Ex Parte Crook

Patent Trial and Appeal Board

Dec 2, 2014

10433748 (P.T.A.B. Dec. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL DAVID CROOK
____________

Appeal 2012-003645
Application 10/433,748
Technology Center 2600
____________

Before STEVEN D. A. MCCARTHY, DENISE M. POTHIER, and
DAVID M. KOHUT, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 38–50 and 52–59. Claims 1–37 and 51 have been
canceled. App. Br. 4–5. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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Invention
Appellant’s invention relates to techniques for facilitating call
handling, such as call pickup service, in a mobile communications network.
See Spec. 1:3–7, 2:11–16. Claim 38 is reproduced below with emphasis:
38. A communications terminal configured for use in a mobile
telecommunications network, comprising:
a short-range wireless communications interface configured to
communicate with and identify another device; and
a cellular radio communications interface configured to
communicate with the mobile communications network,
wherein the communications terminal is configured to initiate
control of a short message service related to the identified device in
response to the identification of the device in order to redirect
telecommunications data from the cellular radio communications
interface of the communications terminal to the identified device, and
wherein the control of the short message service is provided at least in
part by a control message sent over a communications link to the
mobile communications network,
wherein the identified device is telecommunications enabled by a
fixed-line telecommunications link.

The Examiner relies on the following as evidence of unpatentability:
Vanttila US 5,794,142 Aug. 11, 1998
Andersson US 6,330,461 B1 Dec. 11, 2001
(filed June 4, 1998)
Henon US 6,999,769 B1 Feb. 14, 2006
(filed Dec. 8, 1999)
Amin US 7,171,221 B1 Jan. 30, 2007
(filed Dec. 20, 1999)

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The Rejections
Claim 59 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Ans. 5.
Claims 38, 39, 41–44, 48–50, 52, 54, and 55 are rejected under 35
U.S.C. § 103(a) as unpatentable over Henon and Vanttila. Ans. 5–9.
Claims 40, 45–47, 53, and 56–581 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Henon, Vanttila, and Amin. Ans. 9–10.
Claim 59 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Henon, Vanttila, and Anderson. Ans. 10–11.

THE INDEFINITENESS REJECTION
Regarding claim 59, the Examiner finds that the phrase, “the other
device” at line 15 lacks antecedent basis. Appellant argues an ordinarily
skilled artisan would not be confused as to which device the recited “other
device” in claim 59 refers to, given that “[t]he claim includes the presence of
no other devices . . . .” App. Br. 9; Reply Br. 2. We agree with Appellant.
Although arguably lacking antecedent basis for the phrase, “the other
device,” we find that claim 59 implicitly provides adequate antecedent basis
for “the other device,” such that an ordinarily skilled artisan would have
understood “the other device” refers to the previously recited “identified
device.” Appellant switches between different language in claim 59 when
reciting the same element (i.e., “another device” in line 8, “the identified
device” in line 13, and “the other device” in line 13). However, as Appellant
indicates, there is no other device recited in claim 59. App. Br. 9.

1 Canceled claim 51 is mistakenly included in the rejection’s heading.
Ans. 9.
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Additionally, claim 59 previously recites “identify another device.”
The recited “identified device” is the same as the previously-recited “another
device,” which the short-range wireless communications interface is
configured to identify, as well as “the other device” recited later in the claim.
Claim 59 as a whole provides sufficiently clear notice that the phrase, “the
other device” refers to the device which the recited short-range wireless
communications interface is configured to identify. The phrase is not
indefinite.
Given the record, we find that an ordinarily skilled artisan would have
understood “the other device” is the same as “the identified device.”
Accordingly, we will not sustain the indefiniteness rejection of claim 59.

