AT&T Intellectual Property I, L.P.

Patent Trials and Appeals Board

Nov 20, 2020

2019004182 (P.T.A.B. Nov. 20, 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.
14/183,689 02/19/2014 Christopher T. Rice 20081120CON/101900.001818 3687
54499 7590 11/20/2020
AT&T Legal Department - BH
Patent Docketing Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
COSME, NATASHA W
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
11/20/2020 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):
eOfficeActionDocs@att.com
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER T. RICE

Appeal 2019-004182
Application 14/183,689
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT,Administrative Patent Judges.
HUME,Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final decision rejecting claims 1–11, 13–17, and 21–23.
Appellant canceled claims 12 and 18–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as AT&T
Intellectual Property L.L.P. Appeal Br. 1.
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STATEMENT OF THE CASE2
The Invention
The claims are directed “generally to providing capabilities on a
device, such as a processor or communications device. More specifically,
the technical field relates to providing multiple personas and profiles having
respective capabilities on a device.” Spec. ¶ 2.
Exemplary Claim
Independent claims 1 and 8, reproduced below, are representative of
the subject matter on appeal (emphases added to contested prior-art
limitations):
1. A first apparatus associated with a first billing
account and a second billing account, the first apparatus
comprising:
a processor; and
memory coupled to the processor, the memory
comprising executable instructions that cause the processor to
effectuate operations comprising:
receiving a call from a calling device;
determining an intended recipient of the call based
on a phone number dialed by the calling device to place
the call to the first apparatus, the intended recipient
associated with a first operating mode connected to the
first billing account;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Sept. 19, 2018); Examiner’s Answer (“Ans.,” mailed March 5, 2019); Final
Office Action (“Final Act.,” mailed April 19, 2018); and the original
Specification (“Spec.,” filed Feb. 19, 2014).
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determining that a current operating mode of the
first apparatus is a second operating mode connected to
the second billing account;
determining that a current operating mode of a
plurality of personas associated with a second apparatus
is the first operating mode and the second apparatus was
most recently configured, as compared to a plurality of
communications devices, with the first operating mode;
and
performing one of:
routing the call to the second apparatus; or
answering the call and bridging the second
apparatus into the call.
8. An apparatus associated with a first billing account
and a second billing account, the apparatus comprising:
a processor; and
memory coupled to the processor, the memory
comprising executable instructions that cause the processor to
effectuate operations comprising:
determining a current operating mode of the
apparatus based on a user selection at the apparatus;
receiving, based upon a predetermined priority of
the apparatus and a second apparatus, a call placed by a
calling device, the apparatus and the second apparatus
each associated with an intended recipient;
determining a profile of functions associated with
the intended recipient based on a phone number dialed
by the calling device to place the call to the apparatus;
determining that the current operating mode does
not include at least a portion of the functions of the
profile; and
configuring the apparatus to provide the functions
of the profile by changing the current operating mode to
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a first operating mode, wherein the first operating mode
is connected to the first billing account,
wherein the predetermined priority is based on the
apparatus being most recently configured, as compared to
the second apparatus, with the first operating mode,
wherein the current operating mode is connected to
the second billing account.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Dorenbosch et al.
(“Dorenbosch”)
US 2005/0060532 A1 March 17, 2005
Chin et al.
(“Chin”)
US 2008/0004002 A1 Jan. 3, 2008
Karnalkar et al.
(“Karnalkar”)
US 2009/0028312 A1 Jan. 29, 2009
Zimbric et al.
(“Zimbric”)
US 2009/0061769 A1 March 5, 2009
Liyanaarachchi US 2009/0137284 A1 May 28, 2009
Raleigh US 2010/0191612 A1 July 29, 2010
Colbert et al.
(“Colbert”)
EP 2 222 067 A1 Aug. 25, 2010
Rejections on Appeal
