Ex Parte Plahte et al

Patent Trial and Appeal Board

Nov 6, 2013

11305047 (P.T.A.B. Nov. 6, 2013)

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.
11/305,047 12/19/2005 Ivar Plahte 519799-0324762 2087
22852 7590 11/07/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
AL AUBAIDI, RASHA S
ART UNIT PAPER NUMBER
2652
MAIL DATE DELIVERY MODE
11/07/2013 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 IVAR PLAHTE and SVEN EVENSEN
__________

Appeal 2011-011211
Application 11/305,047
Technology Center 2600
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a system
for providing private branch exchange (PBX) functionality to a mobile
communications device. (See Spec. 1, ¶ 0002.) The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as OnRelay Inc.
(See App. Br. 3).
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Statement of the Case
Background
The “present invention is directed to extending the functionality of a
private branch exchange (PBX) to a mobile telephone or other mobile
communication device” (Spec. 1, ¶ 0002). According to the Specification,
the invention “is further directed to providing other advanced services with
respect to a mobile telephone that would otherwise be available only via a
hardwired networked computer and/or telecommunications system”
(Spec. 1, ¶ 0002).
The Claims
Claims 1, 22, 29, 46, 53-74, and 76-145 are on appeal. Claim 1 is
representative and reads as follows:
1. A system for providing private branch exchange
(PBX) functionality to a mobile communications device,
comprising:
a mobile communications device operable to communicate
via a voice pathway, and to communicate call control signals via
a mobile data pathway independent of the voice pathway;
a private branch exchange (PBX) operable to communicate
with the mobile communications device via the voice pathway;
and
a mobile branch exchange (MBX) operable to
communicate with:
the PBX, via a Computer Telephony Integration
(CTI) interface, and
the mobile communications device, via the mobile
data pathway,
the MBX being operable to (i) monitor the PBX for
activity related to a user of the mobile communications device,
and (ii) control the PBX in accordance with the call control
signals, the call control signals being received by the MBX from
the mobile communications device via the mobile data pathway.
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The issue
The Examiner rejected claims 1, 22, 29, 46, 53-74, and 76-145 under
35 U.S.C. § 103(a) as obvious over Eriksson,2 Minnick,3 Miloslavsky,4 and
Atkinson5 (Ans. 3-9).
The Examiner finds that
Eriksson teaches a system for providing private branch
exchange (PBX) functionality to a mobile communications
device (see col. 1, lines 13-18), comprising: a mobile
communications device (this may read on mobile cellular
telephone, e.g. GSM portable within the cellular network,
see col. 6, lines 27-28 and col. 3, lines 58-59) operable to
communicate via a voice pathway and a data pathway (this
is inherent) . . . and a mobile branch exchange (MBX may
read on the MOBS “mobility server”, see Figs. 1 and 3, also
col. 5, lines 61-67 and col. 4, lines 36-67) . . . the MBX
(MOBS) being operable to . . . control the PBX in
accordance with commands received via the data pathway
from the mobile communications device (this basically reads
on providing the PBX features that are requested by the
caller see col. 7, lines 15-26).

(Ans. 3-4). The Examiner finds that “Minnick teaches in a multiple channel
communication system each of the plurality of mobile units capable to
communicate data and control messages on the communications channels”
(Ans. 4). The Examiner finds that “Miloslavsky teaches in a computerized
call center a computer-telephony integration (CTI) server connected by a
data link with a telephone switch” (Ans. 5).

2 Eriksson, D., US 5,956,652, issued Sep. 21, 1999.
3 Minnick et al., US 2003/0144018 A1, published Jul. 31, 2003.
4 Miloslavsky, A., US 5,946,387, issued Aug. 31, 1999.
5 Atkinson, P., US 2001/0039571 A1, published Nov. 8, 2001.
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The Examiner finds that “Atkinson specifically teaches (PDA 288)
may receive a local area broadcast via an infrared broadcast 290” (Ans. 6).
The Examiner finds that Atkinson teaches that the “cellular connection 296
may be an Internet connection; or, as with cell phone 286, the user may be
connected to the commerce center 295 via voice cell network 297. Cell
phone 286 may also passively receive a broadcast via the output interface
module 220, or actively interact with the LMM 200 interactive interface
module 226, via a connection 293” (Ans. 6).
The Examiner finds it obvious to
incorporate the feature of having a PDA device that can
establish two separate connection voice and data, such as the
one taught by Atkinson, into the combination of Eriksson,
Minnick and Miloslavsky in order to provide the user to
utilize different network (such as the internet). This will add
more convenience and flexibility to users who are the
mobile phone/device by allowing the users to either
establish a regular phone call or establish an internet
connection to access the internet when needed.