OBVIOUSNESS REJECTION OVER HENON AND VANTTILA
The Examiner finds that Henon teaches all the limitations in claim 38,
except for expressly disclosing the control message for initiating redirection
on the telecommunications data is a short message service (SMS). Ans. 5–6.
The Examiner turns to Vanttila to teach this missing limitation. Ans. 6.
Appellant argues that the transfer or exchange of the request and
response messages in Henon across a short-range interface between a mobile
terminal and a fixed-line phone “does not amount to initiating control of a
message service related to the identified device, let alone ‘initiating control
of a short message service related to the identified device in response to
identification of the device’ as provided in Claim 38.” App. Br. 11.
Appellant contends that Henon teaches transferring signaling messages
rather than a message service and transferring signaling messages does not
involve controlling anything. Id. Appellant also asserts that Vanttila teaches
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only certain functions can be enabled using SMS messages and involves
only a single device rather than the recited “identified device.” Id. Finally,
Appellant argues there is not a sufficient reason provided by the Examiner to
combine Vanttila with Henon. App. Br. 12–13; Reply Br. 2–3.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 38 by
finding that Henon and Vanttila collectively would have taught or suggested
the communications terminal is configured to initiate control of a short
message service related to the identified device in response to the
identification of the device?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning, with some rational
underpinning, to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 38. At the outset, we note that the disclosure
fails to define the phrase, “message service.” See generally Spec. Without
any definition or restriction on this phrase in claim 38, Appellant’s assertion
that Henon fails to teach initiating control of a message service related to an
identified device is unpersuasive. App. Br. 11.
Specifically, Henon teaches establishing communications between a
wireless device (e.g., a mobile) and wired device (e.g., a telephone) by
sending call transfer requests to transfer a call to a wired device. Ans. 6
(citing Henon 1:56–2:12; Fig. 2). When discussing Figure 2, Henon
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explains several messages are sent back and forth between the wireless and
wired device – namely a request message (e.g., PHONE_NUMBER_REQ)
requesting the wired telephone phone number is sent by the wireless device
at step 206; a reply message (e.g., PHONE_NUMBER_RSP) by which the
wired device replies, identifying the phone number at step 208; and a call
transfer request message (e.g., CALL_TRANSFER_REQ) by which the
wireless device passes the wired telephone phone number with the message
to a base station at step 210. Henon 3:62–4:8; Figs. 1–2; see also Ans. 14
(citing Henon 4:1–8). Given that call transfer is a service discussed in the
disclosure (Spec. 16:13–17), we find that these passages in Henon fairly
teach initiating control of a message service in order to redirect
telecommunication data to the identified device (e.g., sending
CALL_TRANSFER_REQ with the telephone number initiates control of a
call transfer that redirects data). See also Ans. 13–14. Thus, we find Henon
teaches a communications terminal configured to initiate control of a
message service related to an identified device (e.g., the telephone) in
response to the device identification (e.g., in response to the reply and phone
number sent in step 208).
We also agree with the Examiner that some of Appellant’s arguments
attack Henon individually. Ans. 14. For example, Appellant asserts that
Henon teaches transferring a signaling message rather than a short message
service and thus does not teach “initiating control of a short message service
related to the identified device in response to identification of the device”
recited in claim 38. App. Br. 11. However, the Examiner states Henon fails
