Ex Parte Etram et al

Patent Trial and Appeal Board

Mar 31, 2017

12802868 (P.T.A.B. Mar. 31, 2017)

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.
12/802,868 06/16/2010 Premkumar Etram YPF201003-0039/US 8544
(SAM07-
23990 7590
DOCKET CLERK
P.O. DRAWER 800889
DAT!.AS, TX 75380
EXAMINER
SIDDIQUI, KASHIF
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
04/04/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PREMKUMAR ETRAM and KUMARBRATA DAS
Appeal 2014-001323
Application 12/802,868
Technology Center 2600
Before KRISTEN L. DROESCH, DAVID M. KOHUT, and
KAMRAN JIVANI, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1—6 and 8—20.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART the Examiner’s rejection of these claims and
enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
1 The Examiner indicates claim 7 is objected to in the Advisory Action,
mailed April 18, 2013, and Appellants do not indicate claim 7 is under
appeal. App. Br. 12.
Appeal 2014-001323
Application 12/802,868
INVENTION
The invention is directed to methods of connecting and blocking calls.
See Abstract. Claims 1 and 13 are illustrative and are reproduced below:
1. A method for connecting and blocking a call in a
portable temlinal, comprising:
setting a call blocking time period, the call blocking time
period stored in a memory and defined by a call blocking time
period; and
in response to the call blocking time period being defined
by the call blocking time period:
measuring an elapsed time period from a time point when
the call blocking time period is set,
determining whether the elapsed time period exceeds the
set call blocking time period when the portable terminal receives
a call connection request from an external terminal, and
blocking the call connection and transmitting a remaining
time period to the external terminal if the elapsed time period
does not exceed the set call blocking time period, the remaining
time period calculated by subtracting the elapsed time period
from the set call blocking time period.
13. The method of claim 12, wherein setting the user
state information comprises selecting from a list comprising
meeting, driving, and sleeping.
Claims 1—6 and 8—17 are rejected under 35 U.S.C. 103(a) as obvious
overQiu. Ans. 5—13.
Claims 18—20 are rejected under 35 U.S.C. 103(a) as obvious over the
combination of Ramnani and Rollin. Ans. 13—16.
REFERENCES
Qiu
Rollin
Ramnani
US 2006/0210024 A1 Sept. 21, 2006
US 2008/0098328 A1 Apr. 24, 2008
US 2011/0113084 A1 May 12, 2011
REJECTIONS AT ISSUE
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Application 12/802,868
ISSUES
Did the Examiner err in finding that Qiu teaches or suggests
“determining whether the elapsed time period exceeds the set call blocking
time period,” as recited in claim 1?
Did the Examiner err in finding that Qiu teaches or suggests
“transmitting a message stating that a call can be connected to the at least
one external terminal if the call connection blocking mode of the portable
terminal is changed from the execution mode to the release mode,” as recited
in independent claim 8?
Did the Examiner err in finding that Qiu teaches or suggests
“transmitting a message to the external terminal, the message asking the
external terminal to select whether to proceed with the call connection with
the portable terminal,” as recited in independent claim 10?
Did the Examiner err in finding that Qiu discloses “setting a user state
information,” as recited in dependent claim 11?
Did the Examiner err in finding that Qiu teaches or suggests “the
message further comprises: the set user state information,” as recited in
dependent claim 12?
Did the Examiner err in finding that Qiu teaches or suggests “setting
the user state information comprises selecting from a list comprising
meeting, driving, and sleeping,” as recited in dependent claim 13?
Did the Examiner err in finding that the combination of Ramnani and
Rollin teaches or suggests “informing the second portable terminal that the
first portable terminal will store a phone number of the second portable
terminal in a first update list of user state information,” as recited in
independent claim 18?
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Application 12/802,868
ANALYSIS
Claims 1-6
We select claim 1 as representative of the group comprising claims
1-6 as Appellants have not argued any of the other claims with particularity.
37 C.F.R. § 41.37(c)(l)(iv). Claim 1 recites “determining whether the
elapsed time period exceeds the set call blocking time period.” The
Examiner finds that Qiu discloses the disputed limitation. App. Br. Claims
App. 1. Specifically, the Examiner finds that Qiu teaches a call screening
function that can be set for a particular duration. Final Act. 2 (citing Qui |
23); Ans. 16—17 (citing Qui 123). Additionally, in response to a received
call, the Examiner finds that Qui teaches that the call screening function is
checked to see if it has expired, wherein the expiration of the call screening
function indicates that the duration has been exceeded. Final Act. 2 (citing
Qui Fig. 5); Ans. 17 (citing Qui Fig. 5).
Appellants argue that the Examiner’s finding is in error because Qui
fails to teach a comparison step to determine whether a time period exceeds
a set time period. App. Br. 16. Appellants additionally argue that checking
to determine whether a call screen function has expired is not the same as
determining whether a time period exceeds a call blocking duration. App.
Br. 16—18; Reply Br. 5.
We are not persuaded by Appellants’ arguments. The duration of the
call screening function is reasonably interpreted as a “call blocking time
period,” within the meaning of claim 1. See Final Act. 2; Ans. 16—18. Qiu
figure 5 item 300 teaches making a determination (Y/N) on whether a “Call
Screening Function [is] Expired.” See Qiu 23; Final Act. 2, 5; Ans. 17.
Additionally, paragraph 23 of Qiu teaches that, when the set duration
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expires, the call screening function will automatically lapse. Thus, the
determination taught by Qiu figure 5 item 300 is whether or not the given
duration has expired. One of ordinary skill in the art would recognize that
determining whether or not a time period has expired is a determination of
whether or not the time period has been exceeded.
Therefore, we sustain the Examiner’s rejection of claims 1—6.
Claims 8 and 9
We select claim 8 as representative of the group comprising claims 8
and 9 as Appellants have not argued any of the other claims with
particularity. 37 C.F.R. § 41.37(c)(l)(iv). Claim 8 recites “transmitting a
message stating that a call can be connected to the at least one external
terminal if the call connection blocking mode of the portable terminal is
changed from the execution mode to the release mode.” The Examiner finds
this limitation is taught by Qiu figure 5 step 380. Final Act. 2; Ans. 17.
Specifically, the Examiner finds Qiu, paragraph 33, discloses “[a] message is
then generated informing the caller of the call screening mode, the time left,
leave message option, and optionally information regarding the bypass
function in step 380.” Final Act. 2. The Examiner finds that the information
contained in the bypass function is “indicative of that call being allowed
when the mode is changed from execution (i.e. screening) mode to release
mode.” Ans. 18.
Appellants argue that the Examiner’s finding is in error because Qiu
only teaches how to bypass the execution mode, but makes no mention of a
message stating that a call can be connected to the at least one external
terminal if the call connection blocking mode of the portable terminal is
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changed from the execution mode to the release mode, as required by the
claim. App. Br. 19; Reply Br. 8. Thus, Appellants do not argue that Qiu
lacks changing from execution mode to release mode, but rather that Qiu
lacks sending a message indicating that a call will be allowed to go through
when the execution mode is changed to a release mode. App. Br. 19.
While we agree with Appellants that Qiu’s message does not
explicitly state in the exact claim language that a call can be connected when
the call connection blocking mode is changed from the execution mode to
the release mode, we find that Qui still suggests that the claim language
based upon a reasonable interpretation of the claim language. Specifically,
we agree with the Examiner (Ans. 18) that because the user knows the
bypass function, when executed, causes the terminal to change from
blocking a call to allowing a call (i.e., from and execution mode to a release
mode), the inclusion of the bypass information in the message communicates
to the user that the call can be connected when the mode is changed from a
call blocking execution mode to a call blocking release mode. See also Qiu,
28 and 33. As such, we sustain the Examiner’s rejection of claims 8 and
9.
Claims 10 and 15-17
We select claim 10 as representative of the group comprising claims
10 and 15-17 as Appellants have not argued any of the other claims with
particularity. 37 C.F.R. § 41.37(c)(l)(iv). Claim 10 recites “transmitting a
message to the external terminal, the message asking the external terminal to
select whether to proceed with the call connection with the portable
terminal.” The Examiner finds that Qiu, figure 5, step 380, teaches this
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Application 12/802,868
limitation. Ans. 18. In particular, the Examiner finds Qiu, paragraph 33,
teaches generating a message that contains information regarding a bypass
function. Final Act. 3; Ans. 18. The Examiner explains that the information
in the message regarding the bypass function is for bypassing the call
blocking function and proceeding with the call. Final Act. 3; Ans. 18; see
also Qiu, 28 and 33. Therefore, the Examiner concludes that the bypass
information “serve[s] to ask the user as to whether or not to proceed with the
call.” Final Act. 3; Ans. 18.
Appellants disagree and argue that the portion cited by the Examiner
only gives a set of instructions on how to bypass the call blocking, but does
not ask the external terminal whether it wants to proceed with the call or not.
App. Br. 21-22; Reply Br. 9. Instead, Appellants contend that the bypass
information informs the external terminal that to bypass the call blocking the
call must be repeated a certain number of times within a set period of time.
App. Br. 22; Reply Br. 10.
We agree with the Examiner. While Qiu does not explicitly ask the
terminal the question “do you want to proceed with the call,” we find that
providing information on how to proceed with the call performs the same
function.2 The external terminal is answering the question in the affirmative
if it follows the bypass instructions and in the negative if the terminal
chooses not to follow the bypass instructions.
Therefore we sustain the Examiner’s rejection of claims 10 and claims
15-17.
2 Additionally, we note that neither claim 10 nor Appellants’ Specification
defines how the method of “asking” is accomplished.
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Dependent Claim 11
Claim 11 recites “setting a user state information.” The Examiner
interprets this limitation to mean “information relating to the state of a user.”
Ans. 20. As such, the Examiner finds that Qiu teaches this limitation in
paragraphs 23 and 28. Ans. 20. In particular, the Examiner finds that the
duration of the call screening function is information relating to the state of a
user and, thereby, state information. Ans. 20—21.
Appellants argue that the Examiner’s interpretation of ‘duration’ as a
“state of a user” is inconsistent with the specification and with a reasonable
interpretation by one skilled in the art. App. Br. 25; Reply Br. 13—14.
Appellants contend that the “specification states that the user state
information may be a list of situations in which a user cannot, or does not
want to, answer his/her call, for example, 'meeting,' 'driving,' 'sleeping,' and
so forth.” Reply Br. 14. Thus, Appellants argue that a “duration of a call
screening function” is not “user state information.” Reply Br. 14.
Appellants’ Specification uses the words “may be” and “so forth”
indicating that the list provided are simply examples of an interpretation of
“state information.” See Spec. 1 58. Because Appellants’ Specification
lacks any specific definition of the term, we agree with the Examiner’s
interpretation (Ans. 20) that “state information” includes any information
relating to the state of a user. Therefore, we also agree with the Examiner
(Ans. 20) that “state information” includes the start and end time of a
meeting or the duration of a call screening function.
Additionally, we note that Qiu, paragraph 28, teaches that “the reason
for the call blocking function may also be entered (e.g., in a meeting, not
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Application 12/802,868
available, etc.).” Thus, we find that Qiu teaches one of the examples of a
user state information cited by Appellants’ Specification.
For all of the reasons indicated above, we sustain the Examiner’s
rejection of claim 11.
Dependent Claims 12 and 14
We select claim 12 as representative of the group comprising claims
12 and 14 as Appellants have not argued claim 14 with particularity. 37
C.F.R. § 41.37(c)(l)(iv). Claim 12 recites “the message further comprises:
the set user state information.” The Examiner finds that this limitation is
taught by Qiu. Ans. 21. Specifically, the Examiner finds that the system
sends a message that informs “the caller of the call screening mode, the time
left, leave message option, and optionally information regarding the bypass
function in step 380.” Final Act. 10. Additionally, the Examiner finds that
the call screening duration indicates how long the user wants to be
uninterrupted by incoming calls, i.e., user state information. Ans. 21.
Appellants disagree and argue that the portion of Qiu cited by the
Examiner does not contain a message that includes user state information.
App. Br. 26; Reply Br. 15. Appellants contend that the interpretation of
“user state information” is incorrect for the same reasons indicated with
respect to claim 11. App. Br. 26.
As indicated above with respect to claim 11, we disagree with
Appellants that “user state information” should not be interpreted to include
any information about the state of a user. Therefore, we agree with the
Examiner that the duration of the call screening function is user state
information that is included in a message, as claimed.
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Therefore we sustain the Examiner’s rejection of claims 12 and 14.
Dependent Claim 13
Claim 13 recites “setting the user state information comprises
selecting from a list comprising meeting, driving, and sleeping.” The
Examiner finds that Qiu, Figure 1, teaches this limitation because the reason
for blocking a call can be entered. Ans. 21. Additionally, the Examiner
finds that the call blocking function will allow an individual to be
undisturbed when the individual is in a meeting, at a movie, in a religious
service, napping, etc. Ans. 21.
Appellants argue that the Examiner’s findings are merely a list of why
a user would want to screen calls, not the setting of user information selected
from a list. App. Br. 26-27; Reply Br. 16. We agree with Appellants.
While Qiu indicates situations in which the call blocking function would be
used, we agree with Appellants (App. Br. 26-27; Reply Br. 16) that the
Examiner has not shown that these user states can be selected from a list.
Instead, Qiu merely teaches that the user state can be inputted manually
inputted by the user. See Qiu 128. Nevertheless, we find that it would have
been obvious to one of ordinary skill in the art to use the list disclosed by
Qiu with the system to allow the user to select a reason for the use of the call
blocking function in order to save time and be more efficient. This would be
nothing more than a combination of familiar elements according to known
methods that yield predictable results. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 406 (2007). As our analysis deviates from the Examiner’s, we
designate our analysis to be a new ground of rejection of claim 13 under 35
U.S.C. § 103(a) over Qiu.
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Claim 18
We select claim 18 as representative of the group comprising claims
18-20 as Appellants have not argued any of the other claims with
particularity. 37 C.F.R. § 41.37(c)(l)(iv). Claim 18 recites “informing the
second portable terminal that the first portable terminal will store a phone
number of the second portable terminal in a first update list of user state
information.” The Examiner finds that Ramnani teaches this limitation.
Final Act. 3; Ans. 19-20. In particular, the Examiner finds that Ramnani
teaches that on acceptance of the request for connection by the recipient (i.e.,
the recipient is information [sic] of the connection request and accepts it),
the information exchange server transfers the recipient profile to the mobile
client on the requestor's first mobile device and vice versa, wherein the user
profile contains contact numbers. Final Act. 3^4; Ans. 19—20. “The
Examiner points out that the transfer of the recipient profile is inclusive of
storing said profile (Ramnani Fig 9 and 0082) where the user profiles are
stored in a memory 908.” Ans. 20.
Appellants argue “the Examiner makes an incredible leap and
surmises that, since information is exchanged, this means that the informing
is tantamount to the very specific action of informing the second portable
terminal that the first portable terminal will store a phone number of the
second portable terminal.” Reply Br. 12. Appellants further argue “just
requesting a connection” “cannot be interpreted as informing the second
portable terminal that the first portable terminal will store a phone number of
the second portable terminal.” Id. at 13. Therefore, Appellants contend that
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the Examiner has not shown that the second portable terminal is “informed.”
App. Br. 24.
We agree with the Examiner. As stated by the Examiner, the crux of
the Ramnani invention is to exchange information (i.e., electronic business
cards) between devices. Ans. 20; see also Ramnani 13. Additionally, we
agree with the Examiner (Ans. 20) that if a request is accepted, the request is
also an indication to the second device that the first device is willing to store
a recipient profile; otherwise, the first device would not accept the request.
Therefore, we sustain the Examiner’s rejection of claims 18-20.
CONCLUSION
The Examiner did not err in finding that Qiu teaches or suggests
“determining whether the elapsed time period exceeds the set call blocking
time period,” as recited in claim 1.
The Examiner did not err in finding that Qiu teaches or suggests
“transmitting a message stating that a call can be connected to the at least
one external terminal if the call connection blocking mode of the portable
terminal is changed from the execution mode to the release mode,” as recited
in claim 8.
The Examiner did not err in finding that Qiu teaches or suggests
“transmitting a message to the external terminal, the message asking the
external terminal to select whether to proceed with the call connection with
the portable terminal,” as recited in claim 10.
The Examiner did not err in finding that Qiu teaches or suggests
“setting a user state information,” as recited in dependent claim 11.
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The Examiner did not err in finding that Qiu teaches or suggests “the
message further comprises: the set user state information,” as recited in
dependent claim 12.
The Examiner erred in finding that Qiu teaches or suggests “setting
the user state information comprises selecting from a list comprising
meeting, driving, and sleeping,” as recited in dependent claim 13.
The Examiner did not err in finding that Ramnani teaches or suggests
“informing the second portable terminal that the first portable terminal will
store a phone number of the second portable terminal in a first update list of
user state information,” as recited in claim 18.
SUMMARY
The Examiner’s decision to reject claims 1—6, 8—12, and 14—17 under
35 U.S.C. § 103(a) as unpatentable over Qiu is affirmed.
The Examiner’s decision to reject claims 18—20 under 35 U.S.C.
§103(a) as unpatentable over the combination of Ramnani and Rollin is
affirmed.
The Examiner’s decision to reject claim 13 under 35 U.S.C. § 103(a)
as unpatentable over Qiu is reversed and we enter a new ground of rejection
for claim 13 under 35 U.S.C. § 103(a).
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with this
appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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