Ex Parte BALANNIK et al

Patent Trial and Appeal Board

Mar 18, 2016

13224018 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/224,018 09/01/2011
95866 7590 03/22/2016
Fleit Gibbons Gutman Bongini & Bianco P,L,
551 NW 77th street
Suite 111
Boca Raton, FL 33487
FIRST NAMED INVENTOR
Vadim BALANNIK
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1400-022U 8573
EXAMINER
FANG,PAKEE
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte V ADIM BALANNIK and PA TRICK DELL ELLIS 1
Appeal2014-005970
Application 13/224,018
Technology Center 2600
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-9, 11-19, 21, and 22, which are all the pending claims.
Final Act. 1. Claims 10, 20, 23, and 24 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Research in Motion
Limited. App. Br. 2.
2 Our decision refers to the Final Office Action mailed June 19, 2013 ("Final
Act."); Appellants' Appeal Brief filed December 9, 2013 ("App. Br."); the
Examiner's Answer mailed February 11, 2014 ("Ans."); Appellants' Reply
Brief filed April 11, 2014 ("Reply Br."); and the Specification filed
September 1, 2011 ("Spec.").
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Application 13/224,018
REJECTIONS ON APPEAL
Claims 1-9, 11-19, 21, and 22 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Ans. 6.
Claims 1, 2, 11, 12, 21, and 22 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Raphael et al. (US 2011/0143721 Al, published
June 16, 2011) ("Raphael") and Sigmund et al. (US 2010/0159886 Al,
published June 24, 2010) ("Sigmund '886"). Final Act. 2-3.
Claims 3 and 13 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Raphael, Sigmund '886, and Shaw et al. (US
2011/0143722 Al, published June 16, 2011) ("Shaw"). Final Act. 5.
Claims 4, 8, 14, and 18 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Raphael, Sigmund '886, and Albert et al. (US
2010/0150324 Al, published June 17, 2010) ("Albert"). Final Act. 6.
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Raphael, Sigmund '886, and Scott (US
2008/0247520 Al, published Oct. 9, 2008) ("Scott"). Final Act. 8.
Claims 5, 7, 9, 15, 17, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Raphael, Sigmund '886, and Sigmund et al. (US
2010/0159891 Al, published June 24, 2010) ("Sigmund '891"). Final Act.
9.
THE CLAIMED INVENTION
According to Appellants, "[t]he present disclosure relates generally to
communications and, more particularly, to methods and apparatus to obtain
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voice messages." Spec. 1. Independent claim 1 is directed to a method and
independent claim 11 is directed to a device. Claim 1 recites:
A method implemented by a mobile device, comprising:
receiving at the mobile device an indication to access
voicemail;
determining if visual voicemail is available;
initiating a voice call to a voicemail system in response
to determining that visual voicemail is unavailable, wherein
initiating a voice call comprises automatically initiating a voice
call to access a telephone user interface for voicemail in
response to determining that visual voicemail is unavailable,
without user input.
App. Br. 10.
ANALYSIS
We have reviewed the rejections of claims 1-9, 11-19, 21, and 22 in
light of 1A..ppellants' arguments presented in the 1A..ppeal Brief and Reply
Brief. We are not persuaded that Appellants identify reversible error. We
agree with and adopt the Examiner's findings, reasoning, and conclusions as
set forth in Final Office Action (Final Act. 2-12) and the Examiner's
Answer (Ans. 3-7). We highlight the following for emphasis.
Rejection of Claims 1-9, 11-19, 21, and 22 under 35 U.S.C. §112
This is a new ground of rejection asserted in the Examiner's Answer.
Ans. 6-7. Under §112, first paragraph, the Examiner finds a lack of written
description support for claim limitations added by amendment:
Under close examination for [the only independent]
claims 1 and 11, the Applicant's original filed specification
and/or drawings fail to address the newly added limitations e.g.,
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" ... automatically initiating a voice call ... without user input."
The closest paragraphs 0010, 0038, and 0044 of the filed
specification do not explicitly require the specificity of "a voice
call" performing the specific function as claimed, rather, the
aforementioned paragraphs merely disclose a call, which is
broader in terms of scope. (Note: a call can be an electrical,
data, or multimedia call, etc.)
Upon further review of the argument submitted by the
Applicant on 06/03/2013, the Examiner determined that the
cited paragraph [0038] by the Applicant failed to address the
specificity of" .. . automatically initiating a voice call ... without
user input" functions specifically require[ d] for the current
claim language. Even though, the Examiner agree that all
wireless mobile networks can transmit and receive voice or data
signals, but these basic communication functions do not provide
sufficient support for the current claim limitation.
Ans. 6-7. Claims 1 and 11 3 as originally filed did not recite, "wherein
initiating a voice call comprises automatically initiating a voice call to
access a telephone user interface for voicemail in response to determining
that visual voicemail is unavailable, without user input.'' Spec. 14--15
(emphasis added). During prosecution, the Appellants cited paragraph 3 8 of
the Specification as providing support for the "wherein" clause added to
claims 1 and 11. Amendment filed June 3, 2013, at 13. Paragraph 38 of the
Specification describes:
Further detail of certain aspects of the mobile devices
102, 104 of FIG. 1 are shown in FIG. 4 with respect to a
mobile, or portable electronic, device 400. The mobile device
400 includes multiple components, such as a processor 402 that
controls the overall operation of the mobile device 400.
Communication functions, including data and voice
3 Appellants also amended claim 1 by changing "initiating a call" to
"initiating a voice call" and made a corresponding change to claim 11.
Amendments to the Claims filed August 3, 2012, at 2-3.
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Application 13/224,018
communications, are performed through a communications
subsystem 404. Data received by the mobile device 400 is
decompressed and decrypted by a decoder 406. The
