Ex Parte Lin

Patent Trial and Appeal Board

Mar 15, 2017

13872836 (P.T.A.B. Mar. 15, 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.
13/872,836 04/29/2013 XUHUA LIN V177 7282
72623 7590 03/17/2017
MOSFR TAROADA / VON A OF HOT DTNOS OORP
EXAMINER
1030 BROAD STREET DUONG, FRANK
SUITE 203
SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
docketing@mtiplaw.com
llinardakis @ mtiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUHUA LIN
Appeal 2016-005709
Application 13/872,836
Technology Center 2400
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Invention
Appellant discloses a method and apparatus “for detection and
notification of called party presence via a telecommunication device
associated with a called party.” Abst.
Appeal 2016-005709
Application 13/872,836
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
illustrative.
1. A method for detection and notification of called party
presence via a telecommunication device associated with a called
party comprising:
(a) receiving a request to establish a telecommunication
session at the telecommunication device;
(b) obtaining presence information derived from presence
detection equipment on the telecommunication device responsive
to the received request;
(c) determining, via the telecommunication device, presence
of the called party based on the obtained presence information;
and
(d) sending a notification message including an indication of
the determined presence of the called party.
Rejections
The Examiner rejects claims 1—3, 5—7, 10—14, and 17—19 under 35
U.S.C. § 102(a)(1) as being anticipated by Hobbs (US 2012/0039454 Al;
Feb. 16, 2012). Final Act. 2—6 (May 8, 2015).1
1 The statement of rejection incorrectly denotes claim 4 as rejected for
anticipation over Hobbs. Final Act. 2. However, the body of this rejection
does not address claim 4 and the next rejection, for obviousness over Hobbs
and Jachner, addresses claim 4 within the statement and body. Id. at 7—8.
Thus, the Examiner plainly rejects claim 4 as obvious over Hobbs and
Jachner.
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Application 13/872,836
The Examiner rejects claims 4, 8, 9, 15, 16, and 20 under 35 U.S.C.
§ 103 as being unpatentable over Hobbs and Jachner (US 2007/0081640 Al;
April 12, 2007). Final Act. 7—12.
ISSUE
Has the Examiner shown that Hobbs discloses the “presence detection
equipment” of the independent claims?
ANALYSIS
As reflected above, Appellant argues that the Examiner has not shown
Hobbs discloses the claimed invention’s “presence detection equipment on
the [called party] device,” as required by all independent claims. The
Examiner cites Hobbs’ following description as disclosing such presence
detection equipment:
[A] third-party call control service management platform (SMP)
18 can receive a request 602 for an incoming call to a called
number within the control of the SMP 18. The SMP 18 can
obtain presence information of a party associated with the called
number 604 (the “called party”). For example, the SMP 18 can
obtain presence information from a mail server 24 that maintains
a calendar of the called party, or the SMP 18 can obtain presence
information from a presence server (not shown) of the system 10.
The SMP 18 can present the presence information to the calling
party 606, e.g., via the calling device 11.
Hobbs 141; see also Final Act. 2—3; Ans. 5—6.
The Examiner finds that Hobbs’ SMP 18 obtains the presence
information from a calendar “about” (i.e., concerning) the user of the called
device and, thus, from presence detection equipment on a
telecommunication devices associated with the called party in the manner as
claimed. See Ans. 4. Noting the cited calendar is located on a mail server
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Application 13/872,836
24, not located on the called device, the Examiner finds that the
Specification conveys the claimed “on” language encompasses equipment
merely concerning the called device. Id. The Examiner explains:
[In the Specification’s] paragraphs [0034]—[0035], it is disclosed
“At 210, presence information is obtained using presence
detection equipment on, or otherwise associated with, the
telecommunication device responsive to the received request for
notification of called party presence.” From such disclosure, it
is clear that the presence detection equipment does not have to
be part or inside of the telecommunication device. The matter of
fact, the presence detection equipment is disclosed to be located
on equipment/servers disposed in network 118 (original
specification, paragraph [0026] and thereinafter). Therefore,
the claimed limitation of “obtaining presence information
derived from presence detection equipment on the
telecommunication device responsive to the received request
can” be interpreted as obtaining presence information from
presence detection equipment about/of the telecommunication
device of the called party and from a server, (i.e. it is presence
information on the device (i.e. about the device), not physically
“on” or within the device since the spec explains the presence
detection equipment is disclosed to be located on
equipment/servers disposed in network, and thus the claim does
not specify the equipment is within the device, but reads as
though the information is simply about the device).
Id.
Appellant responds:
While the specification indeed teaches a number of embodiments
of the invention, the Appellants claim the embodiment of
obtaining presence information derived from presence detection
equipment on the telecommunication device responsive to the
received request. Further, the Appellants clarify presence
detection equipment as an accelerometer, a gyroscope, a camera,
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Application 13/872,836
a motion detector, an audio detector, a timer, etc. Such
equipment is located on the telecommunication device.
Reply Br. 4.
In other words, Appellant permissibly and explicitly claim less than
they disclose. Though “on” has several meanings, “equipment on the
telecommunication device” (independent claims), when read in light of the
Specification, is plainly directed to equipment that is part of or at least
contacting the device, rather than merely concerning the device. Spec. 134
(describing “presence detection equipment on . . . the telecommunication
device”). In using this “on” language, the Specification provides only
examples of equipment that is part of the device; e.g., an included
accelerometer that detects if a mobile phone has moved. Id. In using the
language “presence detection equipment. . . otherwise associated with
... the [called party] device” (emphasis added), the Specification provides
only examples of equipment remote from the device—e.g., a remote sensor
detecting the device’s proximity and user’s motion. Id. The Examiner errs
in divorcing the Specification’s use of “equipment on ... or otherwise
associated with” from these respective examples of “on” (part of or at least
contacting) and “otherwise associated with” (concerning), thus incorrectly
finding the “on” and “associated with” terms are paired to convey a singular
meaning of concerning, about, etc.
For the foregoing reasons, the Examiner’s findings do not show that
Hobbs discloses “presence detection equipment on the [called party]
device,” as recited by the independent claims. We make no determination of
whether Hobbs discloses such equipment, or whether such equipment would
have been obvious to an artisan of ordinary skill. For example, we have not
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Application 13/872,836
determined whether a calendar of Hobb’s mobile device provides the
calendar information to Hobb’s cited calendar maintained by the mail server
24, such that Hobb’s cited presence information is derived from the mobile
device’s calendar and Hobb accordingly discloses “presence information
derived from presence detection equipment on the [called party] device”
(independent claims). Rather, because the Examiner’s findings rely upon an
unreasonably broad interpretation of the claimed invention, we do not
sustain the Examiner’s rejections.
DECISION
We reverse the Examiner’s decision rejecting claims 1—20.
REVERSED
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