Ex Parte PARK et al

Patent Trials and Appeals Board

Mar 15, 2016

12187077 - (D) (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/187,077 08/06/2008
66547 7590 03/16/2016
THE FARRELL LAW FIRM, P,C
290 Broadhollow Road
Suite 210E
Melville, NY 11747
FIRST NAMED INVENTOR
Yun-Sang PARK
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.
1235-613 (SP8161) 2330
EXAMINER
HTUN,SANA
ART UNIT PAPER NUMBER
2643
MAILDATE DELIVERY MODE
03/16/2016 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 Yun-Sang Park and Byung-Duck Cho
Appeal2014-002445
Application 12/187,077
Technology Center 2600
Before ELENI MANTIS MERCARDER, BARBARA A. BENOIT, AND
JOHN R. KENNY Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 15-33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' disclosed invention relates to a method and apparatus for
providing a service from a voice-service dedicated terminal to a data-service
dedicated terminal by using user identification information of a mobile
terminal user in a wireless communication system. (Spec. 1.)
Claim 15, which is representative, reads as follows:
15. A method of providing a service from a voice-service
terminal to a data-service dedicated terminal, the method comprising:
Appeal2014-002445
Application 12/187,077
generating a message including an identification of a data-
service dedicated receiving-side terminal and a service type of the
message to be transmitted to the data-service dedicated receiving side
terminal; and
transmitting the generated message to a service server through a
voice-service network,
wherein the service server reads the message and transmits the
message to the data-service dedicated receiving-side terminal through
a data-service network.
REFERENCES
The prior art relied on by the Examiner in rejecting the claims on
appeal is:
Heck US 2005/0064883 Al Mar. 24, 2005
Gress US 7,024,209 Bl Apr. 4, 2006
El-Fishawy US 7,133,687 Bl Nov. 7, 2006
Blumenschein US 2006/0280165 Al Dec. 14, 2006
Ratni US 2007/0291927 Al nf'r ?O ?007 ~--· ~~, ~~~,
REJECTIONS
Claims 15, 18, 19, 22-24, 29, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over El-Fishawy, Blumenschein, and Heck.
(Final Act. 5.)
Claims 16, 17, 20, 21, 30, 31, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over El-Fishawy, Blumenschein, Heck, and
Batni. (Final Act. 22.)
Claims 25 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over El-Fishawy and Gress. (Final Act. 30.)
2
Appeal2014-002445
Application 12/187,077
ISSUES
Appellants raise four issues: (i) whether the preamble of claim 15 is a
claim limitation; (ii) whether the combination of El-Fishawy, Blumenschein,
and Heck teaches or suggests that preamble; (iii) whether, combined, those
references teach or suggest the limitation recited in claim 15 of "transmitting
the generated message to a service server through a voice-service network";
and (iv) whether those references can be combined. (App. Br. 6-8.)
ANALYSIS
Claims 15, 19, 23, and 29
Appellants argue that the preamble of claim 15 is a claim limitation.
(App. Br. 7-8.) The Examiner concludes it is not. (Ans. 9-10.) We do not
need to resolve this issue, however, because it is moot for this appeal. As set
forth below, we agree with the Examiner that the combination of El-
Fishawy, Blumenschein, and Heck teaches or suggests the preamble of claim
15. Therefore, we would affirm the Examiner's rejection of claim 1
regardless of whether the preamble is a claim limitation.
Appellants argue that the combination of El-Fishawy, Blumenschein,
and Heck does not teach or suggest the preamble of claim 15. (App. Br. 7-
8; Reply Br. 2-3.) Appellants contend that El-Fishawy is directed to
sending messages in the opposite direction from what the preamble recites:
that is El-Fishawy sends messages from a data-service dedicated terminal to
a voice-service terminal, rather than from a voice-service terminal to a data-
service dedicated terminal. (App. Br. 7-8; Reply Br. 2-3) Appellants
contend that Blumenschein and Heck do not provide the missing teaching or
