Ex Parte Batni et al

Patent Trial and Appeal Board

Mar 13, 2015

11485890 (P.T.A.B. Mar. 13, 2015)

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.
11/485,890 07/13/2006 Ramachendra P. Batni LUC-626/Batni 21-28 3254
47382 7590 03/13/2015
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
DONAGHUE, LARRY D
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
03/13/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAMACHENDRA P. BATNI and RANJAN SHARMA
___________________

Appeal 2012-007043
Application 11/485,890
Technology Center 2400
____________________

Before JOESPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/485,890

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–14, 16–19, 21–24, and 26–32. Claims 15, 20, and 25 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm all of the
Examiner’s rejections except for the obviousness rejection of claim 27.
Therefore, we affirm in part.
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 27, which are reproduced below with emphases
added:
1. A method, comprising the steps of:
displaying, upon an attempt by a user of a
communications device to configure a personalized notification
of a specific event, a menu of categories of multi-media
content available on the communications device and a number
of multi-media content files available on the communications
device and associated with each category of multi-media
content, wherein one type of the communications device
comprises a portable media player that allows an addition of
executable programs;
storing, upon selection by the user, the categories of
multi-media content desired by the user and a scheduled date
and time for the specific event on the communications device;
and
generating, upon an occurrence of the scheduled date and
time, the personalized notification on the communications
device, wherein the personalized notification contains
particular notification files in a specific order selected by the
user and associated with the categories of multi-media content.
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27. The method of claim 1 wherein the communications
device is configured to notify the user via a text-to-speech
conversion when the personalized notification has multi-media
content with a text component.
The Examiner’s Rejections
1

(1) The Examiner rejected claim 32 under 35 U.S.C. § 102(e) as being
anticipated by Bilange (US 2007/0232223 A1; published Oct. 4, 2007).
Ans. 19.
(2) The Examiner rejected claims 1–5, 7–14, 17, 18, 21–24, 26, 30,
and 31 under 35 U.S.C. § 103(a) as being unpatentable over Eskelinen (US
2006/0199611 A1; published Sept. 7, 2006), Kellock (US 2008/0101762 A1;
published May 1, 2008), Waldeck (US 2011/0099511 A1; Apr. 28, 2011),
2

and Bilange. Ans. 4–15.