to disclose expressly that the message service is “a short message service” to
initiate redirection of the telephone communications data and turns to
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Vanttila for its teaching. Ans. 6–7. We thus consider what the references
teach collectively.
Appellant argues that Vanttila only establishes enabling “a function
on a single cell phone using a short message service [and] is not the same as
‘initiating control of a short message service related to the identified
device.’” App. Br. 11. Vanttila teaches using short message service (SMS)
to enable a function on a phone, but Vanttila also suggests more. Vanttila
teaches that the SMS message is used to activate and deactivate functions
that are hidden from use, including call transfer services. Vanttila 1:22–30,
7:30–33, 8:1–5. An ordinarily skilled artisan employing reasonable
inferences would have recognized that a call transfer function redirects
telecommunications data from a mobile station (e.g., 10 in Fig. 1) and its
interface to another device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). As such, we find that Vanttila would have suggested to an
artisan using a communications terminal to initiate control of a SMS in order
to redirect data from a mobile phone interface to another device.
Also, when combining this teaching with Henon’s system, such
combination yields no more than one would expect – the communication
terminal of Henon is modified such that the terminal is configured to initiate
control of a SMS related to an identified device in response to the device’s
identification so as to redirect telecommunications data to the identified
device (e.g., initiate a control of a call transfer service by enabling the
function using SMS that results in telecommunications data being redirected
to the telephone) as recited in claim 38. See Ans. 6, 14–15; see also KSR,
550 U.S. at 416.
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Next, Appellant asserts that one would not have combined Vanttila
with Henon because “no additional features to carry out its intended
functions” were needed and “no benefit” would have been achieved. App.
Br. 12. Appellant asserts that the “design preference” rationale is flawed
and does not provide “a reason why a skilled artisan would prefer Vantilla’s
[sic] design over what is already provided in Henon.” Reply Br. 2; App. Br.
12–13. We are not persuaded.
First, the Examiner states Vanttila teaches an alternative mechanism
for call transfers that includes using SMS to initiate control. Accordingly,
the Examiner sets forth an alternative, known technique for initiating control
of a call transfer to an ordinary skilled artisan. Second, as noted by
Appellant, Vanttila further discusses that their invention provides “an
efficient and simple technique for enabling a user of a mobile terminal to
request and receive a network service.” Vanttila 2:46–48; see also App. Br.
12 (citing to an Office Action at page 4). Thus, Vanttila provides an explicit
rationale to alter Henon to make its design faster and simpler. See id.; see
Dystar Textilfarben GMBH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006). Vanttila additionally teaches a technique to improve (e.g., a
more efficient and simple design) on Henon’s process of call transferring
using SMS. See KSR, 550 U.S. at 417.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 38 and claims 39, 41–44, 48–50, 52, 54,
and 55 not separately argued with particularity.
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OBVIOUSNESS REJECTION OVER HENON, VANTTILA, AND AMIN
Regarding claim 40, Appellant argues “that the Examiner has failed to
provide an adequate reason for combining Amin” with Henon and Vanttila,
and that Henon teaches away from this combination. App. Br. 13; Reply
Br. 3–4.
Regarding claims 45 and 56, Appellant asserts Amin fails to teach the
recited feature of “a preconfigured group” and that the Examiner has taken
an unreasonably broad construction of this phrase. App. Br. 14–15; Reply
Br. 4–5. Appellant also contends that the Examiner used the claim as an
improper rationale for combining Amin with Henon and Vanttila. App.
Br. 14.

