Ex Parte Neuwald et al

Board of Patent Appeals and Interferences

Jun 11, 2009

11074279 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER ROBERT NEUWALD, NANCY ANN BOOK,
THOMAS JOSEPH McBLAIN, WILLIAM M. MOY, and
CAROL SHIFRIN GRUCHALA
____________

Appeal 2009-001580
Application 11/074,279
Technology Center 2600
____________

Decided:1 June 11, 2009
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and CARLA M. KRIVAK,
Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/074,279

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-42. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF CASE
Appellants’ claimed invention is directed to system having a
processor executing instructions stored in a memory for storing a
subscriber’s message in a database, e.g., a voice message stating that the
subscriber is “safe” in event of an emergency. The message is then available
to a caller of the subscriber’s out-of-service telephone number (Spec. ¶¶
[0008]-[0009], [0017]; cl. 23).
Independent claim 23, reproduced below, is representative of the
subject matter on appeal:
23. A system, comprising:
at least one processor; and
at least one memory storing instructions operable with the at
least one processor, the instructions being executed for:
posting a message to a database in response to receiving
the message from a subscriber of the system; and
making the message available to an interested party in
response to a telephone number of the subscriber being
out-of-service.

REFERENCES
Miller US 3,842,212 Oct. 15, 1974
Brunson US 4,996,704 Feb. 26, 1991
Shur US 5,461,665 Oct. 24, 1995
Picard US 6,233,318 B1 May 15, 2001
(filed Nov. 5, 1996)
Cardina US 6,411,802 B1 Jun. 25, 2002
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(filed Mar. 15, 1999)
Montgomery US 6,798,868 B1 Sep. 28, 2004
(filed Nov. 2, 1998)
Clark US 6,871,067 B2 Mar. 22, 2005
(filed Oct. 15, 2001)
Easterbrook US 6,886,030 B1 Apr. 26, 2005
(filed Dec. 17, 1998)
The Examiner rejected claims 23-26, 28, and 30 under 35 U.S.C.
§ 103(a) based upon the teachings of Shur and Miller.
The Examiner rejected claim 31 under 35 U.S.C. § 103(a) based upon
the teachings of Shur, Miller, and Cardina.
The Examiner rejected claims 27, 29, 32, and 34-37 under 35 U.S.C.
§ 103(a) based upon the teachings of Shur, Miller, and Picard.
The Examiner rejected claim 33 under 35 U.S.C. § 103(a) based upon
the teachings of Shur, Miller, and Brunson.
The Examiner rejected claims 38 and 39 under 35 U.S.C. § 103(a)
based upon the teachings of Shur, Miller, and Montgomery.
The Examiner rejected claims 40 and 41 under 35 U.S.C. § 103(a)
based upon the teachings of Shur, Miller, and Easterbrook.
The Examiner rejected claim 42 under 35 U.S.C. § 103(a) based upon
the teachings of Shur, Miller, and Clark.
Appellants contend the Examiner improperly combined Shur and
Miller. Appellants allege that the Examiner has provided no motivation for
combining the subscriber-recorded message of Shur with the out-of-service
recorded announcement system of Miller other than to paraphrase claim 23
(App. Br. 5).
Appellants further contend the Examiner’s proposed modification of
Shur by Miller impermissibly renders Shur unsatisfactory for its intended
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purpose. That is, if a subscriber’s telephone were out-of-service, then the
subscriber would no longer have access to his/her messages with that
telephone (App. Br. 5-6).

ISSUE
Did Appellants establish that the Examiner erred by improperly
combining the voice messaging system of Shur with the out-of-service
message announcement of Miller?

FINDINGS OF FACT
1. Appellants’ claimed invention is directed to a system having a
processor and a memory, the memory storing instructions. The instructions
direct the processor to post a subscriber’s message in a database 102 in
response to receiving a message from a subscriber. The subscriber’s
message is made available to a caller of subscriber’s out-of-service
telephone number (Fig. 2; Spec. ¶¶ [0008]-[0009], [0017]; cl. 23).
2. Shur teaches a system having a processor 101 and a memory
102, the memory storing software. The software directs the processor to
store a subscriber’s message in a database 107 in response to receiving a
message from the subscriber. The subscriber’s message is made available to
a caller of the subscriber’s telephone number (Fig. 1; col. 1, l. 61-col. 2, l. 9;
col. 2, l. 61-col. 3, l. 4).
3. Shur allows remote telephone access to its voice messaging
system and does not condition that access on the in-service or out-of-service
status of the subscriber’s telephone (Fig. 3; col. 3, l. 67-col. 4, l. 12).
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4. Miller teaches a system for providing a non-subscriber recorded
message in response to a call to a subscriber’s telephone number that is out-
of-service (col. 1, ll. 31-47, 60-67).

