Ex Parte Orwick et al

Board of Patent Appeals and Interferences

Oct 20, 2009

10641902 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID ANTHONY ORWICK, KAREN JEANNE PELLETIER,
LAURA MARIE GRIFFITH, TODD AUGUST BARTELS, THOMAS
JOSEPH MCBLAIN, DIANNA INARA TILIKS, GORDON LYNN
BLUMENSCHEIN, and JAMES DANIEL KOVARIK
_____________

Appeal 2009-002579
Application 10/641,902
Technology Center 2600
____________

Decided: October 20, 2009
____________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN,
and ROBERT E. NAPPI, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 4, 6, 9, 11, 16, 19, and 20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We will sustain the rejections.
Appellants’ invention is concerned with a telecommunications system
and method for notifying at least one designated telephone number when a
subscriber telephone has made an emergency telephone call (Abstract; Spec.
1). When the system recognizes that (i) an emergency telephone call has
been made, and (ii) if a person answers the at least one designated telephone
number, a call is automatically placed to the subscriber telephone (claims 1,
9).
Claim 1, reproduced below with emphasis added, is representative of
the subject matter on appeal:
1. In a telecommunications system having at least one subscriber
telephone in communication with a switch, at least one network element in
communication with the switch and an emergency call routing station in
communication with the network element and the switch, a method of
notifying at least one designated telephone number that an emergency
telephone call has been made from the subscriber telephone, the method
comprising the steps of:

recognizing an emergency telephone call at the switch;

informing the at least one designated telephone number of the
emergency telephone call that was placed to an emergency telephone
number from the subscriber telephone; and

1 Claims 5, 7, 8, 10, 12 to 15, 17, 18, and 21 have been canceled.

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automatically placing a call to the subscriber telephone if a person
answers the at least one designated telephone number. (emphasis added)

The Examiner relies upon the following as evidence of
unpatentability:
Morrisey US 5,418,844 May 23, 1995
Nguyen US 5,995,848 Nov. 30, 1999
Reich US 6,151,385 Nov. 21, 2000
Markowitz US 6,295,346 B1 Sep. 25, 2001

The following rejections are before us for review:
Claims 1, 2, 4, 6, 9, 11, and 19 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Reich and Nguyen.
Claims 3 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Reich and Nguyen, further in view of Morrisey.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Reich and Nguyen, further in view of Markowitz.
The Examiner relies upon Reich as describing all of the features of a
telecommunications system and method for notifying a designated telephone
number when an emergency call is placed by a subscriber (Ans. 3-4). The
Examiner relies upon Nguyen as describing an automatic call being placed
to a subscriber when a person answers at the designated telephone number
(Ans. 4).
Appellants argue (App. Br. 3-5; Reply Br. 2-6), inter alia, that (i)
neither Reich nor Nguyen teaches or suggests automatically connecting a
designated number (third party) to a subscriber (first party) if a person
answers at the designated number (App. Br. 4-5; Reply Br. 3-4), (ii) even if

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Reich and Nguyen were combined the resulting system would only deal with
connections between first and second parties or second and third parties, but
not a connection between first and third parties as claimed (App. Br. 5;
Reply Br. 6), (iii) Reich and Nguyen address two different and unrelated
problems, and thus the Examiner employed hindsight in making the
combination (App. Br. 5; Reply Br. 6).

ISSUE
Based on Appellants’ arguments, the issue is: Have Appellants
demonstrated that the Examiner erred in concluding that it would have been
obvious to one of ordinary skill in the art to combine the emergency call
notification telecommunications system and method taught by Reich with
the automatic call placing feature taught by Nguyen, thereby rendering
obvious independent claims 1 and 9 on appeal?

FINDINGS OF FACT
1. As indicated supra, Appellants describe and claim a
telecommunications system 10 and method for notifying at least one
designated telephone number 36 when a subscriber telephone 12 has
made an emergency telephone call (Abstract; Fig. 1). When the
system 10 recognizes that (i) an emergency telephone call has been
made to a public safety access point 18, and (ii) if a person answers
the at least one designated telephone number 36, a call is
automatically placed to the subscriber telephone 12. When an
emergency call is made, the system 10 can access a database having a