(Ans. 6-7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Eriksson,
Minnick, Miloslavsky, and Atkinson render claim 1 obvious?
Findings of Fact
1. Eriksson teaches “a method for providing cellular mobility
within a telecommunications system comprising a single exchange, e.g. a
Private Branch Exchange” (Eriksson, col. 1, ll. 9-11).
2. Eriksson teaches “providing a mobile cellular telephone with
access to an exchange and particularly to the services provided by the
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exchange substantially in the same way as a cordless telephone within radio
coverage of a radio exchange adjunct to the exchange” (Eriksson, col. 1, ll.
13-18).
3. Eriksson teaches “a cellular network (for example GSM, ADC,
(D-)AMPS etc) to which a private branch exchange PBX is connected”
(Eriksson, col. 3, ll. 59-61).
4. Eriksson teaches that:
PCM (Pulse Code Modulation) is a common transmission
technique worldwide. ITU (formerly CCITT) has issued a
number of recommendations for this technique. CAS
(Common Channel Signalling) indicates that all bearer
channels share one signalling channel for line signalling
information. The CCITT recommendations in series G.700-
G.795 describe general aspects of digital transmission
systems. In particular the following CCITT
recommendations apply to PCM and CAS as to be applied in
the described application . . . G.711 “Pulse code modulation
of voice frequencies”, G.731 “Primary PCM multiplex
equipment for voice frequencies”

(Eriksson, col. 4, ll. 1-15).
5. Eriksson teaches that the “PBX is further connected to a
mobility server MOSS which in turn can be connected to a number of
cordless radio exchanges REX . . . The radio exchange REX is connected to
the mobility server MOBS over the ISDN S2-interface supporting mobility
management . . . The primary rate interface and its D-channel control
signalling allows traffic concentration” (Eriksson, col. 4, ll. 36-52).
6. Eriksson teaches that the “MOBS then analyzes the called
number from the PBX and establishes that the call is of such kind that it is to
be routed to PBX and that it is to be treated as a call from the personal
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number which is associated to the received A-number” (Eriksson, col. 5, ll.
42-46).
7. Eriksson teaches that:
When the PBX receives the Seizure signal from the
cellular network the PBX calls the mobility server over the
ISDN Q-SIG interface. The mobility server will then set up
a speech connection to a DTMF tone receiver and order the
PBX to enter speech state by sending the Connect signal.
The PBX will acknowledge the Connect signal by returning
Connect Ack and the PBX will through-connect the PBX to
the mobility server and also sends the Answer signal over
CAS to the mobile switching center. The mobile switching
center in turn through-connects the connection and then
transmit the address information by DTMF tones to the
mobility server.

