Ex Parte Lee

Patent Trial and Appeal Board

Mar 26, 2014

11341820 (P.T.A.B. Mar. 26, 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.
11/341,820 01/27/2006 Ju-Beam Lee 678-2283 3305
66547 7590 03/27/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
WANG-HURST, KATHY W
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
03/27/2014 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 JU-BEAM LEE
__________

Appeal 2011-009720
Application 11/341,820
Technology Center 2600
___________

Before KEVIN F. TURNER, TRENTON A. WARD, and
DAVID C. McKONE, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3-5, 7-9, 11, and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2011-009720
Application 11/341,820

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STATEMENT OF THE CASE
The Rejections on Appeal
Claims 1, 3-5, 7-9, 11, and 12 were finally rejected under 35 U.S.C.
§ 103(a) as unpatentable over Grivas (US 2005/0221851 A1; published Oct.
6, 2005; filed Apr. 5, 2004) in view of Hart (US 2005/0122937 A1;
published June 9, 2005; filed Apr. 5, 2004) in view of Chow (US 6,535,730
B1; issued Mar. 18, 2003). Ans. 3-9.

The Claimed Invention
The claimed invention is directed to providing a one-to-one call
between two users within an existing conference call. Spec. 6-8.
Appellant’s Figure 4 is reproduced below:

As shown above in Figure 4, Appellant’s Specification describes mobile
stations 1, 2, and 3 in conference call 400. Id. at 6. Mobile station 1
transmits one-to-one call request 402 to mobile station 2, and mobile station
2 transmits response 404. Id. at 6-7. Based on an acceptance response 404,
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mobile station 1 transmits flash with information message 406 to a base
station which initiates one-to-one call 408 between mobile station 1 and
mobile station 2. Id. at 7. Claim 1 is illustrative and is reproduced below,
with certain limitations emphasized:
1. A method of providing a conference call function in a
mobile terminal, comprising:
requesting a one-to-one call to a second mobile terminal
by a data burst message by a first mobile terminal during a
conference call among a plurality of mobile terminals including
the first and second mobile terminals;
transmitting a response to the first mobile terminal
indicating whether the one-to-one call request is accepted or
rejected using a data burst message by the second mobile
terminal;
transmitting a one-to-one call request message to a base
station by the first mobile terminal, if the second mobile
terminal accepts the one-to-one call request using a data burst
message, wherein the one-to-one call request message is a flash
with information message comprising a phone number of the
second mobile terminal; and
connecting the first and second mobile terminals to a
one-to-one call by the base station in response to the one-to-one
call request message from the first mobile terminal.