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list 21 of designated numbers 25 associated with the subscriber
number 23 (see Fig. 2).
2. Appellants recognize the need for an improved call notification
system that is automatic and is able to use existing infrastructure
(Spec. 1:11-29, 9:1-10).
3. Reich describes a telecommunications system (Fig. 1) and method for
notifying at least one designated notified addressable device when a
subscriber telephone 1 has made an emergency telephone call
(Abstract; col. 7, ll. 19-42). When the system recognizes that an
emergency telephone call has been made to a public safety answering
point 5, the system can access a database 12 having a list of
designated notification numbers associated with the subscriber
number 1, and then call those numbers to notify the designated
numbers that the subscriber has made an emergency call (see Figs. 1,
6; col. 6, ll. 32-36).
4. Reich describes using an “automatic notification subroutine” (Fig. 5)
to automatically call the designated numbers associated with the
subscriber 1 (col. 7, ll. 27-37). Reich discloses that “[i]t is desirable
to provide a 9-1-1 call notification feature on existing phone lines that
automatically notifies third parties that a 9-1-1 call, originating at the
subscriber[’]s telephone, was placed to a Public Safety Answering
Point (PSAP), without the need for human intervention” (col. 2, ll. 52-
56) (emphasis added). Reich discloses that it is desirable to provide
an automated system that can reduce the need for human intervention
(see generally col. 2, ll. 26-56).

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5. Nguyen discloses a telecommunications system 31 (Fig. 2) and
method (Figs. 7A-C) for automatically calling a subscriber 33 when a
designated mobile station 46 answers (col. 10, l. 53 to col. 11, l. 8). In
step 253 (Fig. 7C) it is determined if the mobile station 46 answers,
and, if so, in step 263 the subscriber 33 and the mobile station 46 are
joined for call delivery (col. 10, ll. 56-63; col. 11, ll. 6-9).
6. Morrisey describes a network element 40 in communication with
another network element 11 over a wide area network including SS7
links (Fig. 1; col. 9, ll. 1-9, 55-62). Morrisey discloses that a “data
signaling network” using CCIS links is preferred (col. 9, ll. 56-58),
but a token ring network could also be used, and “other signaling
networks could be used” (col. 9, l. 58).

PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
It is necessary to consider “common sense-in … deciding in which
fields a person of ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.” In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992).

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In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. Oetiker, 977 F.2d at 1445. Appellants have the burden
on appeal to the Board to demonstrate error in the Examiner’s position. See
Kahn, 441 F.3d at 985-86.

ANALYSIS
Claims 1, 2, 4, 6, 9, 11, 19
We will sustain the Examiner’s rejection with respect to independent
claims 1 and 9 for the reasons that follow. We agree with the Examiner’s
findings of fact and conclusions of obviousness with respect to claims 1 and
9 (Ans. 3-6, 14), and adopt them as our own, along with some amplification
of the Examiner’s explanation of the teachings of Reich (FF 3, 4) and
Nguyen (see FF 5). See Fine, 837 F.2d at 1073; Kahn, 441 F.3d at 988.
Independent claims 1 and 9, as well as claims 2, 4, 6, 11 and 19 which
respectively depend upon claims 1 and 9, all recite a telecommunications
method including automatically placing a call to a subscriber if a person
answers the designated number (this “automatic call placing” limitation
appears in the last paragraph of each of independent claims 1 and 9).

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As indicated supra (FF 3), Reich describes the salient features of
claims 1 and 9 including automatically calling designated numbers from a
database list when a subscriber makes an emergency call. Nguyen describes
automatically placing a call and connecting a designated number to a
subscriber (FF 5). Both Reich and Nguyen are from the same field of
endeavor as Appellants’ invention, telecommunications systems with
automatic calling features (compare FF 1 with FF 3, 4 and FF 5). We agree
with the Examiner that it would have been obvious to modify Reich with the
automatic call connection teaching of Nguyen in order to facilitate
connecting an answered telephone call at the designated number to the
calling party (i.e., subscriber) (Ans. 5). Reich recognizes that it is desirable
to improve emergency call notification systems to provide automatic calling
and reduce human intervention while using existing phone lines (FF 4), as
do Appellants (FF 2). Only “common sense” would have been necessary for
a person of ordinary skill to look to Nguyen for a solution to the problem of
providing an improved telecommunications system, especially one capable
of automatically placing calls. See Oetiker, 977 F.2d at 1447.
Appellants’ contentions that the Examiner employed impermissible
hindsight in combining Reich and Nguyen (App. Br. 5; Reply Br. 6) are
unpersuasive since both Reich and Nguyen are in the analogous art of
telecommunications systems with automatic calling features. Cf. Oetiker,
977 F.2d at 1447 (stating that the hindsight combination of non-analogous
sources to reconstruct applicants’ invention “is insufficient to present a
prima facie case of obviousness”); also cf. FF 1, 2 discussing Appellants’
invention and FF 3, 4 relating to the teachings of Reich with FF 5 relating to

