line. The examiner
under broadest reasonable interpretation interprets this
conversion as a way of disabling a voice communication
because the terminal is shown to only transmit data.
(Ans. 9.) Appellant also attacks Kim individually, whereas the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). Other than asserting that “an available voice connection via a
network is the exact opposite of disabling voice communications with the
network,” Appellant supplies no factual evidence or argument that one
skilled in the art would not combine the teachings of Ramachandran,
Hansen, and Kim to arrive at the claimed invention.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as independent claims 12 and 19 commensurate
in scope, and all dependent claims not argued separately with particularity.
See Appeal Br. 9–10.
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Application 14/501,706

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For the reasons stated above, we affirm the Examiner’s obviousness
rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 12,
14–20
103 Ramachandran,
Hansen, Kim
1, 3–9, 12,
14–20

2, 10, 11,
13
103 Ramachandran,
Hansen, Kim, Kollu
2, 10, 11,
13

Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE

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).

AFFIRMED