communication subsystem 404 receives messages from and
sends messages to a wireless network 450. The wireless
network 450 may be any type of wireless network, including,
but not limited to, data wireless networks, voice wireless
networks, and networks that support both voice and data
communications. A power source 442, such as one or more
rechargeable batteries or a port to an external power supply,
powers the mobile device 400.
We agree that the description of wireless devices and networks in
paragraph 38 of the Specification fails to provide a written description of
automatically initiating a voice call without user input, as recited in claims 1
and 11.
In the Reply Brief, Appellants additionally cite paragraphs 17 and 18
of the Specification as providing a written description of automatically
initiating a voice call with user input as recited in claims 1 and 11.
Paragraphs 17 and 18 of the Specification describe:
The voicemail system 104 of the example of PIG. 1 may
be implemented using a traditional audible-only voicemail
system having a user interface referred to as a telephone user
interface (TUI). As such, the voicemail system 104 is typically
accessed by the mobile device 102 through a telephone
network, wherein the mobile device 102 calls a telephone
number associated with the voicemail system 104 and logs into
a user's voicemail account. In some examples, the mobile
device 102 may be programmed so that a keypress, such as the
press or press and hold of the "1" key, results in the mobile
device 102 dialing the voicemail system 104.
The voicemail server 106 of the example of FIG. 1 may
be implemented using a visual voicemail system that provides
voicemail functionality to the mobile device 102 without the
mobile device having to call the voicemail server 106. Instead,
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the interface between the mobile device 102 and the voicemail
server 106 may be a data connection whereby voicemail
information may be provided from the voicemail server 106 to
the voicemail client 120 of the mobile device 102 without the
mobile device 102 having to place a telephone call to the
voicemail server 106. In such a manner, voicemail may be
delivered from the voicemail server 106 to the mobile device
102 with the user of the mobile device having the
inconvenience of placing a call to the voicemail system 104.
Appellants fail to explain how paragraphs 17 and 18 of the
Specification provide a written description of automatically initiating a voice
call without user input. Reply Br. 2-6. Paragraph 1 7 of the Specification
describes initiating a voice call with user input - the user must press or press
and hold the "1" key.4 Paragraph 18 of the Specification describes obtaining
voicemail information through a data connection to the voicemail server
without the mobile device having to place a telephone call to the voicemail
server.
Appellants fail to show the Specification provides a written
description of automatically initiating a voice call without user input as
recited in independent claims 1 and 11. 5 Therefore, we sustain the rejection
of all the pending claims under 35 U.S.C. § 112, first paragraph.
4 Paragraph 17 describes the common feature of mobile devices known as
speed dialing. Speed dialing is not automatic and requires user input.
5 See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) ("Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.").
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Rejection oi Ciaims 1-9, 11-19, 21, and 22 as Obvious
Appellants argue the cited art fails to teach or suggest, "automatic
initiation without user input of a voice call to access a telephone user
interface for voice mail." App. Br. 8. The Examiner cites Figures 1, 5-8,
and 11 and paragraphs 51, 58, 71, 76-80, and 102 of Sigmund '886. Final
Act. 3--4; Ans. 4. In the Appeal Brief, the Appellants' arguments are
directed against paragraph 75 of Sigmund '886, which was not cited by the
Examiner. App. Br. 7-8. In the Reply Brief, Appellants rely on the
arguments in the Appeal Brief and off er no further argument relating to the
obviousness rejection. Reply Br. 6-7.
In addition, the disputed limitation is directed to automatically
initiating a voice call to access a telephone user interface. It is well settled
that merely providing an automatic means to replace manual activity to
accomplish the same result is an obvious improvement. See In re Venner,
262 F.2d 91, 95 (CCPA 1958). Nor have Appellants shown that
automatically initiating a voice call to access a telephone user interface
would have been uniquely challenging or otherwise beyond the level of
ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
MPEP § 2111.04 (9th Edition, Rev. 07.2015, Nov. 2015) 6 provides
further guidance regarding the contested "wherein" clause:
6 "While the MPEP does not have the force of law, it is entitled to judicial
notice as an official interpretation of statutes or regulations as long as it is
not in conflict therewith." Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180
n.10 (Fed. Cir. 1995).
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Claim scope is not limited by daim language that suggests or
makes optional but does not require steps to be performedi or
by claim language that does not limit a claim to a pmiicular
structure. However~ examples of claim language, although not
exhaustive~ that may raise a question as to the limiting effect of
the language in a dairn are: (A) !jadapted ton or Hadapted forH
clauses; (B) '\vherein'' clauses; and (C) '\vhereby!j c 1auses.
Therefore, a question arises as to whether the "initiating" limitations recited
in claims 1 and 11 limit the scope of the claims, even if, arguendo, our
reviewing court were to give full patentable weight to the contested
conditional limitations.
For the reasons discussed above, and by a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's rejection
of independent claims 1 and 11 under § 103. Appellants do not present any
separate arguments regarding the dependent claims rejected under § 103.
App. Br. 13. Therefore, we sustain the §103 rejections of all claims before
us on appeal.
DECISION
The rejections of claims 1-9, 11-19, 21, and 22 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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