Ex Parte Jagadeesan et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11003201 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAMANATHAN T. JAGADEESAN, BICH T. NGUYEN and
CHRISTOPHER E. PEARCE
____________

Appeal 2009-009491
Application 11/003,201
Technology Center 2600
____________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009491
Application 11/003,201

2
STATEMENT OF THE CASE
The invention is directed to network communications wherein a
method and system for providing a dual mode phone feature proxy in a
network environment is featured. See Specification 1.

Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-31. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We affirm.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A mobile station, comprising:

a first wireless interface operable to couple to a first
wireless network;

a second wireless interface operable to couple to a second
wireless network; and

a controller operable to negotiate a first wireless link with
the first wireless network using the first wireless interface, to
establish a communication session with a device using the first
wireless link, to facilitate the communication session with a
second wireless link with the second wireless network using the
second wireless interface, and to invoke a plurality of private
branch exchange features while the mobile station is operating
in the second wireless network, wherein one or more of the
features are delivered to the mobile station via a phone feature
proxy function that is enabled by a mobility application that is
operable to communicate with the mobile station.

Appeal 2009-009491
Application 11/003,201

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Rejections on Appeal
Claims 1-6, 8-21, 24-29 and 31 stand rejected under 35 U.S.C.
§102(e) as being anticipated by Hirsbrunner (U.S. Patent Number 6,999,770
B2; February 14, 2006; filed December 30, 2003). Answer 4-16.
Claims 8, 22, 23 and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hirsbrunner and Sundar (U.S. Patent Application
Publication 2003/0134638 A1; July 17, 2003). Answer 17-20.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hirsbrunner and Bartle (U.S. Patent Number 5,732,347;
March 24, 1998). Answer 20-21.

Issue on Appeal
Does Hirsbrunner teach invoking multiple PBX features from a
different network?

ANALYSIS
Anticipation Rejection
Appellants argue Hirsbrunner does not have the ability to: “invoke a
plurality of private branch exchange features while the mobile station is
operating in the second wireless network” as recited in claim 1. Appeal
Brief 11.

The Examiner asserts that handling “on-hold” or “call waiting”
calls would read onto this ‘plurality’ [sic] limitation: positing
that these “on- hold” and “call waiting” parameters constitute
separate, unique, and different features, which would therefore
Appeal 2009-009491
Application 11/003,201

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collectively anticipate a ‘plurality’ [sic] of features. They are
not different; they represent a single feature. They are the same
feature: an “on-hold” call is the same as a “call waiting” call.
This is why the “or” separator was used by the author of the
specification of Hirsbrunner. These two items are equivalent
and, therefore, cannot anticipate the “plurality” of features of
the pending subject matter.
Id.
However, the Examiner finds that “call waiting” is not the same as
being “on-hold” and provides the following rationale for his position:

In response to that argument, Examiner respectfully disagrees
with appellant, since on one hand, call waiting is an activity that
requires no action from a called party, it is a feature that is
previously set up by the system in order to put a third party on
hold temporarily until the called party can answer the call, if
there is a current connection in progress. On the other hand, an
on hold call requires the called party to press a button to put an
incoming call on hold until the user can answer. Therefore,
examiner contends that “on-hold calls” and “call waiting calls”
are different features.

We find Appellants’ argument not to be persuasive because, as the
Examiner explained; “on-hold calls” and “call waiting calls” are not the
same features. Further, we disagree with Appellants’ assertion that the
usage of the conjunction “or” necessitates that the listed features have to be
the same.
Appellants contend Hirsbrunner does not disclose invoking PBX
features from a different network. Appeal Brief 12. To support Appellants’
contentions, Appellants provides an example and concludes that Hirsbrunner
fails to account for functions associated with the transfer process specified in
the example. Id. The Examiner contends the limitation “to invoke a
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Appeal 2009-009491
Application 11/003,201

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Figure 1 discloses a system diagram where selective hairpinning of a call
through a communication network when the call is originated in another
communication network. (Hirsbrunner column 2, lines 4-8; column 4, lines
10-31).
It is clear from Figure 1 that Hirsbrunner invokes PBX (111) features
while operating in a second network. Therefore, we are not persuaded by
Appellants’ arguments, and we will sustain the Examiner’s anticipation
rejection of claim 1. We will sustain the Examiner’s rejection of
independent claims 9, 17 and 24 for the same reasons as stated above
because the Appellants rely upon the same rationale as proffered for claim 1.
Appeal Brief 13. For the above reasons, we are also affirming the rejections
of dependent claims 2-6, 8, 10-16, 18-21, 25-29 and 31, whose merits are
not separately argued. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987).

Obviousness Rejection
Appellants argue the 35 U.S.C. § 103 rejections of record are moot in
light of the deficiencies of Hirsbrunner. Appeal Brief 13. We do not find
Appellants’ argument to be persuasive because we did not find Hirsbrunner
to be deficient in the manner specified by Appellants. Therefore we will
sustain the Examiner’s obviousness rejections of claims 7, 8, 22, 23 and 30
for the same reasons we stated above.

DECISION
The Examiner rejections of claims 1-31 under various 35 U.S.C. § 102
and 35 U.S.C. § 103 rejections have been affirmed.
Appeal 2009-009491
Application 11/003,201

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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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