3
Appeal2014-002445
Application 12/187,077
suggestion. (App. Br. 7-8; Reply Br. 2.) We are not persuaded by these
arguments.
As the Examiner finds, El-Fishawy in combination with Heck teaches
or suggest sending messages from data-service terminals to voice dedicated
terminals. (Ans. 7-10.) El-Fishawy discloses that its sender device can be
"a wireless or mobile telephone, a conventional wired telephone, or any
other telephony device." (Ans. 10, citing El-Fishawy 5:44--53.) The
Examiner finds, and we agree, that this disclosure teaches or suggests a
voice dedicated terminal as the sending device. (Id.) As the Examiner also
finds, El-Fishawy discloses sending a message to an MMS-enabled recipient
(a data-service terminal). (Advisory Act. 2, citing El-Fishawy Figs. 4a and
4b.) As the Examiner sets forth, Heck teaches sending messages from
telephone 34 and receiving messages by communication computer 38, which
are, respectively, a voice service terminal and a data service terminal,
respectively. 1 (Ans. 7-9, citing Heck Figs. 1, 3.) The Examiner finds, and
we agree, that collectively, the cited disclosures teach or suggest the
preamble of claim 15. (Ans. 7-10.)
Appellants argue that the combination of El-Fishawy, Blumenschein,
and Heck fails to teach or suggest the limitation recited in claim 15 of
"transmitting the generated message to a service server through a voice-
service network." (App. Br. 8; Reply Br. 3.) Focusing on Heck, Appellants
1 Appellants dispute the Examiner's construction of the term data-service
dedicated terminal. (Reply Br. 2.) We do not need to address the
Examiner's construction of this term on appeal because Appellants do not
contest that an MMS-enabled device and a computer are data-service
dedicated terminals.
4
Appeal2014-002445
Application 12/187,077
argue that Heck does not disclose transmitting a generated message and
therefore does not satisfy claim 15. (App. Br. 8; Reply Br. 3.) We are not
persuaded by this argument because it does not address the combined
teachings and suggestions of the cited references. In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425-26
(CCP A 1981) ). The Examiner finds Heck teaches sending a message to a
service server through a voice-service network. (Ans. 7-8.) In addition, the
Examiner finds, El-Fishawy teaches transmitting a message through a voice-
service network (Ans. 7.), and El-Fishawy and Blumenschein teach or
suggest generating the message recited by claim 15. (Final Act. 6-10; Ans.
3-10.) Collectively, as the Examiner finds, these disclosures teach or
suggest the transmitting limitation. (Final Act. 6-10; Ans. 3-10.)
Appellants argue that it would not be obvious or even possible to
combine the teachings of Blumenschein and Heck with El-Fishawy. (App.
Br. 8; Reply Br. 3.) Appellants contend that combining El-Fishawy with
Blumenschein and Heck would destroy the intended purpose of El-Fishawy:
to provide content of an MMS message to a voice service terminal without
MMS capability. (App. Br. 8; Reply Br. 3.) We are not persuaded by this
argument. As discussed above, and as the Examiner finds, the teachings
(and purpose) of El-Fishawy, are not limited to sending messages from an
MMS capable device to a device without such a capacity. (Ans. 10, citing
El-Fishawy 5:44--53; Advisory Act. 2, citing El-Fishawy Figs. 4a and 4b.)
Therefore, we sustain the rejection of claim 15 and of claims 19, 23,
and 29, not separately argued. (App. Br. 6-9.)
5
Appeal2014-002445
Application 12/187,077
Claims 16-18, 2()-22, 24-28, and 3()-33
Appellants argue that the Examiner made the same errors with respect
to claims 16-18, 20-22, 24--28, and 30-33 that the Examiner made for
claims 15, 19, 23, and 29. (App. Br. 9-13.) Therefore, we sustain the
rejection of claims 16-18, 20-22, 24, 25-28, and 30-33 for the reasons
expressed above for claims 15, 19, 23, and 29.
DECISION
The decision of the Examiner to reject claims 15-33 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
6