R1. Claims 1, 2, 4–11, 13, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Liyanaarachchi,
Raleigh, and Karnalkar. Final Act. 4–5.
R2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liyanaarachchi, Raleigh, Karnalkar,
and Chin. Final Act. 15.
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R3. Claims 14–17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liyanaarachchi, Raleigh, Karnalkar,
and Dorenbosch. Final Act. 16.
R4. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liyanaarachchi, Raleigh, Karnalkar,
and Colbert. Final Act. 18.
R5. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liyanaarachchi, Raleigh, Karnalkar,
and Zimbric. Final Act. 19.
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claims 1 and 21, for the specific reasons discussed below. However, we
disagree with Appellant’s arguments with respect to independent claim 8
and, unless otherwise noted, with respect to claim 8, we incorporate by
reference herein and 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 and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claims 1 and 8 for emphasis as follows.
1. § 103 Rejection R1 of Claims 1 and 21
Issue 1
Appellant argues (Appeal Br. 9–10) the Examiner’s rejection of
claims 1 and 21 under 35 U.S.C. § 103(a) as being obvious over the
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combination of Liyanaarachchi, Raleigh, and Karnalkar is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus associated with billing accounts that includes, inter
alia, a processor to effectuate operations comprising “determining that a
current operating mode of a plurality of personas associated with a second
apparatus is the first operating mode,” as recited in claim 1, and as similarly
recited in independent claim 21?
Analysis
The Examiner finds Liyanaarachchi teaches or suggests “determining
that a current operating mode of a plurality of personas associated with a
second apparatus is the first operating mode.” Ans. 6. The Examiner
specifically finds Liyanaarachchi’s processor 110 in step 350 “may refer to
the toy mode profile from the memory 120 to determine how the incoming
call should be handled.” Ans. 6–7, citing Liyanaarachchi, Fig. 3. The
Examiner explains that Liyanaarachchi’s processor 110 may (i) in step 351,
forward the communication to a predetermined destination (e.g., another
phone number, a personal computer, a PDA, etc.); (ii) in step 352, direct the
communication to a voicemail system; (iii) in step 353, instruct the speaker
160 to play a distinctive ringtone indicating to the user that the MU 101 is
currently receiving a valid incoming communication. Ans. 7. The Examiner
finds these teachings at least suggest the disputed limitation of determining
that a current operating mode of a plurality of personas associated with a
second apparatus is the first operating mode. Ans. 6–7.
Appellant argues the references do not teach or suggest “determining
that a current operating mode of a plurality of personas associated with a
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second apparatus is the first operating mode.” Appeal Br. 9. Appellant
specifically argues
Liyanaarachchi’s discussion of “a second apparatus” — that is,
the device to which the call is allegedly routed or bridged-is
limited to indicating that there is a “predetermined destination”
for incoming communications received while the MU is in the
toy mode. Liyanaarachchi ¶ 32. Nothing in Liyanaarachchi
discloses any determination of the current operating mode of
the predetermined destination with a comparison of plurality of
communication devices. Further, nothing indicates that the
predetermined destination has multiple personas.
Appeal Br. 10 (emphasis added).
We disagree with the Examiner’s findings because, for the reasons set
forth by Appellant, we do not find the cited portions of Liyanaarachchi teach
or suggest the disputed limitation, i.e., “determining that a current operating
mode of a plurality of personas associated with a second apparatus is the
first operating mode,” as recited in claim 1 (emphasis added).
We disagree with the Examiner because we find Liyanaarachchi lacks
a teaching or suggestion that the disclosed directing the calls to voicemail,
another destination, or playing a ringtone while the apparatus is in toy mode,
teaches or suggests a plurality of personas associated with a second
apparatus as the first operating mode.
Therefore, for essentially the same reasons argued by Appellant, we
reverse the Examiner’s rejection of independent claim 1, and also of
independent claim 21, rejected on the same basis, and which recites the
disputed limitation in commensurate form.3 Because we have reversed