ISSUES
Under § 103, has the Examiner erred by finding that Henon, Vanttila,
and Amin collectively would have taught or suggested:
(1) the identified device is a cellular mobile telephone as recited in
claim 40?
(2) the control of the short message service is limited to devices
belonging to a preconfigured group as recited in claim 45 and similarly
recited in claim 56?
(3) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
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ANALYSIS
Claim 40
Claim 40 depends from claim 39 and recites the identified device is a
cellular mobile telephone. Appellant contends that Henon teaches away
from combining with Amin, given that “Henon’s system is expressly
designed to transfer calls away from mobile communications terminals due
to their unreliability.” App. Br. 13 (citing Henon 1:18–27) (emphasis
omitted). Henon indicates the need to transfer in-progress telephone calls
between wireless and wired telephones due to battery loss, network
connection problems, and poor quality. Henon 1:18–27. Henon further
states there is a need to improve and provide more efficient techniques for
in-progress call transfer between wireless and wired telephone devices.
Henon 1:49–51.
Given these discussions, we agree Henon teaches a wired phone is
superior in some aspects to a wireless phone. However, just because Henon
describes using a wireless phone as somewhat inferior to a wired telephone
for call transfer services, this does make the known, cellular mobile
telephone of claim 40 patentable. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Additionally, although Henon teaches in-progress call transfer
to a wired telephone would improve these problems, we agree with the
Examiner that this teaching does not teach away or discourage a skilled
artisan from using a mobile telephone in other circumstances, such as in the
scenario when redirecting a call prior to answering the call. See Ans. 15.
Also, employing reasonable inferences and creative steps, an ordinarily
skilled artisan would have found other techniques to avoid the stated
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problems in Henon, such as redirecting a call to a mobile telephone that has
full battery power.
We further note that the claimed invention would suffer from the
same disadvantages noted by Henon. That is, having a communications
terminal configured to redirect telecommunications data from the
communications terminal to an identified device that is a cellular mobile
telephone as claimed in claim 40 would also suffer from battery loss,
network connection problems, and poor quality. Additionally, to the extent
that Appellant asserts that the claimed mobile telephone is somehow
different, such features are not recited.
As such, we disagree with Appellant that the Examiner’s reasoning to
combine the references in rejecting claim 40 is flawed. App. Br. 13. We
further refer to the Examiner’s stated reasoning for combining the
references. See Ans. 16 (citing Amin 3:2–5).
Claims 45–47, 56, and 57
Claim 45 depends from claim 38; claim 56 depends from claim 52.
Claim 45 recites the control of the short message service is limited to
devices belonging to a preconfigured group, and claim 56 recites a similar
limitation. Notably, identity of terminology is not required to teach a
limitation. See In re Bond, 910 F.2d 831 (Fed. Cir. 1990). Amin teaches
two phones may have “non-transferable identification numbers.” Amin
7:4–6. By referring to cross-referencing reports in a database, Amin
discusses determining whether to authorize the call transfer initiation or not.
See Ans. 9, 17–18 (citing Amin 7:4–17); App. Br. 14–15 (quoting the same
passage). An ordinarily skilled artisan would have recognized the
cross-referencing reports in Amin’s database assist in determining whether a
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call can be transferred, suggesting that some phones have transferable
identification numbers and some phones do not. See Amin 7:4–17. This
further suggests to an ordinarily skilled artisan that those phones having
transferable identification numbers in cross-referencing reports are a group
that is preconfigured (e.g., these numbers form a group). See id.
Additionally, we disagree that the discussion of a hierarchical transfer
priority discussed in Amin fails to teach or suggest a preconfigured group.
Reply Br. 5. Amin’s hierarchy represents a list of telephones to which a call
can be transferred in order of preference. Even though there is preference,
the list still includes the phones to which calls can be transferred (i.e., a
group that is preconfigured by the list). See Ans. 17 (citing Amin 8:56–9:6).
Thus, we disagree that the Examiner has construed the phrase,
“preconfigured group” unreasonably broad. Reply Br. 4–5. Moreover,
when combining these teaching with Henon and Vanttila as proposed, we
find the cited prior art collectively teaches the recitation “the control of the
short message service is limited to devices belonging to a preconfigured
group” as recited in claim 45. Ans. 9–10, 18.
Appellant also discusses a technique that initiates redirection of a call
from the called party’s telephone to a picker’s telephone, including a service
called “group call pickup,” are known and commonly available.
Spec. 1:11–15. Specifically, Appellant states “group call pickup” includes
“service groups of users [that] have been preconfigured[.]” Spec. 1:18–20.
As such, Appellant’s Specification describes the claimed feature of limiting
calls to devices belonging to a preconfigured group as known. Accordingly,
taking the record as a whole, we find that this concept of limited call transfer
to preconfigured devices was known to an ordinarily skilled artisan.
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Appellant further argues that the Examiner’s rationale for combining
the references is flawed. App. Br. 14; Reply Br. 5. One reason the
Examiner provides for combining Amin with Henon and Vanttila is for
purposes of security. See Ans. 18. Contrary to Appellant’s assertion, we
find support for this rationale in Amin. Reply Br. 5. Amin states that call
transfer security assists in preventing fraudulent use. See Amin, Abstract.
Amin additionally teaches adding security features with authorization being
precedent to call transfer, including matching numbers with a database.
Amin 2:53–56. When combining these teachings with Amin’s discussion of
cross-referencing numbers in a database, we find an ordinarily skilled artisan
would have recognized the cross-referencing is another form of security to
prevent the phone with non-transferable identification numbers from
receiving call transfers. See id.; Amin 7:4–17. We therefore conclude that
the Examiner has provided a reason with some rational underpinning to
justify that claim 45 is obvious based on the art.
Claims 46 and 47 depend from claim 45; claim 57 depends from claim
56. For claims 46, 47, and 57, we are not persuaded the Examiner erred for
the above-stated reasons concerning the claims from which these claims
depend. Additionally, we refer to the arguments concerning the combination
of Henon and Vanttila and claims 38 and 52, from which these claims
indirectly depend.
Thus, we will sustain the rejection of claims 45–47, 56, and 57.
Claims 53 and 58
Claims 53 and 58 depend from claim 52 and have not been separately
argued. Notably, claim 52 also was not separately argued from claim 38.
We are not persuaded that the Examiner erred in rejecting these claims for
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the reasons discussed above in connection with claim 38, which is similar in
scope to claim 52. Additionally, to the extent claim 53 is similar in scope to
claim 40 and claim 58 is similar to claim 47, we refer to the above
discussions.