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the teachings of Nguyen. The Examiner has provided articulated reasoning
with a rational underpinning to support the combination for the legal
conclusion of obviousness (Ans. 3-6, 14). See Kahn, 441 F.3d at 988.
Appellants have failed to rebut the Examiner’s showing that Reich and
Nguyen teach or suggest all of the limitations of claims 1 and 9.
In view of our discussion as to the teachings and suggestions of Reich
and Nguyen supra, Appellants have not demonstrated that the Examiner
erred in relying on the combination of Reich and Nguyen as teaching or
suggesting a method of notifying a designated number that a subscriber has
made an emergency call, including automatically calling the subscriber if a
person answers the designated number, as set forth in claims 1 and 9.
Appellants’ arguments (App. Br. 4-5; Reply Br. 3) that neither Reich
nor Nguyen, alone or in combination, teaches or suggests automatically
placing a call to a subscriber from a designated or third party are not
commensurate in scope with what is claimed. Claims 1 and 9 merely require
that a call automatically be placed to a subscriber without specifying a call
origin point, and these claims do not require that the “call” be from the
designated or third party to the subscriber as Appellants argue (see claims 1
and 9).
Appellants’ contention (App. Br. 4; Reply Br. 3) that Reich fails to
disclose, teach, or suggest automatically placing a call to the subscriber if a
person answers the designated number is unpersuasive. The test for
obviousness is what the combined teachings of the references would have
suggested to the artisan. Accordingly, one can not show nonobviousness by
attacking references individually where the rejection is based on a

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combination of references. Keller, 642 F.2d at 426. In the instant case,
Appellants’ argument are not persuasive since the Examiner relied upon
Nguyen as teaching the limitation of automatically placing a call to a
subscriber when a person answers a designated number, and Reich as
teaching the remaining limitations of a telecommunications system and
method (see Ans. 3-5; FF 3, 5). In view of the foregoing, Appellants have
not demonstrated that the Examiner used impermissible hindsight in
combining Reich and Nguyen, or that the obviousness rejection is otherwise
in error.
Appellants’ contentions (App. Br. 5; Reply Br. 4) that even if the
combination were made the resulting system or method would not
automatically place a call to a subscriber if a person answers the designated
number are unconvincing in light of our findings as to Nguyen (FF 5).
Nguyen teaches automatically calling a subscriber 33 when a designated
mobile station 46 answers, thus connecting the designated number (i.e., the
called party) to the subscriber 33 (FF 5).
In view of the foregoing, we will sustain the obviousness rejection of
claim 1 based upon the teachings of Reich and Nguyen. The same holds true
for claims 2 to 4, 6, and 19 which depend from claim 1, and independent
claim 9, because Appellants have not presented any patentability arguments
for these claims apart from the arguments presented for claim 1 (see App.
Br. 8).
Claims 3, 16, and 20
We agree with the Examiner’s findings of fact and conclusions of
obviousness with respect to claims 3, 16, and 20 (Ans. 6-7), and adopt them

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as our own. The Examiner has provided articulated reasoning with a rational
underpinning to support a legal conclusion of obviousness based upon the
teachings of the applied references (Ans. 3-7, 14). Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellants to present evidence and/or arguments that
persuasively rebut the Examiner’s prima facie case. See Oetiker, 977 F.2d at
1445.
Appellants have not presented any patentability arguments as to
claims 3 and 20, other than asserting that Morrisey and Markowitz do not
appear to cure the deficiencies of Reich and Nguyen (see App. Br. 7-8;
Reply Br. 6). With respect to claim 16, Appellants’ contention (App. Br. 7-
8) that Morrisey does not disclose a wide area network or network
configuration is unpersuasive in light of our findings as to Morrisey (FF 6).
Morrisey discloses a telecommunications system with notable similarities to
that of Appellants, both having SCPs connected to SSPs using SS7 links and
STPs (compare Appellants’ Fig. 1 with Morrisey’s Fig. 1). Appellants’
arguments do not show error in the Examiner’s prima facie case of
obviousness put forth in the Examiner’s Answer (see Ans. 3-7, 14), and are
unconvincing in light of our findings and conclusions with respect to the
obviousness rejection based on the teachings of Reich and Nguyen.
Since Appellants have not particularly pointed out errors in the
Examiner’s reasoning to persuasively rebut the Examiner’s prima facie case
of obviousness, the § 103 rejections of (i) claims 3 and 16 based on Reich,
Nguyen, and Morrisey, and (ii) claim 20 based on Reich, Nguyen, and
Markowitz are therefore sustained.

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CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
it would have been obvious to one of ordinary skill in the art to combine the
emergency call notification telecommunications system and method taught
by Reich with the automatic call placing feature taught by Nguyen, thereby
obviating claims 1 and 9 on appeal.

ORDER
The decision of the Examiner to reject claims 1 to 4, 6, 9, 11, 16, 19,
and 20 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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