Ex Parte Caspi et al

Patent Trial and Appeal Board

Nov 14, 2013

11232473 (P.T.A.B. Nov. 14, 2013)

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

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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.

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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).
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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,”
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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
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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
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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

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