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of invention a known problem for which there was
an obvious solution encompassed by the patent’s claims.” Id. at 419-20.
An improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” Id. at 421.
If the Examiner’s proposed modification renders the prior art
unsatisfactory for its intended purpose, the Examiner has failed to make a
prima facie case of obviousness. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984).

ANALYSIS
The Examiner rejected claims 23-26, 28, and 30 under 35 U.S.C.
§ 103(a) based upon the teachings of Shur and Miller. Appellants state that
claims 23-42 stand or fall together (App. Br. 5; Reply Br. 5). Accordingly,
this rejection is addressed with respect to representative claim 23, with
dependent claims 24-42 standing or falling therewith.
The Examiner finds that Shur teaches posting a message to a database
in response to receiving a message from a subscriber of the system and
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making the message available to an interested party (Ans. 10-11). However,
the Examiner states that Shur does not explicitly teach making the
subscriber’s message available to callers of the subscriber’s out-of-service
telephone (Ans. 11). The Examiner cites Miller as teaching this feature (id.).
Thus, the Examiner finds that one of ordinary skill in the art at the time of
the invention would have been motivated to modify Shur’s system “to
provide a personalized message” when the subscriber’s telephone is out-of-
service as taught by Miller (id.).
Appellants assert that the Examiner has merely paraphrased the
language of claim 23 and has not provided any support for the combination
of Shur and Miller (App. Br. 5; Reply Br. 5-6). Appellants further contend
that “the Examiner cannot use impermissible hindsight reasoning for the
basis of his obviousness rejection” (Reply Br. 5).
Shur teaches a system having a processor and a memory, the memory
storing software. The software directs the processor to store a subscriber’s
message in a database in response to receiving a message from the
subscriber. The message is made available to any caller of the subscriber’s
telephone number (FF 2). Miller teaches providing a non-subscriber
recorded message in response to a call to an out-of-service telephone (FF 4).
As the Examiner correctly finds, “[w]ith this teaching of Miller, one
of ordinary skill in the art at the time invention was made, would be
motivated to modify Shur’s system in order to provide a personalized
message regarding events such as telephone number of subscriber being out
of service” (Ans. 11). Thus, one of ordinary skill in the art at the time of
Appellants’ invention would have been motivated to modify Shur with
Miller to provide a subscriber-recorded message in response to a call to a
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subscriber’s out-of-service telephone. Appellants’ argument that
impermissible hindsight is being employed is not persuasive in view of the
foregoing.
Appellants also assert that “[i]f the originating subscriber’s telephone
number were out-of-service, however, the originating subscriber would no
longer have access to his or her posted messages” (App. Br. 6). Therefore,
Appellants contend, the Examiner’s proposed modification would render
Shur unsatisfactory for its intended purpose (id.). The Examiner finds that a
subscriber of Shur’s system would be able to use an in-service telephone
separate from Shur’s system to post or modify a message (id.). Further,
Shur provides remote telephone access to its voice messaging system
without conditioning that access on the in-service or out-of-service status of
the subscriber’s telephone (FF 3). Thus, the proposed modification to Shur
would not render Shur inoperable. The proposed modification is merely the
product, not of innovation, but of ordinary skill and common sense. KSR,
550 U.S. at 421. Because Appellants have not shown that the Examiner
erred, the rejection of claims 23-26, 28, and 30 over the combination of Shur
and Miller is sustained.
With respect to claims 27, 29, and 31-42, the Examiner rejected these
claims under § 103 over Shur, Miller, and various combinations of Brunson,
Picard, Cardina, Montgomery, Clark, and Easterbrook. Appellants have
made no separate arguments for the patentability of any of these claims
(App. Br. 5; Reply Br. 5). Appellants have instead relied on the arguments
made with respect to independent claim 23 as set forth above with respect to
Shur and Miller. As discussed supra, those arguments were found to be
unpersuasive.
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Accordingly, for the reasons set forth above with respect to claim 23,
the Examiner’s rejections of claims 27, 29, and 31-42 are sustained.

CONCLUSION
Appellants did not establish that the Examiner erred by improperly
combining the voice messaging system of Shur with the out-of-service
message announcement of Miller.

DECISION
The Examiner’s decision rejecting claims 23-42 is 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

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