Ex Parte Piratla et al

Patent Trial and Appeal Board

Apr 10, 2017

13568128 (P.T.A.B. Apr. 10, 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.
13/568,128 08/07/2012 Nischal M. Piratla 20120238 3685
86377 7590
Xerox Corporation
c/o Joseph E. Root
1809 Jones Cove Rd.
Clyde, NC 28721
EXAMINER
SHAH, MEHULKUMAR J
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
ip_docket @ qualipat. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NISCHAL M. PIRATIA, KOVENDHAN PONNAVAIKKO,
and PRATYUSH PRASANNA
Appeal 2017-002754
Application 13/568,128
Technology Center 2400
Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—3, 6—16, and 19-22, all the pending
claims in the present application. Claims 4, 5, 17, 18, 23, and 24 are
canceled. See App. Br. 2. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-002754
Application 13/568,128
The present invention relates generally to using a scanning device for
sending scanned output to mobile devices using the mobile device operator’s
network. See Abstract.
Claim 1 is illustrative:
1. A method of utilizing a scanning device for sending
scanned output to mobile devices, comprising:
scanning one or more documents as input;
saving the scanned output in a pre-defmed format;
receiving a phone number of a destination mobile device;
identifying a corresponding operator associated with the
phone number, including translating the received phone number into
operator information; and
sending the scanned output to the mobile device using a
mobile device operator’s network,
wherein the scanned output is sent to the mobile device
as a Multimedia Messaging Service (MMS) or Short Messaging
Service (SMS).
Appellants appeal the following rejections:1
Rl. Claims 1—3, 6—9, 12, 14—16, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Watanabe (US 2012/0050818 Al, Mar.
1, 2012), Macaluso (US 2008/0004079 Al, Jan. 3, 2008), and Yadav-Ranjan
(US 8,385,897 Bl, Feb. 26, 2013);
R2. Claims 10, 11, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Watanabe, Macaluso, Yadav-Ranjan, and Love
(US 2014/0006342 Al, Jan. 2, 2014); and
1 Appellants indicate that the Examiner’s rejection of claims 14—22 as falling
under 35 U.S.C. § 112(f) for not meeting the requirements of that provision
was withdrawn in the Advisory Action dated September 14, 2015 (see App.
Br. 4).
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Appeal 2017-002754
Application 13/568,128
R3. Claims 13 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Watanabe, Macaluso, Yadav-Ranjan, and Kasower (US
2007/0043577 Al, Feb. 22, 2007).
ANALYSIS
Issue: Did the Examiner err in finding that Watanabe, Macaluso, and
Yadav-Ranjan collectively teach or suggest identifying a corresponding
operator associated with the phone number, as set forth in claim 1?
Appellants contend that in Yadav-Ranjan “the system knows the
identity of the wireless carrier operator. It does not say that the system
identifies an operator for an individual telephone number, as required by the
pending claims” (App. Br. 6). Appellants further contend that “in
Macaluso’s invention, if the phone number is known, and the operator is
also known[,] Macaluso never deals with the problem of coping with a
telephone number by itself. Thus, neither Macaluso nor Yadav-Ranjan
discloses . . . identification of a cellular carrier” (App. Br. 7).
In response, the Examiner finds that in Yadav-Ranjan “[t]o know the
identity of the wireless carrier operator is to ‘identify the corresponding
operator’, and that operator is most certainly ‘associated with the phone
number’ because it is the carrier of the number” (Ans. 3). The Examiner
further finds that “Macaluso discloses in paragraph 0024 ‘a user enters a
phone number and [...] based on the phone number entered, a wireless
network carrier associated with the phone number is identified’” (id.)
(emphasis omitted). We agree with the Examiner.
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Appeal 2017-002754
Application 13/568,128
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
For example, Macaluso discloses that “[a] user enters a phone number
associated with a mobile communication device (e.g., a cellular phone) at
210, and based on the phone number entered, a wireless network carrier
associated with the phone number is identified. . . . Identifying the wireless
network allows a determination of the wireless user account. . .” (| 24).
Thus, contrary to Appellants’ contention, Macaluso clearly identifies the
corresponding cellular carrier associated with the cellular phone number.
In addition, Yadav-Ranjan discloses a “messaging unit 24 . . . that
converts a cell phone number of a user into an email message ... For
example, a cell phone number of 408-555-1212 on the Verizon carrier
system is converted into 4085551212@vztext.com” (2:51—62). Thus, we
agree with the Examiner that the combined teaching of Macaluso and
Yadav-Ranjan teach or suggest identifying a corresponding operator
associated with the phone number, including translating the received phone
number into operator information, as set forth in claim 1.
Therefore, for at least the reasons noted supra, we find unavailing
Appellants’ contention that “neither Macaluso nor Yadav-Ranjan discloses
. . . identification of a cellular carrier” (see App. Br. 7).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellants’ arguments regarding the Examiner’s rejection of independent
claim 14 rely on the same arguments as for claim 1, and Appellants do not
argue separate patentability for the dependent claims. See App. Br. 5—8. We
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Appeal 2017-002754
Application 13/568,128
therefore also sustain the Examiner’s rejection of claims 2, 3, 6—16, and 19-
22.
DECISION
We affirm the Examiner’s § 103(a) rejections Rl—R3.
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)(iv).
AFFIRMED
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