Ex Parte Basir et al

Patent Trial and Appeal Board

Aug 16, 2016

13206199 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/206,199 08/09/2011
26096 7590 08/18/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Otman A. Basir
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.
60449-222PUS 1 3348
EXAMINER
GATTEW, ASTEW AY T
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTMAN A. BASIR, WILLIAM B. MINERS, YONG HE, and
ERIC G. HARTWELL
Appeal2015-003853
Application 13/206, 199
Technology Center 2100
Before KRISTEN L. DROESCH, JOHN A. EV ANS, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-15, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is Intelligent
Mechatronic System Inc. (App. Br. 1.)
Appeal2015-003853
Application 13/206,199
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "an interface between mobile devices
and computing devices, such as a PC or an in-vehicle system. The interface
permits a user to use the better user interface of the computing device to
access and control the operation of the mobile device." (Spec. i-f 3.) Claim 1
is illustrative, and is reproduced below:
1. A method of handling a voice call including the steps of:
a) receiving an incoming voice call;
b) notifying a user of the incoming voice call;
c) receiving an indication from the user to respond to the
incoming voice call with a non-voice message;
d) accessing a contact list in response to said step c );
e) retrieving a contact entry associated with the caller in
the incoming voice call in response to said step c );
and
t) creating a non-voice message to the caller based upon
the contact entry.
Rejections on Appeal
Claims 1-3 and 7-9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Fields et al. (US 2009/0221321 Al; pub. Sept. 3, 2009)
("Fields"). (See Final Office Action (mailed Oct. 3, 2013) ("Final Act.") 2-
7.)
Claims 4---6 and 10-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fields in view ofBasir (US 2008/0305742 Al; pub.
Dec. 11, 2008) ("Basir"). (See Final Act. 7-14.)
2
Appeal2015-003853
Application 13/206,199
ANALYSIS
Claims 1-15
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, Appellants contend that Fields does not
disclose accessing and retrieving a contract entry in response to the user's
response to step c because "[i]n Fields, the contact entry is accessed and
retrieved based upon the incoming call, not in response to an indication from
a user (step c) as claimed." (App. Br. 2.) Therefore, according to
Appellants, "Fields does not create a non-voice message to the caller based
upon the contact entry." (Id.; Reply 1-2.) The Examiner disagrees and
states that
Fields teaches the contact entry is accessed and retrieved in
response to an indication from a user (step c). Fields further
teaches creating a non-voice message to the caller based upon
the contact entry. As Fields discusses in paragraphs [0070] to
[0073], upon indication received from a user to answer to an
incoming call, a split screen as shown in figure 15 is created to
conduct a conversation. As figure 15 illustrates, contact
information related to the caller and receiver is displayed,
which indicates a contact list is accessed in order to retrieve and
display the contact information. The contact information is
then used to create and carry a conversation (see non-voice
message shown in figure 15) between the caller and receiver.
Without having the contact information (i.e. contact entry), it is
clear that there would be no conversation, and thus, the non-
voice message is created based upon the contact entry.
(Ans. 2-3, emphasis added.)
We agree with Appellants that Fields does not disclose accessing and
retrieving a contract entry in response to the user's response to step c. As an
3
Appeal2015-003853
Application 13/206,199
initial matter, we note that "although a method claim necessarily recites the
steps of the method in a particular order, as a general rule the claim is not
limited to performance of the steps in the order recited, unless the claim
explicitly or implicitly requires a specific order." Baldwin Graphic Systems,
Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir 2008) (citing Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342--43 (Fed. Cir.
2001)). Here, it is clear from the plain reading of the claim that the
retrieving step (step e) must occur after step c. Specifically, step e recites
"retrieving a contact entry ... in response to said step c). Similarly, it is
also clear from the plain reading of the claim that the accessing step (step d)
must occur after step c.
Figures 14 and 15 are reproduced below.
F~gure 14
234
Figure 15
Figure 14 is a screen shot showing an interface for an incoming TTY call
and Figure 15 is a screen shot showing a TTY conversation interface.
(Fields iTiT 18, 19.)
As discussed above, the Examiner finds that "figure 15 illustrates,
contact information related to the caller and receiver is displayed, which
indicates a contact list is accessed in order to retrieve and display the contact
4
Appeal2015-003853
Application 13/206,199
information." (Ans. 3.) However, Figure 15 does not show that contact
information (displayed in the screenshot) was retrieved in response to step c
(receiving an indication from the user ... ). In fact, Figure 14 shows that the
contact information (i.e., contact entry) in Figure 15 was already retrieved
prior to the user's indication on whether to accept the incoming call.
Figure 15 does not show any contact information that was not already
retrieved prior to the indication from the user (see Figure 14). Paragraphs 70
to 73 of Fields also do not suggest otherwise. In fact, paragraphs 71 and 72
confirm our findings:
[0071] When an incoming TTY transmission 156 is processed
by the TTY incoming module 162, an incoming call screen 230
is first displayed by the mobile device 10 as shown in FIG. 14.
The incoming call screen 230 includes a status bar 232 to
indicate what is happening and a selection bar 234, which
includes a first option 236 to answer the incoming call, and a
second option 23 8 to ignore the incoming call. To assist the
user, especially those with cognitive and memory impairments,
with the decision as to whether or not the call should be
accepted, the contextual elements are also displayed in the
incoming call screen 230. In this example, the user's name 124
is displayed (FRIEND), along with the phone number 126
being called from, and a picture 134 of the user. The name 124
and picture 13 4 are, as explained above, extracted from the
contacts database 91 according to the incoming number 12 6. It
will be appreciated that other data or information such as an ID
122 may instead be used to search the contacts database 91 if
such information is sent with the TTY transmission 156.
[0072] If the call is accepted by the user, a TTY conversation
window is initiated. The embodiments shown in FIGS. 11 and
12 may be used, or the embodiment shown in FIG. 15, which
utilizes the same contextual elements as shown in FIG. 14 . ...
(Fields i-fi-1 71, 72, emphasis added.)
5
Appeal2015-003853
Application 13/206,199
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 102 rejection of claim
1. 2 Independent claim 7 contains similar limitations at issue and the
Examiner cites to the same passages of Fields for this rejection. (Final Act.
4---6.) Thus, we do not sustain the 35 U.S.C. § 102 rejection of claim 7, and
of claims 2, 3, 8 and 9, which depend from either claims 1 or 7. As applied
by the Examiner, the teachings of Basir do not remedy the deficiencies of
Fields with respect to independent claims 1 and 7. (See Final Act. 7-14.)
Therefore, we also do not sustain the 35 U.S.C. § 103 rejection of claims 4--
6 and 10-15, which depend from either claims 1 or 7.
DECISION
The decision of the Examiner to reject claims 1-15 is reversed.
REVERSED
2 Because we do not sustain the Examiner's rejection for the reasons
discussed herein, we need not address Appellants' further arguments. 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").
6