Ex Parte Caspi et alDownload PDFPatent Trial and Appeal BoardNov 14, 201311232473 (P.T.A.B. Nov. 14, 2013) Copy Citation 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. 11/232,473 09/21/2005 Rami Caspi 2005P16375US 7558 28524 7590 11/14/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER SHAH, ANTIM G ART UNIT PAPER NUMBER 2652 MAIL DATE DELIVERY MODE 11/14/2013 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 RAMI CASPI and WILLIAM J. BEYDA ____________________ Appeal 2011-004556 Application 11/232,473 Technology Center 2600 ____________________ Before MICHAEL J. STRAUSS, JUSTIN BUSCH, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004556 Application 11/232,473 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim Appellants’ disclosure relates to a telecommunications system including a device configured to receive incoming telephone call announcements in the form of an audio file. Abstract. Claim 1, reproduced below with the disputed limitation italicized, is illustrative of the claimed subject matter: 1. A telecommunications device, comprising: a housing including a pronged plug for insertion into a standard electrical wall outlet; a controller mounted within said housing and including a wireless local area network controller configured to indicate wireless connection to and receive incoming call ringing indicia from a voice over IP telephony client; and a speaker operably coupled to the controller and configured to provide audible incoming call announcements responsive to said incoming call ringing indicia while ringing incoming calls at said voice over IP telephony client; wherein said incoming call ringing indicia comprises signaling a start ringing signal and an end signal and an audio file transmitted from a voice over IP telephony client. Appeal 2011-004556 Application 11/232,473 3 Rejections 1 The Examiner made the following rejections: Claims 1, 5, 6, 10, 14, 15, 17, 18, 20, and 22 under 35 U.S.C. § 103(a) as unpatentable over Kite (US 6,792,263 B1)(Ans. 5–18); Claims 2, 7, and 11 under 35 U.S.C. §.103(a) as unpatentable over Kite and Smith (US 7,324,824 B2)(Ans. 18–20); Claims 3, 4, 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Kite, Smith, and Horwinski (US 3,997,225)(Ans. 20–24); Claims 16 and 19 under 35 U.S.C. § 103(a) as unpatentable over Kite and Festa (US 4,480,153)(Ans. 24–26); Claims 21 and 23 under 35 U.S.C. § 103(a) as unpatentable over Kite and Crockett (US 6,718,021 B2)(Ans. 26–28); and Claim 24–29 under 35 U.S.C. § 103(a) as unpatentable over Kite and Henderson (US 7,266,186 B1)(Ans. 28–32). Issue Appellants’ arguments (Br. 17–23) raise the issue of whether Kite teaches or suggests “a controller . . . configured to . . . receive incoming call ringing indicia from a voice over IP telephony client . . . wherein said incoming call indicia comprises signaling a start ringing signal and an end signal and an audio file transmitted from a voice over IP telephony client” (hereinafter, “the disputed limitation”). 1 In the Answer the Examiner withdrew a rejection of claims 1-9, 11-13, 15, 18, 19, 21, 23, and 26 under 35 U.S.C. § 112, first paragraph. Ans. 3. A provisional, nonstatutory obviousness-type double patenting rejection of claims 1–20 over the claims of Application Serial No. 11/232,488 and Kite is moot because that application is now abandoned (Notice mailed Sept. 5, 2013). Appeal 2011-004556 Application 11/232,473 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (“Br.” filed May 10, 2010). We refer to the Brief and the Answer (“Ans.” mailed Oct. 14, 2010) for the respective positions of Appellants and the Examiner. We disagree with Appellants’ arguments that the Examiner has erred. Appellants argue the obviousness rejection of all claims under the same heading. Br. 17–24. We take claim 1 as representative. In determining that claim 1 is obvious over Kite, the Examiner cites column 13, lines 39-50, at which location Kite describes a “Remote” receiving a ringing signal or alarm signal, and also cites column 23, lines 34- 42, at which location Kite describes the Remote audibly emitting messages such as email. Ans. 6–7. The Examiner concludes that it would have been obvious to send a ringing file in order to play a different kind of ring tone at the remote device as an incoming call alert. Id. at 7. Appellants argue that Kite “does not discuss signaling the remote to ring at all because, that ringing signal is analog.” Br. 19. Appellants further argue that “[r]eceiving the streaming analog audio [that] can be switched on and off by a switch 223 on the remote, however, is quite different than signaling incoming call ringing indicia that includes a start ringing signal and an end signal . . . .” Id. We are not persuaded by these arguments of Examiner error. We note that Kite’s ringing signal, even if analog, necessarily has a beginning and an end. The disputed limitation does not exclude that the onset of an analog signal and its termination can be and thereby teach or suggest the claimed “start ringing signal” and “end signal,” Appeal 2011-004556 Application 11/232,473 5 rendering the respective signals obvious, as the Examiner concludes. Ans. 38. Further, we disagree with Appellants’ argument that the Final Office Action “admits that prima facie obviousness has not been established for the independent claims,” because of admissions made there as to the teachings of Kite vis-à-vis claims 16 and 19. Br. 23 (citing Final Rejection 24). Those claims have different scope than the claims from which they depend, and Appellants’ reasoning does not account for those differences. That is, the deficiencies of Kite cured by Festa relate to the limitations recited by dependent claims 16 and 19 which limitations are not present in the independent claims. Therefore Appellants’ argument is not persuasive of Examiner error. We are also unpersuaded of error based on Appellants’ argument that Kite allegedly fails to teach local storage. Br. 22. The claim does not require local storage and, therefore, Appellants’ argument is not commensurate in scope with the claim. Moreover, Appellants’ arguments do not rebut the Examiner’s interpretation of the claim to encompass streaming audio to the remote device (Ans. 38) and, thus the claims do not require local storage for the file to be completely received before playback. Nor are we persuaded of error based on Appellants’ argument that Kite’s audio streaming is audio of a completed call, not of incoming call indicia as claimed. Br. 22. Appellants assert that Kite’s audio file streaming is insufficient to support the Examiner’s conclusion that the disputed limitation would have been obvious. Id. We disagree. The Examiner finds that the combination of Kite’s start and end signal and audible emission and screening of messages by a remote device teaches or suggests sending a Appeal 2011-004556 Application 11/232,473 6 ringing file to play different ring tones to alert a user to an incoming call. Ans. 7. We agree. In contrast, Appellants do not present persuasive argument or evidence that the Examiner’s reasoning supporting the proposed modification (id.) is unreasonable or lacks rational underpinning (see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)) or that the modification would have been beyond the capability of an ordinarily skilled artisan and therefore unobvious (see KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”)). In view of the foregoing, Appellants have not persuaded us that the Examiner erred in concluding that “a controller . . . configured to . . . receive incoming call ringing indicia from a voice over IP telephony client . . . wherein said incoming call indicia comprises signaling a start ringing signal and an end signal and an audio file transmitted from a voice over IP telephony client” would have been obvious in view of Kite. Accordingly, we sustain the rejection of claim 1 and of claims 5, 6, 10, 14, 15, 17, 18, 20, and 22 argued therewith. With respect to the remaining claims, Appellants merely argue that the additional references do not cure the alleged deficiencies of Kite. Br. 23–24. Because we find that Appellants’ arguments regarding Kite are Appeal 2011-004556 Application 11/232,473 7 unpersuasive of error, we also sustain the rejections of claims 2–4, 7–9, 11– 13, 16, 19, 21, and 23–29. DECISION For the above reasons, the Examiner’s rejection of claims 1–29 is 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)(1)(iv). AFFIRMED kis Copy with citationCopy as parenthetical citation