Ex Parte Erhart et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10984398 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte GEORGE WILLIAM ERHART, VALENTINE C.
MATULA, and DAVID JOSEPH SKIBA
________________

Appeal 2010-003823
Application 10/984,398
Technology Center 2600
________________

Before JEFFREY S. SMITH, ERIC B. CHEN, and GLENN J. PERRY,
Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003823
Application 10/984,398

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1-9 and 11-26. Claim 11 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellants’ invention relates to delivering “content” to a
telecommunications user engaged in a call on a “first terminal,” when the
“first terminal” is not appropriate to the content to be delivered. A “second
terminal” is selected to receive the content based on the “first terminal,”
mode of communication (e.g., voice, video, text, etc.) of the call; identity of
user, others on the call, other terminals on the call, date, time, location of
user, and location of other users. See generally Abstract.

Evidence Considered
The Examiner relies on the following as evidence in making the
rejections listed below:
Chern US 2002/0010000 A1 Jan. 24, 2002
De Moerloose US 6,608,556 B2 Aug. 19, 2003
Reynolds US 2004/0266460 Dec. 30, 2004
Johnston US 7,266,591 B1 Sep. 4, 2007

Rejections
1. The Examiner rejected claims 1-7, 9, 11-13, and 16-20 under 35
U.S.C. §103(a) as being unpatentable over Reynolds, in view of De
Moerloose and further in view of Johnston.
Appeal 2010-003823
Application 10/984,398

3
2. The Examiner rejected claims 21, and 23-25 under 35 U.S.C. §
103(a) as being unpatentable over Reynolds in view of Johnston.
3. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds in view of Johnston and further in view of De
Moerloose.
4. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds in view of De Moerloose and further in view of
Johnston in further view of Chern.
5. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds in view of Johnston and further in view of De
Moerloose in further view of Chern.

REJECTION #1
Claim 1
Claim 1 appears below with disputed limitations highlighted.
1. A method comprising:
selecting, at a data-processing system, a second
telecommunications terminal based on:
i) media content that is related to a call-in-
progress, the call involving a first
telecommunications terminal that is using a first
mode of communication, and
ii) one or more capabilities of the second
telecommunications terminal; and
transmitting, during the call, the media content
from the data-processing system to the second
telecommunications terminal via a second mode of
communication.

Appeal 2010-003823
Application 10/984,398

4
Appellants assert, with regard to claim 1, that none of the references
teach the disputed limitation of selecting a second telecommunications
terminal based on media content “related to a call-in-progress.” Br. 13.
Appellants merely point out limitations recited in claim 1 and assert that the
prior art fails to teach the limitations. Appellants fail to present an argument
for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“we hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). Nevertheless, we have reviewed the record with
respect to the rejections before us.
The Examiner relies upon the combination of Johnston and De
Moerloose for teaching this disputed limitation. Ans. 5. In particular, the
Examiner finds that:
De Moerloose teaches selecting, at a data-processing system the
second communications terminal based on: i) media content,
the calling involving a first telecommunications terminal that is
using a first mode of communication, and ii) one or more
capabilities of the second telecommunications terminal (figures
1,3, abstract, column 2 lines 43-65, column 7 lines 14-31,50-61,
column 8 lines 9-18, 29-49, read as electronic billboard is
selected by the system to show information to a user).
Ans. 4.
The Examiner also finds that Johnston teaches:
selecting and transmitting during a call and that the media
content is related to a call-in-progress (column 6 lines 39-50,
column 7 lines 57-60, read as the user agent sends an invite sdp
message to the proxy server, which in tum transmits the
message to the user content, such as music or company specific
sales and information).
Appeal 2010-003823
Application 10/984,398

5
Ans. 5.
The Examiner’s specific findings regarding both De Moerloose and
Johnson are not challenged and we adopt those findings as our own.
We are therefore not persuaded of Examiner error as to claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1. We also
sustain the rejection of claims 2-7, depending from claim 1 and not
separately argued.

Claim 9
Claim 9 appears below with the disputed limitations highlighted.
9. A method comprising:
receiving a first signal at a data-processing
system from a first telecommunications terminal,
the first signal representing a call being conducted
via a first mode of communication, and the first
telecommunications terminal being involved in the
call;
selecting, at the data-processing system, i) a
second telecommunications terminal
and ii) a second mode of communication that is
different from said first mode of communication,
the selection being based on the first
telecommunications terminal and the
first signal; and
transmitting, in accordance with the second
mode of communication, a second signal
from the data-processing system to the second
telecommunications terminal during the call.

