Ex Parte Mundt

Patent Trial and Appeal Board

Aug 22, 2016

12958043 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121958,043 12/01/2010 Kevin Mundt
33438 7590 08/24/2016
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DC-18464 2280
EXAMINER
BELETE, BERHANU D
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
tmunoz@tcchlaw.com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN MUNDT
Appeal2015-002973
Application 12/958,043
Technology Center 2400
Before JOHN P. PINKERTON, JAMES W. DEJMEK,
and MONICA S. ULLAGADDI, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
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Appeuant' rues mis appeal unaer j) u.~.L. s U4~aJ rrom me
Examiner's Final Rejection of claims 1-20, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 Appellant identifies Dell Products L.P. as the real party in interest. App.
Br. 1.
Appeal2015-002973
Application 12/958,043
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention is generally directed to
interfacing a Voice over Internet Protocol (VoIP) phone with an information
handling system. Spec. 1:5-8.2
Claim 1 is illustrative and reproduced below (with the disputed
limitation emphasized):
1. An information handling system comprising:
a housing having a peripheral interface port;
processing components disposed in the housing and
operable to process information;
a display interfaced with the processing components and
operable to present information as images;
a communications application running on the processing
components and operable to support plural
communications protocols;
a telephone separate from the housing, the telephone
having a peripheral interface port, a VoIP
communications medium, a display and a
communications engine operable to support VoIP
communications through the VoIP medium, the
peripheral interface port, VoIP communications medium,
display and communications engine integrated in one
common telephone housing;
2 Our Decision refers to the Final Office Action mailed Mar. 11, 2014
("Final Act."); Appellant's Appeal Brief filed July 22, 2014 ("App. Br.");
the Examiner's Answer mailed Nov. 21, 2014 ("Ans."); Appellant's Reply
Brief filed Dec. 12, 2014 ("Reply Br."); and, the original Specification filed
Dec. 1, 2010 ("Spec.").
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Appeal2015-002973
Application 12/958,043
a peripheral cable connected at a first end to the housing
peripheral interface port and at a second end to the
telephone peripheral interface port; and
a display manager executing on the telephone and
operable to selectively present information at the
telephone display from only one of the communications
application or the communications engine, the display
manager presenting information from the
communications application as a peripheral of the
information handling system when the peripheral cable
interfaces the housing peripheral interface port and the
telephone peripheral interface port or from the
communications engine if no interface exists with the
communications application.
Rejections on Appeal
Claims 1, 6-9, 14, 16, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lambert et al. (US 2006/0265656 Al; published
Nov. 23, 2006) ("Lambert") and Phillips et al. (US 2005/0099999 Al;
published May 12, 2005) ("Phillips").
Claims 2--4, 15, and 17-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lambert, Phillips, and Turner et al. (US 7, 106,298
B 1; issued Sep. 12, 2002) ("Turner").
Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lambert, Phillips, and Couse et al. (US 2010/0235787 Al;
published Sep. 16, 2010) ("Couse").
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lambert, Phillips, Couse, and Turner.
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Appeal2015-002973
Application 12/958,043
Issue
Appellant's arguments in the Briefs present us with the following
dispositive issue: 3
Does the combination of Lambert and Phillips teach or suggest the
limitation
the display manager presenting information from the
communications application as a peripheral of the information
handling system when the peripheral cable interfaces the
housing peripheral interface port and the telephone peripheral
interface port or from the communications engine if no
interface exists with the communications application,
as recited in claim 1, and as similarly recited in claims 9 and 16?
ANALYSIS
The Examiner finds Lambert teaches an information handling system,
including a communications application, and relies on Philips as teaching a
separate telephone having a display manager executing on the telephone.
See Final Act. 3-5. In the Answer, the Examiner finds Phillips teaches the
disputed limitation of claim 1 for the following reasons:
Phillips discloses an external display such as a laptop computer
202, (i.e., as extended telephone display), presenting
information with similar functionality from the integrated
appliance 200, (i.e., as information handling system with
housing and display), when the laptop computer 202 via
peripheral interface port cabling 204 that is connected to a pass
through communication port 206 of the integrated appliance
200; wherein the corresponding functionality of the integrated
3 Appellant's arguments raise additional issues, but we do not reach them
because the identified issue is dispositive of the appeal.
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Appeal2015-002973
Application 12/958,043
appliance can still presenting information at the laptop
computer 202, presenting information such as by accessing
the Internet and/or an e-mail send, download information using
the laptop, [see Phillips,i-f [0033, 0051-0052], and Fig. 8].
Ans. 8-9.
For essentially the same reasons, the Examiner finds the similar
limitations of claims 9 and 16 are taught or suggested by Phillips. Ans. 9-
13.
In response, Appellant argues as follows:
The Examiner suggests that the laptop 202 is an extended
telephone display through cabling 204 and pass through
communication port 206. See Phillips [0033, 0051-0052]. The
Examiner's position has two fundamental flaws: Phillips does
not disclose what the Examiner interprets; and Applicant's
claims do not recite what the Examiner rejects. First, Phillips
discloses a pass though communication port so that an end user
can access a network directly rather than through the integrated
telephone appliance. The Examiner provides no evidence or
explanation for ho\'l/ a pass through communication port \'l/ould
make a laptop an "extended telephone display" or how one of
skill in the art would reach that conclusion. Nothing in Phillips
indicates that the pass through communication port would allow
control of the laptop or phone display by the other device.
Second, Applicant's Claims 1, 9 and 16 recite that the telephone
display selectively presents a user interface generated by an
information handling system and sent through a cable or
generated by a processor of the telephone. Even if laptop 202 is
an extended display of the telephone 200, this does not disclose
the use of the telephone as a display of the laptop.
Reply Br. 1-2.
For the reasons stated by Appellant, we agree with Appellant's
argument the Examiner has erred. In particular, we agree with Appellant's
argument the Examiner has not provided persuasive evidence that the laptop
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Appeal2015-002973
Application 12/958,043
202 of Phillips is "an extended telephone display" and, even if it were, there
is no persuasive evidence of the use of the telephone as a display of the
laptop. Thus, the Examiner's findings that the combination of references
teaches or suggests the "the display manager [executing on the telephone]
presenting information from the communications application as a peripheral
of the information handling system when the peripheral cable interfaces the
housing peripheral interface port and the telephone peripheral interface port
or from the communications engine if no interface exists with the
communications application" are in error because these findings are not
supported by a preponderance of the evidence. See In re Caveney, 761 F.2d
671, 674 (Fed. Cir. 1985) (Examiner's burden of proving non-patentability is
by a preponderance of the evidence); see also In re Warner, 379 F.2d 1011,
1017 (CCP A 1967) ("The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.")
Accordingly, we agree with Appellant the Examiner erred (1) in
finding that Phillips teaches or suggests the disputed limitation of claim 1, as
well as the similar limitations of claims 9 and 16, and (2) in concluding that
claims 1, 9, and 16 are obvious under 35 U.S.C. § 103(a) based on the
combination of Lambert and Phillips. Thus, we do not sustain the
Examiner's rejection of claims 1, 9, and 16, as well as dependent claims 2-8,
10-15, and 17-20, which variously depend therefrom.
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DECISION
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103(a).
REVERSED
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