DISCUSSION
A. The Rejection of Claims 1, 3, and 4 as obvious over Grivas, Hart, and
Chow
In the rejection of independent claim 1, the Examiner finds that Grivas
discloses the limitations of requesting a one-to-one call by a first mobile
terminal, transmitting a response to the request by a second mobile terminal,
transmitting a one-to-one call request message to a base station by the first
mobile terminal based on an acceptance, and connecting the first and second
mobile terminals in a one-to-one call. Ans. 3-5. The Examiner finds that
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Grivas does not specifically disclose a data burst message or a flash
message. Id. at 4-5. The Examiner cites Hart as teaching a data burst
message format and Chow as teaching a flash message format in concluding
claim 1 is obvious. Id. (citing Hart, ¶¶ [0022-0028]; Chow, col. 49, ll. 15-
45). Appellant disagrees with the Examiner’s findings that the combination
of Grivas, Hart, and Chow renders independent claim 1 obvious. App. Br.
5-7.
Appellant argues that Hart and Chow fail to teach the specified
messages and message formats as recited in claim 1. App Br. 6.
Specifically, Appellant argues that Hart fails to disclose sending a data burst
message between call-connected mobile devices. Id. Appellant also argues
that Chow fails to teach sending a flash with information message to a base
station during a conference call. Id. at 6-7.
Appellant’s arguments are misplaced because one cannot establish
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds that Grivas discloses sending one-to-one call requests
and responses between two conference call connected users, and sending a
one-to-one call request message to a base station. Ans. 4-5. The Examiner
further finds that Grivas does not specifically disclose a data burst message
format or flash message format, but Hart and Chow disclose that data burst
messages and flash messages are common message formats. Id. at 13. The
Examiner therefore finds that the combination of the Grivas, Hart, and Chow
teaches sending one-to-one call requests and responses in a data burst
message format and sending a one-to-one call request message in a flash
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with information message format. Id. We agree with the Examiner that the
combination of Grivas, Hart, and Chow teaches sending the particular
messages of Grivas as data burst messages or a flash with information
messages. See Id.
Appellant further argues, with respect to claim 1, that Grivas fails to
disclose separate steps of requesting a one-to-one call to a second mobile
terminal by a first mobile terminal and transmitting a one-to-one call request
message to a base station by the first mobile terminal. App. Br. 5.
Specifically, Appellant argues that when a second mobile terminal of Grivas
accepts a one-to-one call request, Grivas fails to disclose that a separate one-
to-one call request message is transmitted to a base station by a first mobile
terminal. Id.
We agree with Appellant that the cited embodiment of Grivas does
not disclose “transmitting a one-to-one call request message to a base station
by the first mobile terminal,” as recited in claim 1. Contrary to the
Examiner’s interpretation of Grivas, the cited disclosure in Grivas states that
“the server 24 can create a new voice communication channel for the
benefits of users 2 and 3, much in the same way that it would traditionally
allow two users to call one another on the network.” Grivas ¶ [0047].
Figure 5 of Grivas further describes this embodiment, and is reproduced
below:
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Figure 5 is a flow diagram of a group conversation after a side bar has been
requested. As shown above in Figure 5, Grivas discloses that when two
users 2 and 3 have previously accepted a side bar conversation in private call
mode in step 171, a private side bar call may be initiated when “[s]erver 24
creates call to users 2 & 3,” in step 173. Grivas, fig. 5; ¶ [0047]. Based on
the plain language of Grivas, we agree with Appellant that Grivas does not
disclose “transmitting a one-to-one call request message to a base station by
the first mobile terminal,” as recited in claim 1. See Rep. Br. 3. Grivas
discloses that, following a side bar conversation agreement, the server 24,
rather than the first mobile terminal, creates the one-to-one private call.
Therefore, we do not sustain the Examiner’s rejection of claim 1, and
dependent claims 3 and 4.
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B. The Rejection of Claims 5, 7-9, 11, and 12 as obvious over Grivas,
Hart, and Chow
Claim 5 recites, in relevant part, “transmitting a one-to-one call
request message to a base station, if the other mobile terminal accepts the
one-to-one call request using a data burst message, wherein the one-to-one
call request message is a flash with information message comprising a phone
number of the other mobile terminal.” Claim 5. Appellant argues that
Grivas, Hart, and Chow do not teach the limitations of claim 5 for the
reasons argued above with respect to claim 1. App. Br. 7.
Similar to the rejection of claim 1, the Examiner cites Grivas’s
disclosure of setting up a private side bar call after receiving an acceptance
message as disclosing “transmitting a one-to-one call request message to a
base station,” as recited in claim 5. Ans. 6 (citing Grivas ¶¶ [0040-0047]).
The Examiner further cites Grivas as disclosing that the server
communicates with mobile terminals by transmitting and receiving
information through a base station. Id. (citing Grivas, figure 1; ¶ [0029]).
Figure 1 of Grivas is reproduced below:
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Figure 1 is a block diagram of a wireless vehicular communications system.
As shown above in Figure 1, Grivas discloses wireless communication
devices 22a, 22b in communication with server 24 via a base station
connected to wireless network 28. Grivas ¶ [0029]. The Examiner finds
that Grivas does not specifically disclose a data burst message or flash with
information message, but, similar to the rejection of claim 1, Hart and Chow
teach that data burst messages and flash with information messages are
known message formats. Ans. 13.
We agree with the Examiner. Unlike claim 1, the above cited
“transmitting” limitation of claim 5 does not require that the “one-to-one call
request message to a base station” be sent by a mobile terminal. Within this
context, Grivas discloses setting up a private side bar call when “[s]erver 24
creates call to users 2 & 3.” Grivas, fig. 5, step 173. As further cited by the
Examiner, Grivas discloses that communication between the server and a
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mobile terminal is accomplished using a base station as an intermediary. See
Ans. 6 (citing Grivas, fig. 1; ¶ [0029]). Therefore, when server 24 creates a
call to users 22a, 22b, server 24 transmits a message comprising a phone
number of users 22a, 22b to the base station via wireless network 28. See
Ans. 6. Furthermore, as shown above with respect to claim 1, Hart and
Chow teach that data burst messages and flash with information messages
are known message formats. See Ans. 13. Accordingly, we agree with the
Examiner that the combination of Grivas, Hart, and Chow teaches
transmitting a flash with information request message comprising the phone
number of a mobile terminal to a base station in response to an acceptance
message, as recited in claim 5. See Id. at 6-7. Therefore, we sustain the
Examiner’s rejection of claim 5, and dependent claims 7 and 8, not
separately argued.
Independent claim 9 includes a similar limitation as the above feature
of claim 5 and recites “connecting to the other mobile terminal on a one-to-
one call, by the base station, when the base station receives a flash with
information message comprising a phone number of the mobile terminal.”
Appellant argues that Grivas, Hart, and Chow do not teach the limitations of
claim 9 for similar reasons as argued above with respect to claim 1. App.
Br. 7. The Examiner rejects the above limitation of claim 9 similarly to the
above discussed “transmitting” limitation of claim 5. Ans. 7-8. We agree
with the Examiner that the combination of Grivas, Hart, and Chow teaches
the limitations of claim 9 for similar reasons as indicated above with respect
to claim 5, because claim 9 also does not require that the “flash with
information message” be sent by a mobile terminal. See Id. Therefore, we
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sustain the Examiner’s rejection of claim 9, and dependent claims 11 and 12,
not separately argued.
ORDER
The Examiner’s decision rejecting claims 5, 7-9, 11, and 12 is
AFFIRMED.
The Examiner’s decision rejecting claims 1, 3, and 4 is REVERSED.

AFFIRMED-IN-PART

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