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
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independent claims 1 and 21 under Rejection R1, we also reverse dependent
claims 2–7 and 22, which variously and ultimately depend from independent
claims 1 and 21.
2. § 103 Rejection R1 of Independent Claim 8
Issue 2
Appellant argues (Appeal Br. 10) the Examiner’s rejection of claim 8
under 35 U.S.C. § 103(a) as being obvious over the combination of
references is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus associated with billing accounts that includes, inter
alia, a processor to effectuate operations comprising “receiving, based upon
a predetermined priority of the apparatus and a second apparatus, a call
placed by a calling device,” and “determining a profile of functions
associated with the intended recipient based on a phone number dialed by
the calling device to place the call to the apparatus,” as recited in claim 8?
Analysis
Appellant argues, regarding the limitation “receiving based upon a
predetermined priority of the apparatus and a second apparatus, a call placed
by a calling device,” that Liyanaarachchi is silent as to whether the receipt of
a call is based on a predetermined priority of the MU (mobile unit). Appeal
Br. 10. Appellant also argues Chin, Dorenbosch, Colbert, or Zimbric do not
teach or suggest the disputed limitation. Appeal Br. 11.

See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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We are not persuaded by Appellant’s arguments because Appellant is
arguing the references separately, when the Examiner’s rejection is based on
the combination of references. Non-obviousness cannot be established by
attacking references individually where, as here, the ground of
unpatentability is based upon the teachings of a combination of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the test
for obviousness is whether the combination of references, taken as a whole,
would have suggested the claimed invention to a person having ordinary
skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner cites Karnalkar for teaching “a predetermined
priority.” Final Act. 11, Ans. 11, citing Karnalkar ¶¶ 20, 23. We agree with
the Examiner’s finding.
Appellant further argues the limitation “determining a profile of
functions associated with the intended recipient based on a phone number
dialed by the calling device to place the call to the apparatus” is not taught
by Liyanaarachchi specifically because “[t]here is nothing in Liyanaarachchi
that discloses considering a phone number dialed by the calling apparatus
(which the Office Action alleges is disclosed by Liyanaarachchi as the
source of the ‘incoming communication,’ id. ¶ 32). Further, Liyanaarachchi
discloses only the mere forwarding based on a general indication of an
incoming call (see ¶ 32) and nowhere teaches or suggests determining a
profile of functions associated with the intended recipient based on a phone
number dialed by the calling device to place the call to the apparatus.”
Appeal Br. 11–12.
The Examiner finds Liyanaarachchi’s mobile unit prompting the user
selecting a toy mode profile, and then, when detecting an incoming call
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referring to the toy mode profile to determine one of the three functions to
apply, teaches or at least suggests the disputed limitation. Final Act. 10,
citing Liyanaarachchi, Fig. 3. We agree with the Examiner’s finding
because the functions of forwarding the incoming call to another destination,
directing the call to voicemail or playing a distinctive ringtone to alert the
parent, all teach or at least suggest the existence of a profile of functions
associated with the intended recipient of the call, based on the caller’s
number. See Liyanaarachchi, Fig. 3.
Appellant also argues hindsight and a lack of motivation to combine
Liyanaarachchi with other references to justify having a billing account
associated with a toy mode when “the point of the toy mode is to prevent
functionality in which charges can be incurred.” Appeal Br. 13–14.
We are not persuaded by Appellant’s argument because
Liyanaarachchi teaches a “contact list[] (i.e., [a] phone book) customized for
the child,” where such list includes persons the child may call.
Liyanaarachchi ¶ 24. As Liyanaarachchi’s toy mode still allows the child to
make some calls, and such calls may have charges associated with them,
Appellant’s argument that no charges will be incurred by the child is not
persuasive. Furthermore, the Examiner has responded to Appellant’s
arguments (Appeal Br. 13–14) with clarifications and further findings as
explained in the Answer. Ans. 12–15. Appellant, however, has not
addressed the Examiner’s further findings and clarifications because
Appellant has not filed a Reply Brief. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
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combination to teach or suggest the disputed limitations of claim 8, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection R1 of
independent claim 8, and dependent claims 9–11, and 13, which depend
therefrom and fall therewith.
3. § 103 Rejections R2–R5 of Claims 3, 14–17, 22, and 23
Because we have reversed Rejection R1 of independent claims 1
and 21 we also reverse Rejections R2 of claim 3 and R4 of claim 22.
On this record, the Examiner has not shown how the additionally cited
references in Rejections R2 and R4 overcome the aforementioned
deficiencies, as discussed above regarding Rejection R1 of independent
claims 1 and 21.
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R5 of dependent claims 14–17 and 23
under § 103, we sustain the Examiner’s rejection of these claims.
Arguments not made are forfeited.
CONCLUSION
The Examiner erred with respect to obviousness Rejections R1, R2
and R4 of claims 1–7, 21, and 22 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we do not sustain the rejections.
The Examiner did not err with respect to obviousness Rejections R1,
R3 and R5 of claims 8–11, 13–17, and 23 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections of these
claims.

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DECISION SUMMARY
Claims
Rejected
35
U.S.C
§
Basis/
References
Affirmed Reversed
1, 2, 4–11,
13, 21
103(a) Obviousness
Liyanaarachchi,
Raleigh, and
Karnalkar
8–11, 13 1, 2, 4–7, 21
3 103(a) Obviousness
Liyanaarachchi,
Raleigh,
Karnalkar, and
Chin
3
14–17 103(a) Obviousness
Liyanaarachchi,
Raleigh,
Karnalkar, and
Dorenbosch
14–17
22 103(a) Obviousness
Liyanaarachchi,
Raleigh,
Karnalkar, and
Colbert
22
23 103(a) Obviousness
Liyanaarachchi,
Raleigh,
Karnalkar, and
Zimbric
23
Overall
Result
8–11, 13–17, 23 1–7, 21, 22
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART