Ex Parte Frank et al

Patent Trial and Appeal Board

Mar 28, 2014

11529106 (P.T.A.B. Mar. 28, 2014)

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.
11/529,106 09/28/2006 Scott Frank 060099 (BLL0381US) 7972
36192 7590 03/28/2014
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MORLAN, ROBERT M
ART UNIT PAPER NUMBER
2475
MAIL DATE DELIVERY MODE
03/28/2014 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 SCOTT FRANK and ROBERT KOCH
____________________

Appeal 2011-010483
Application 11/529,106
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 7, 9-14, 17, and 19-21. Claims 5, 6, 8, 15, 16, 18, 22, and 23
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Exemplary Claims
Exemplary independent claims 1 and 20 under appeal, with emphasis
added to the disputed portions of the claims, read as follows:
1. A method of processing a received communication, the method
comprising:
receiving the communication;
determining if the communication is designated urgent;
if the communication is urgent;
altering at least one parameter of a recipient communication
device in response to urgent information accompanying the urgent
communication; and
signaling receipt of the urgent communication at the recipient
communication device;
wherein signaling receipt of the urgent communication includes
extracting a text urgent notification from an urgent notification field in the
urgent information, extracting an audio or visual urgent communication
body from an urgent communication body field in the urgent information
and using the text urgent notification and the audio or visual urgent
communication body to signal receipt of the urgent communication.