Appellants assert, with respect to claim 9, that none of the references
teach selecting a second telecommunications terminal based on the first
telecommunications terminal and a “first signal representing a call.” Br. 14.
Appeal 2010-003823
Application 10/984,398

6
With regard to the disputed limitation, the Examiner relies on De
Moerloose as teaching: “selecting, at the data-processing system a second
telecommunications terminal (figures 1,3, abstract, column 2 lines 43-65,
column 7 lines 14-31, column 8 lines 9-18, 29-49, read as electronic
billboard is selected by the system to show information to a user).” Ans. 6.
The Examiner’s specific findings regarding De Moerloose are not
challenged and we adopt those findings as our own. We are therefore, not
persuaded of Examiner error and therefore sustain the Examiner’s rejection
of claim 9. We also sustain the rejection of claims 11-13, and 16, not
separately argued.

Claim 17
Claim 17 appears below with the disputed limitations highlighted.
17. A method comprising:
selecting a second software application and a
second mode of communication, based on
i) a first software application and
ii) a first mode of communication of a call in
progress that involves the first software
application; and
transmitting, during the call and in accordance
with the second mode of communication, a signal
from a data-processing system to a computing
platform that hosts the second software
application.

With regard to claim 17, Appellants assert that none of the references
teach the limitation “selecting . . . a first mode of communication of a call in
progress . . . .” Br. 14. Our reasoning above with respect to claim 1 applies
also to claim 17.
Appeal 2010-003823
Application 10/984,398

7
Therefore, we are not persuaded of Examiner error and therefore,
sustain the Examiner’s rejection of claim 17. We also sustain the rejection
of claims 18-20, depending from claim 17 and not separately argued.

REJECTION #2
Claim 21 appears below with the only disputed limitations
highlighted.
21. A method comprising:
receiving, at a first telecommunications
terminal, a signal in accordance with a second
mode of communication while on a call-in-
progress in which the first telecommunications
terminal is exchanging signals in accordance with
a first mode of communication;
selecting a second telecommunications
terminal, based on i) the first telecommunications
terminal and ii) the second mode of
communication; and
transmitting the signal from the first
telecommunications terminal to the second
telecommunications terminal during the call.

Appellants urge, with regard to claim 21 that none of the references
teach “selecting a second telecommunications terminal, based on i) the first
telecommunications terminal and ii) the second mode of communication;”
and “transmitting the signal from the first telecommunications terminal to
the second telecommunications terminal during the call.” Br. 15.
The Examiner relies on Johnston for teaching:
receiving and transmitting while on a call-in-progress and
selecting a second telecommunications terminal based on i) the
first telecommunications terminal and ii) the second mode of
communication (column 6, lines 51-53, column 7, lines 8-12,
Appeal 2010-003823
Application 10/984,398

8
read as the user agent controls the call processing, where the
user agent acts as a Back-to-Back User Agent and uses SIP 3
pcc to invite a content server, which is sent the SDP
information of the other user agent during a call on hold (i.e.
call-in-progress).
Ans. 9-10.
The Examiner further found that Reynolds teaches “transmitting the
signal from the first telecommunications terminal to the second
telecommunications terminal (paragraphs 8, 15, 16,25,26,37,38, read as data
is transmitted from the network to the electronic display).” Ans. 9.
The Examiner’s specific findings regarding both Johnson and
Reynolds are not challenged and we adopt those findings as our own. We
are not persuaded of Examiner error by Appellant’s assertion that the
disputed limitations of claim 21 are not taught and therefore sustain the
Examiner’s rejection of claim 21. We also sustain the rejection of claims
23-25, not separately argued.

REJECTION #3
Claim 22 was separately rejected based on Reynolds, Johnston, and
De Moerloose. Ans. 10. Appellants rely solely on arguments presented with
respect to claim 21. Br. 15. For the reasons set forth with respect to claim
21, we sustain the rejection of claim 21.

REJECTION #4
Claims 8, 14, and 15 were separately rejected based on Reynolds, De
Moerloose, Johnston, and Chern. Ans. 11. The teachings of Chern were not
challenged. Appellants rely solely on argument presented with respect to
Appeal 2010-003823
Application 10/984,398

9
claim 1. Br. 15-16. For the reasons set forth with respect to claim 1, we
sustain the rejection of claims 8, 14, and 15.

REJECTION #5
Claim 26 was separately rejected based on Reynolds, De Moerloose,
Johnston, and Chern. Ans. 13. Appellants rely solely on argument
presented with respect to claim 21. Br. 16. For the reasons set forth with
respect to claim 21, we sustain the rejection of claim 26.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting
claims 1-9 and 11-26 under §103.

ORDER
The Examiner’s decision rejecting claims 1-9 and 11-26 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

gvw