1
We understand the Examiner to use all four base references (Eskelinen,
Kellock, Waldeck, and Bilange) in formulating each of the seven
obviousness rejections of claims 6, 16, 19, and 27–29, because (i) the
Examiner includes Bilange in the rejection of independent claim 1 for its
teaching of a portable media player that allows the addition of executable
programs; and (ii) Bilange is required for its teaching of a portable media
player that allows the addition of executable programs as recited in
independent claim 1 from which claims 6, 16, 19, and 27–29 each ultimately
depend. Notably, Appellants do not dispute this issue, and in fact, present
arguments as to claims 1, 6, 21, and 31 in view of Bilange being included in
the rejections (see Br. 13–14).
2
Waldeck has an effective filing date of July 7, 2007, claiming benefit to
continuing application 11/825, 141 which in turn claims domestic priority
based upon provisional application number 60/818, 731, filed on July 6,
2006. We note the Examiner’s reliance on Waldeck’s Figure 1 and
paragraph 33 in the originally filed specification of the non-provisional
application correspond to Figure 1 and page 13, line 12 through page 14, line
9 of the Specification of the provisional application. Therefore, Waldeck’s
effective filing date of July 6, 2006, is prior to Appellants’ original filing
date of July 13, 2006.
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(3) The Examiner rejected dependent claim 6 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
Motorola Technical Article, FileConnection API (June 1, 2006) (hereinafter,
“API”). Ans. 15–16.
(4) The Examiner rejected dependent claim 16 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
Lindholm (US 6,694,295 B2; issued Feb. 17, 2004). Ans. 16.
(5) The Examiner rejected dependent claim 19 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
official notice that JSR-75 and other application development programs are
well-known to invoke a notification application. Ans. 16–17.
(6) The Examiner rejected dependent claim 27 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
McMahon (US 2001/0019603 A1; Sept. 6, 2001). Ans. 17.
(7) The Examiner rejected dependent claim 28 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
Crandall (US 5,165,012; issued Nov. 17, 1992). Ans. 17–18.
(8) The Examiner rejected dependent claim 29 as being unpatentable
under 35 U.S.C. § 103(a) over Eskelinen, Kellock, Waldeck, Bilange, and
Smith (US 2004/0059903 A1; published Mar. 25, 2004). Ans. 18–19.
Appellants’ Contentions
Appellants contend (Br. 6–17) that the Examiner erred in rejecting (i)
claim 32 under 35 U.S.C. § 102(e), and (ii) claims 1–14, 16–19, 21–24, and
26–31 under § 103(a) for numerous reasons, including:
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(1) Bilange fails to disclose a method “wherein one type of the
communications device comprises a portable media player that allows an
addition of executable programs,” as recited in representative claim 1, and
the commensurate limitations in remaining independent claims 21, 31, and
32 (Br. 14);
(2) Eskelinen fails to teach or suggest “entering into a hibernation
mode after the user” previews and confirms the selections, as recited in
claim 14 (emphasis added) (Br. 11); and
(3) McMahon fails to teach or suggest “the communications device is
configured to notify the user via a text-to-speech conversion when the
personalized notification has multi-media content with a text component,” as
recited in claim 27 (Br. 11–13).
Reply Brief
No Reply Brief has been presented. Therefore, Appellants have not
disputed the Examiner’s articulated reasoning and findings found at pages
20–22 of the Answer. Notably, Appellants have not filed a Reply Brief or
otherwise responded to the Examiner’s response to Appellants’ arguments in
the Appeal Brief (see Ans. 6–17), including the Examiner’s new reliance
upon Bilange’s (i) paragraphs 172 and 173 with respect to representative
claim 1 (Ans. 20); and (ii) paragraph 173 with respect to claim 32 (Ans. 22).
Principal Issues On Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6–16),
and the Examiner’s response to Appellants’ arguments (Ans. 20–22), the
following three principal issues are presented on appeal:
(1) Did the Examiner err in rejecting (a) claims 1–14, 16–19, 21–24,
26, and 28–31 under § 103(a) over the base combination of Eskelinen,
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Kellock, Waldeck, and Bilange, and (b) claim 32 under § 102(b) as being
anticipated, because Bilange fails to disclose a method “wherein one type of
the communications device comprises a portable media player that allows an
addition of executable programs,” as recited in representative claim 1, and
the commensurate limitations in remaining independent claims 21, 31, and
32?
(2) Did the Examiner err in rejecting claim 14 under § 103(a) over the
combination of Eskelinen, Kellock, Waldeck, and Bilange because
Eskelinen fails to teach or suggest “entering into a hibernation mode after
the user” previews and confirms the selections, as recited in claim 14
(emphasis added)?
(3) Did the Examiner err in rejecting claim 27 under § 103(a) over the
base combination of Eskelinen, Kellock, Waldeck, Bilange, and McMahon
because McMahon fails to teach or suggest “the communications device is
configured to notify the user via a text-to-speech conversion when the
personalized notification has multi-media content with a text component,” as
recited in claim 27?