OBVIOUSNESS REJECTION OVER HENON, VANTTILA,
AND ANDERSSON

Regarding independent claim 59, the Examiner finds that Henon and
Vanttila teach all the claim elements, except for the telecommunications data
including short message bearer service data from the cellular radio
communication interface of the communications terminal to the identified
device. Ans. 10-11. For this latter feature, the Examiner turns to
Andersson. Ans. 11. Appellant disagrees and argues that the Examiner
relies on impermissible hindsight when combining Andersson with Henon
and Vanttila. App. Br. 16–18. We disagree.
Appellant first argues that Henon fails to teach passing bearer service
messages. App. Br. 16. We are not persuaded for the reasons already
discussed. That is, the disclosure describes data calls as bearer services
(Spec. 2:15, 19:5–6), and Henon teaches or suggests sending a message or
request with the phone number for a call transfer (e.g., a data call). Henon
3:62–4:8; Fig. 2. Additionally, to the extent claim 59 recites “a short
message bearer service,” Vanttila and Andersson cure this deficiency. As
stated already, Vanttila teaches initiating control of a short message service,
but may not explicitly teach redirecting involves “telecommunications data
including a short message bearer service data from the cellular radio
communications interface of the communications terminal to the identified
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device” as recited. However, Andersson teaches diverting both calls and
SMS, which can be viewed as a similar function to a call transfer by an
ordinarily skilled artisan. Ans. 11 (citing Andersson 6:11–14).
Appellant also contends that Andersson does not support diversion of
a short message service or SMS because only claim 19 in Andersson and not
the rest of the disclosure discusses diverting a SMS. See App. Br. 16–17
(citing Andersson 2:29–33, 3:37-40). In essence, Appellant contends that
the priority date accorded to claim 19 of Andersson is after the priority date
of the application underlying this appeal. See id. However, Appellant has
no evidence to support this contention, other than merely asserting that “[i]f
Claim 19 . . . was added during prosecution” (App. Br. 16 (emphasis
added)), claim 19 would not be entitled the priority date of the instant
application. These arguments are merely speculative and do not take the
place of evidence. In re Schulze, 346 F.2d 600, 602 (CCPA 1965); see also
In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997). Furthermore, a reference is
good for all it teaches to a person of ordinary skill in the art. In re Fritch,
972 F.2s 1260, 1264 (Fed. Cir. 1992).
Appellant asserts that the Examiner’s rationale for modifying Henon
is conclusory and “wholly inadequate” using the claim as a roadmap. App.
Br. 17–18. We disagree, noting
[a]ny judgement on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.

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In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). When considering
the reasonable inferences and creative steps an ordinarily skilled artisan
would have employed (e.g., the knowledge within the level of ordinary skill
in the art), we agree with the Examiner that Andersson suggests combining
its teaching with Henon and Vanttila “in order to expand the capability of
call redirection into short message bearer service.” Ans. 11.
As discussed above, Henon teaches or suggests sending data messages
to implement redirection of telecommunications data; Vanttila teaches and
suggest using SMS to enable a call transfer function (e.g., initiate control of
a SMS to redirection data), which redirects telecommunications data. Also,
as explained above, Vanttila teaches a technique to improve on Henon’s
process of call transferring by initiating control of a SMS.
Henon and Vanttila indicate that there are various bearer service
options used by the communication terminal to redirect telecommunications
data, including using SMS or a short message bearer service. Henon further
notes that the base station reroutes an in-progress call to the wired telephone
(e.g., redirects telecommunications data from a cellular radio
communications interface of a communications terminal to the identified
device). Although Henon and Vanttila suggest redirecting calls that includes
either voice or data, they fail to teach explicitly the redirecting
telecommunications data includes short message bearer service data as
recited. Ans. 10-11. Yet, Andersson teaches that it is known in the art to
divert both calls and SMS. Ans. 11 (citing Andersson 6:11–14). Moreover,
combining these teachings in Henon, Vanttila, and Andersson amounts to no
more than a combination of familiar elements and the substitution of the
known techniques of Vanttila and Andersson in the Henon system does no
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more than yield a predictable result — a communications terminal
configured to initiate control of a short message bearer service in order to
redirect telecommunications data including short message bearer service
data from the cellular radio communications interface of the communication
terminal to the identified device. See KSR, 550 U.S. at 416–417. We
therefore conclude that the combination proposed by the Examiner is
obvious. See id.
Accordingly, we will sustain the rejection of claim 59.

CONCLUSION
The Examiner did not err in rejecting claims 38–50 and 52–59 under
§§ 102 or 103.
The Examiner erred in rejecting claim 59 under § 112, second
paragraph.

DECISION
The Examiner’s decision rejecting claims 38–50 and 52–59 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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