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20. A non-transitory computer-readable storage medium for sending
an urgent communication, the computer-readable storage medium
comprising instructions for:
generating a communication at a sender communication device;
associating urgent information with the communication;
wherein the urgent information includes an indic[a]tor designating
the communication as urgent and associated instructions to be sent with the
communication to a recipient of the communication to instruct a recipient
communication device of the communication to alter at least one
communication alerting characteristic in response to receipt of the
instructions;
wherein the urgent information includes a text urgent notification in
an urgent notification field to be extracted at a recipient communication
device and an audio or visual urgent communication body in an urgent
communication body field to be extracted at the recipient communication
device.
Examiner’s Rejections
(1) The Examiner rejected claims 1-3, 10-13 as being unpatentable
under 35 U.S.C. § 103(a) over Sanders (US 2006/0046727 A1), Alperovich
(US 6,175,743 B1), and Paakkonen (US 2006/0121818 A1). Ans. 4-8.
(2) The Examiner rejected claims 4, 7, 10, 14, and 17 as being
unpatentable under 35 U.S.C. § 103(a) over Sanders, Alperovich,
Paakkonen, and Moody (US 2006/0003814 A1). Ans. 8-10.
(3) The Examiner rejected claims 9 and 19 as being unpatentable
under 35 U.S.C. § 103(a) over Sanders, Alperovich, Paakkonen, and Van
Swaay (US 2004/0046637 A1). Ans. 10-12.
(4) The Examiner rejected claims 20 and 21 as being unpatentable
under 35 U.S.C. § 103(a) over Yamazaki (US 6,124,801) in view of
Paakkonen. Ans. 12-13.
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Appellants’ Contentions
(1) With regard to claims 1-3 and 10-13 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sanders, Alperovich, and Paakkonen,
Appellants argue that:
(a) none of the applied references, together or individually,
disclose the “if then” condition (i.e., if a communication is urgent,
then signaling receipt of the communication including extracting a
text urgent notification), as recited in representative claim 1 (Br. 4-5);
(b) Sanders fails to disclose designating a communication as
urgent (Br. 4); and
(c) Paakkonen fails to disclose limiting MMS ringing features
to urgent communications, or detecting whether communications are
urgent (Br. 5).
(2) With regard to claims 4, 7, 10, 14, and 17 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sanders, Alperovich, Paakkonen, and
Moody, Appellants argue that Moody fails to cure the deficiencies of the
three base references, as already argued with respect to claims 1 and 11 (Br.
5-6).
(3) With regard to claims 9 and 19 rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sanders, Alperovich, Paakkonen, and Van
Swaay, Appellants argue that (i) Van Swaay fails to cure the deficiencies of
the three base references, and (ii) Van Swaay fails to teach determining if
the communication is urgent (Br. 6).
(4) With regard to the rejections of claims 20 and 21 rejected under 35
U.S.C. § 103(a) over Yamazaki and Paakkonen, Appellants argue that (i)
Yamazaki’s recall code is not equivalent to the recited urgency information
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(Br. 7-8), and (ii) Paakkonen’s audio-video message notification does not
apply to Yamazaki’s re-call system (Br. 7-8).
In view of the foregoing, our analysis will only address the merits of
claims 1, 9, and 20.
Reply Brief
No Reply Brief has been presented. Therefore, Appellants have not
disputed the Examiner’s articulated reasoning and findings found at pages
13-17 of the Answer, including the Examiner’s new citations to paragraphs
[0002], [0014], and [0024] of Sanders and Figure 2c of Paakkonen (Ans. 14-
16).
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (Br. 4-8), the
following issues are presented on appeal:
Did the Examiner err in rejecting claims 1-4, 7, 9-14, 17, and 19 as
being obvious over the base combination of Sanders, Alperovich, and
Paakkonen because (i) Sanders, Alperovich, and Paakkonen combined fails
to teach or suggest the method and instructions for processing received
communications in response to urgent information recited in claims 1 and
11, and/or (ii) Sanders fails to teach or suggest “altering at least one
parameter of a recipient communication device in response to urgent
information accompanying the urgent communication,” as recited in
independent claim 1, and as similarly recited in independent claim 11?
Did the Examiner err in rejecting claims 20 and 21 as being obvious
over the combination of Yamazaki and Paakkonen because the combination
fails to teach or suggest the subject matter of independent claim 20,
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including the recited urgency information associated with the
communication?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 4-8) that the Examiner has erred. We
disagree with Appellants’ conclusions.
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Ans. 4-13), and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (Ans. 13-17). We highlight and amplify certain teachings and
suggestions of the references, as well as certain ones of Appellants’
arguments as follows.
Claims 1-3 and 10-13
We agree with the Examiner (Ans. 4-5 and 12-14) that Sanders (¶¶
[0002], [0014], [0018], [0021], [0022], and [0024]; important, emergency,
vital, and priority messages are found/recognized) and Alperovich (col. 4, l.
64 to col. 5, l. 10; see e.g., priority header 323 indicating the priority of a
message as being urgent) each disclose determining if a communication is
urgent. Sanders discloses “vital” communications which are equivalent to
the recited “urgent” communications, and discloses waking up upon receipt
of such an urgent communication (¶¶ [0002], [0014], and [0024]; Ans. 13-
14). And, Alperovich teaches designating messages as urgent (see header
323 which indicates urgency described from col. 4, l. 64 to col. 5, l. 8; Ans.
14). We also agree with the Examiner that Paakkonen (¶¶ [0032] and
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[0033]; Fig. 2c) discloses creating messages with specialized fields
containing text, images/video, and/or audio (Ans. 13, 15, and 16). Notably,
Appellants have not (i) responded to the Examiner’s response to Appellants’
arguments in the Appeal Brief by way of a Reply Brief, or (ii) otherwise
rebutted with evidence or argument the Examiner’s citations to Sanders and
Paakkonen found at pages 14-16 of the Answer.
In light of our agreement with the Examiner’s findings, Appellants’
contentions that (i) Sanders, Alperovich, and Paakkonen combined fail to
teach or suggest the method and instructions for processing received
communications in response to urgent information recited in claims 1 and
11, and (ii) Sanders fails to teach or suggest “altering at least one parameter
of a recipient communication device in response to urgent information
accompanying the urgent communication,” as set forth in independent claim
1 and as similarly recited in independent claim 11, are not persuasive.
In view of the foregoing, we sustain the rejection of claims 1-3 and
10-13 under 35 U.S.C. § 103(a).
Claims 9 and 19
With regard to claims 9 and 19, we agree with the Examiner (Ans. 11)
that Van Swaay discloses automatically answering communications (¶¶
[0049] and [0070]), and Sanders discloses emergency service call
communications (¶ [0005]). Appellants’ argument (Br. 6) that Van Swaay
fails to teach or suggest determining if a communication is urgent is
unpersuasive in light of the Examiner’s reliance upon Sanders and/or
Alperovich as teaching or suggesting this feature. Appellants’ arguments
regarding claims 9 and 19 (Br. 6) are unpersuasive for similar reasons as
provided supra with regard to claims 1 and 11 from which these claims
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depend. In view of the foregoing, we also sustain the Examiner’s rejection
of claims 9 and 19.
Claims 20 and 21
Claims 20 and 21 are obvious over the combination of Yamazaki and
Paakkonen because the combination teaches or suggests the subject matter
of independent claim 20, including the recited urgency information
associated with the communication.
In response to Appellants’ arguments that Yamazaki’s recall code is
not equivalent to the recited urgency information (Br. 7-8), and (ii)
Paakkonen’s audio-video message notification does not apply to Yamazaki’s
re-call system (Br. 7-8), the Examiner responds (Ans. 15-17) that
Paakkonen’s paragraph [0032] and Figure 2c disclose an MMS ringing
image message 122 that includes fields 270, 272, 276, and 278 for
presentation format, images/videos, audio, and text. We agree with the
Examiner’s findings in this regard, and specifically we agree with the
Examiner (Ans. 12-17) that Yamazaki discloses a recall code that is the
equivalent of the recited urgent information including an indicator (see cols.
1, 3, and 4; especially col. 1, ll. 48-55), and that Paakkonen (¶¶ [0032] and
[0033]; Fig. 2c) discloses creating messages with specialized fields
containing text, images/video, and/or audio (Ans. 13, 15, and 16). Notably,
Appellants have not responded by way of a Reply Brief or otherwise rebut
with evidence or argument the Examiner’s citations to Paakkonen found at
pages 15-16 of the Answer.
In view of the foregoing, we also sustain the Examiner’s rejection of
claims 20 and 21, and agree with the Examiner that claims 20 and 21 have
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not been shown to be patentably distinguishable from the teachings of the
applied prior art.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-4, 7, 9-14, 17,
and 19 as being obvious over the base combination of Sanders, Alperovich,
and Paakkonen because (i) Sanders, Alperovich, and Paakkonen combined
teaches or suggests the method and instructions for processing received
communications in response to urgent information recited in claims 1 and
11, and (ii) Sanders teaches or suggests “altering at least one parameter of a
recipient communication device in response to urgent information
accompanying the urgent communication,” as set forth in independent claim
1 and as similarly recited in independent claim 11.
(2) The Examiner has not erred in in rejecting independent claim 20,
since the combination of Yamazaki and Paakkonen teaches or suggests the
subject matter of independent claim 20, including the recited urgency
information associated with the communication, as recited in independent
claim 20.

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DECISION
The Examiner’s rejections of claims 1-4, 7, 9-14, 17, and 19-21 under
35 U.S.C. § 103(a) are 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

ELD