ANALYSIS
Based on Appellants’ arguments (Br. 6–16), we find Appellants argue,
with respect to the § 103(a) rejection over Eskelinen, Kellock, Waldeck, and
Bilange, claims 1–5, 7–13, 17, 18, 21–24, 26, 30, and 31 together as a group.
We also find Appellants argue, with respect to the § 102(e) rejection, claim
32 for the same reasons as claim 1. Accordingly, we select (i) independent
claim 1 as representative of Appellants’ arguments and grouping with
respect to claims 1–5, 7–13, 17, 18, 21–24, 26, 30, and 31. 37 C.F.R.
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§ 41.37(c)(1)(vii) (2011). We decide the appeal of the anticipation rejection
of claim 32 for the same reasons as representative claim 1.
We have reviewed the Examiner’s rejections (Ans. 4–19) in light of
Appellants’ contentions in the Appeal Brief (Br. 6–16) that the Examiner has
erred, as well as the Examiner’s response to Appellants’ arguments in the
Appeal Brief (Ans. 20–22). We agree with Appellants’ arguments (Br. 11–
13) and ultimate conclusion regarding the obviousness rejection of claim 27.
We disagree with Appellants’ conclusions regarding the anticipation
rejection of claim 32 and the obviousness rejections of claims 1–14, 16–19,
21–24, and 26–31. With regard to representative claim 1 and claims 14 and
32, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 5–7, 11, and
19), as well as the Advisory Action mailed November 7, 2011 (at p. 2), and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 20–22). We highlight and
amplify certain teachings and suggestions of Bilange, Eskelinen, and
McMahon as follows.
Obviousness Rejection of Claims 1–14, 16–19, 21–24, 26, and 28–31 and
Anticipation Rejection of Claim 32
We agree with the Examiner (Ans. 6–7, 19, 20, and 22) that Bilange
(see e.g., ¶¶ 172 and 173) discloses the disputed limitation recited in
representative claim 1, and similarly recited in claim 32, of a
communications device comprised of “a portable media player that allows
an addition of executable programs” (claim 1). Specifically, a menu (Fig.
2C, 230) on a mobile device 12 allows users to download executable
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applications from a server 100, such as ringtones (Fig. 2C, 234) (¶¶ 146,
149, 172, and 173).
In view of the foregoing, we sustain the Examiner’s (i) anticipation
rejection of claim 32, and (ii) obviousness rejection of representative claim
1, as well as claims 2–5, 7–14, 17, 18, 21–24, 26, 30, and 31 grouped
therewith. For similar reasons as provided for claim 1, we also sustain the
Examiner’s obviousness rejections of claims 6, 16, 19, 28, and 29.
Obviousness Rejection of Claim 14
We agree with the Examiner (Ans. 11 and 21) that Eskelinen teaches
or suggests “entering into a hibernation mode after the user” previews and
confirms the selections, as recited in claim 14. Specifically, we agree with
the Examiner (Ans. 11 and 21) that Eskelinen discloses the disputed
limitation in Figures 4–6 and paragraph 36.
In view of the foregoing, we sustain the rejection of claim 14.
Obviousness Rejection of Claim 27
McMahon only discloses in paragraph 5 converting a text message to
voice on a desktop to a phone. The Examiner (Ans. 22) is incorrect that the
combination of a desktop and a phone is not used since both are disclosed in
paragraph 5. Accordingly, we do not sustain the Examiner’s obviousness
rejection of claim 27 because Appellants have shown that McMahon fails to
teach or suggest “the communications device is configured to notify the user
via a text-to-speech conversion when the personalized notification has multi-
media content with a text component,” as recited in claim 27.

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CONCLUSIONS
(1) The Examiner did not err in rejecting (a) claim 32 as being
anticipated under 35 U.S.C. § 102(b) by Bilange; and (b) claims 1–14, 16–
19, 21–24, 26, and 28–31 as being unpatentable under 35 U.S.C. § 103(a)
over the base combination of Eskelinen, Kellock, Waldeck, and Bilange,
because Bilange discloses a method “wherein one type of the
communications device comprises a portable media player that allows an
addition of executable programs,” as recited in representative claim 1, and
the commensurate limitations in remaining independent claims 21, 31, and
32.
(2) The Examiner did not err in rejecting claim 14 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Eskelinen,
Kellock, Waldeck, and Bilange, because Eskelinen teaches or suggests
“entering into a hibernation mode after the user” previews and confirms the
selections, as recited in claim 14 (emphasis added).
(3) The Examiner erred in rejecting claim 27 under 35 U.S.C. § 103(a)
over the combination of Eskelinen, Kellock, Waldeck, Bilange, and
McMahon because McMahon fails to teach or suggest “the communications
device is configured to notify the user via a text-to-speech conversion when
the personalized notification has multi-media content with a text
component,” as recited in claim 27.

DECISION
The Examiner’s (i) anticipation rejection of claim 32 and (ii)
obviousness rejections of claims 1–14, 16–19, 21–24, 26, and 28–31 are
affirmed, and the Examiner’s obviousness rejection of claim 27 is reversed.
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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-IN-PART

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