(Eriksson, col. 7, ll. 15-26).
8. Minnick teaches a multi-channel communciations system
“wherein each of the plurality of mobile units comprises: radio equipment
for communicating data and control messages on the communications
channels” (Minnick 14, ¶ 0171, claim 4).
9. Miloslavsky teaches “monitoring transactions on a transaction-
by-transaction basis of a telephony switch in a call center by a computer-
telephony integration (CTI) server connected by a data link with the
telephony switch” (Miloslavsky, col. 19, ll. 21-24; Claim 5 (a)).
10. Atkinson teaches that “[c]ell phone 286 may also passively
receive a broadcast via the output interface module 220, or actively interact
with the LMM 200 interactive interface module 226, via a connection 293.
Connection 293 may be a “Bluetooth” wireless local connection, which
conveys data separate from voice communications” (Atkinson 6, ¶ 0043).
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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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Eriksson teaches connecting a mobile device with a private branch
exchange (PBX) (FF 1) where the mobile device communicates with the
PBX over a PCM pathway (FF 4) as well as an ISDN pathway (FF 5). The
Examiner finds that “a mobile branch exchange . . . may read on the MOBS
‘mobility server’” of Eriksson (Ans. 4; FF 5-6). Eriksson teaches that the
MOBS server “analyzes the called number from the PBX and establishes
that the call is of such kind that it is to be routed to PBX and that it is to be
treated as a call from the personal number which is associated to the
received A-number” (Eriksson, col. 5, ll. 42-46; FF 6).
Minnick teaches mobile communications which communicate both
data and control messages on communications channels (FF 8). Miloslavsky
teaches the use of CTI servers connected by data links for call routing (FF
9). Atkinson teaches separate transmission of data and voice (FF 10).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary skill would have reasonably
incorporated Minnick’s use of data and control messages into Eriksson’s
cellular communication service “in order to provide the user with versatility
and diversity by enabling him/her to have the option to communicate via
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voice and data. This also can provide more services to users when data
pathway is needed” (Ans. 5). The Examiner also provides a reason to
modify Eriksson and Minnick to use CTI “in order to provide smoother,
more efficient and enhanced communication to users” (Ans. 5). Finally, the
Examiner reasons that incorporating Atkinson’s use of two separate
connections, one voice and one data “will add more convenience and
flexibility to users who are the mobile phone/device by allowing the users to
either establish a regular phone call or establish an internet connection to
access the internet when needed” (Ans. 6-7). We agree with the Examiner
such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that the “Examiner is picking and choosing pieces
of references and asserting that the combination would have been obvious”
(App. Br. 17). Appellants contend that “a prima facie case of obviousness
has not been established because the Office Action has not clearly
articulated a reason why one of ordinary skill would find the claimed
combination obvious in view of the cited references” (App. Br. 18).
We are not persuaded. The Examiner has provided specific reasons,
expressly stating in the rejection, for incorporating the features of Minnick,
Miloslavsky, and Atkinson into the cellular network of Eriksson. While we
are fully aware that hindsight bias often plagues determinations of
obviousness, Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that “if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we conclude
that the person of ordinary skill would have recognized that the use of
Minnick’s data and control messages (FF 8), Miloslavsky’s CTI interface
(FF 9), and Atkinson’s use of two separate channels for voice and data (FF
10) would have improved the cellular network of Eriksson for the express
reasons given by the Examiner (Ans. 4-7) and discussed above.
Appellants contend that “Minnick does not disclose or suggest at least
that the ‘control messages’ are ‘call control signals,’ as claimed” (Reply
Br. 3).
We are not persuaded. Claim 1 requires a “device operable . . . to
communicate call control signals”. Claim 1 does not actually require that
control signals are sent, simply requiring the capacity to communicate such
signals. Eriksson teaches the use of control signaling, specifically that the
“primary rate interface and its D-channel control signalling allows traffic
concentration” (Eriksson, col. 4, ll. 51-52; FF 4). This is reasonably
interpreted as a teaching of a device operable for call control signals. The
Examiner relies upon Minnick to teach that devices operable for
commnicating both data and control messages on communications channels
were known (FF 8). It is the combination of Eriksson and Minnick, along
with Miloslavsky and Atkinson, which render obvious the use of a device
with separate voice and call control signal pathways as required by claim 1.
Appellants contend that “the Bluetooth connection in Atkinson is not
used to control a PBX, but merely to communicate product information
locally, within the public space. Moreover, the Bluetooth connection in
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Atkinson is not used to communicate ‘call control signals’” (App. Br. 21).
Appellants contend that “to the extent that any of Eriksson, Minnick, or
Miloslavsky discuss controlling a PBX, these references fail to teach or
suggest doing so using ‘a mobile data pathway independent of the voice
pathway’” (App.Br. 22).
We are not persuaded. We agree with the Examiner that
having a “data pathway” independent of a “voice pathway”
is obvious at least within the teaching of Eriksson. The
Examiner had to introduce Atkinson to merely teach this
limitation. Of course, the motivation and advantages of
having and establishing two separate connection voice and
data, is to provide the user with the ability to utilize different
networks (such as the internet). This will add more
convenience and flexibility to users who are the mobile
phone/device by allowing the users to either establish a
regular phone call or establish an internet connection to
access the internet when needed.

(Ans. 11). In particular, we agree with the Examiner that the person of
ordinary skill and creativity would have reasonably recognized that
Atkinson’s teaching of two separate communication pathways for data and
voice (FF 10) would have been an obvious element for incorporation into the
Eriksson mobile phone which includes line signaling and voice channels
(FF 4-7).
Appellants contend that “Atkinson is nonanalogous art, and generally
relates to the field of e-commerce (paragraph 0034). . . . Here, one skilled in
the art would not have looked to the field of e-commerce to control a PBX
with a mobile communications device” (App. Br. 23).
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We are not persuaded. The test for non-analogous art is first whether
the art is within the field of the inventor’s endeavor and, if not, whether it is
“reasonably pertinent to the particular problem with which the inventor was
involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field” of
endeavor, it logically would have commended itself to an inventor's
attention in considering his problem “because of the matter with which it
deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In this case, even if we treat Atkinson as in a different field of
endeavor, we find that Atkinson’s teaching regarding a cell phone which
may have interactive “Bluetooth” connections which separately convey data
and voice communications (FF 10) to be quite pertinent to Eriksson’s focus
on conveying voice and line signaling between a cell phone and a private
branch exchange (FF 1-7). Both Atkinson and Eriksson are focused on
communications between cell phones and other devices (FF 1-7, 10). Thus,
the ordinary artisan interested in improving the connection in Eriksson’s cell
phones would reasonably look to other connection technologies such as
those disclosed by Atkinson for ways to “add more convenience and
flexibility to users who are the mobile phone/device by allowing the users to
either establish a regular phone call or establish an internet connection to
access the internet when needed” (Ans. 11).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Eriksson, Minnick, Miloslavsky and Atkinson render claim 1
obvious
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Eriksson, Minnick, Miloslavsky, and Atkinson.
Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims
22, 29, 46, 53-74, and 76-145 as these claims were not argued separately.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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