Ex Parte Ruetschi et al

Patent Trial and Appeal Board

Mar 25, 2013

10919619 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANNES RUETSCHI and JOSEPH LOBUONO
____________

Appeal 2010-010398
Application 10/919,619
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and JOHN A.
EVANS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-7 and 13-26, which are all of the pending claims. Claims 8-12
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Nov. 9, 2009), the Answer (mailed Mar.
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30, 2010), and the Reply Brief (filed June 1, 2010). We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
Any other arguments which Appellants could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Appellants’ Invention
Appellants’ invention relates to the providing of personally tailored
communications to specific users at corresponding communications devices.
As an example, an advertisement can be displayed in a banner on the device
display of a specific user. See generally Abstract.

Claim 1 is illustrative of the invention and reads as follows:

1. A communications system comprising:

a plurality of wireless communications devices identified with
corresponding system subscribers;

a service provider infrastructure monitoring for connection of each of
said plurality of wireless communications devices with said communications
system and monitoring communications with said plurality of wireless
communications devices; and

ones of said plurality of wireless communications devices including a
local display and when determined connected, receiving information for an
associated system subscriber from said service provider infrastructure,
received said information being displayed on said local display while said
ones are connected to said communications system, wherein while
connected said ones selectively display received subscriber information
between and during calls.
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The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Zellner US 2002/0077083 A1 June 20, 2002
Jollis US 2004/0080538 A1 Apr. 29, 2004
Bookstaff US 2004/0091093 A1 May 13, 2004
Go US 7,010,293 B2 Mar. 7, 2006
(filed Dec. 22, 2000)

Claims 1-3, 5, 6, 13-16, 18, 19, and 21-26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bookstaff in view of Go.
Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff in view of Go and Zellner.
Claims 4 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff in view of Go, Zellner, and Jollis.

ANALYSIS
Claims 1-3, 5, 6, 13-16, 18, 19, and 21-26

Appellants initially contend, with respect to the obviousness rejection
of independent claims 1, 13, and 21, that the Examiner erred in interpreting
Bookstaff as disclosing the receiving of subscriber information “between
and during” calls as claimed. In particular, Appellants contend that
Bookstaff discloses the presenting of information, such as advertising
information, to a subscriber only when the subscriber’s phone is “off-hook.”
According to Appellants, therefore, Bookstaff cannot be interpreted as
providing information to a subscriber before a call because information is
provided only when the subscriber’s phone is “off-hook,” i.e., during a call,
but not before (App. Br. 6-9; Reply Br. 1-3).
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We do not agree with Appellants. Initially, we note that the
Examiner has interpreted Bookstaff’s disclosure of a “call” as consisting of
steps 111-117, illustrated in Figure 1A of Bookstaff, which begins with the
dialing of a number at step 111 (Ans. 20). As illustrated in Bookstaff, an
advertisement will be presented to a subscriber (step 121) before dialing
begins at step 111, i.e., before a call begins, and an advertisement is also
presented (step 124) during the call. We find no error in this interpretation
of Bookstaff, nor have Appellants demonstrated any such error. We further
note that Appellants’ disclosure has no description as to when a “call”
begins or ends.
We further find that, to whatever extent Appellants are contending
that the claims require that an “on-hook” connection is established between a
wireless device and the communications system, no such requirement
appears in the claims. Conversely, the claims do not preclude the
establishment of a connection by taking a phone “off-hook” as in Bookstaff.
Finally, contrary to Appellants’ contention (App. Br. 9-10; Reply Br.
3-4), we find that the Examiner has provided a valid articulated line of
reasoning with a rational underpinning to support the conclusion of
obviousness with respect to the rejected claims (Ans. 5). KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner that
an ordinarily skilled artisan would have recognized and appreciated that
Go’s teaching of providing visual display of advertisements to a subscriber
would have served as an obvious enhancement to the audio communication
system of Bookstaff. Further, Appellants’ contention (App. Br. 9-10; Reply
Br. 3) that Go provides advertisements to a subscriber “off-hook” only is
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unpersuasive for similar reasons as discussed with regard to Bookstaff
supra.
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1, 13, and 21, as well as the rejection of dependent
claims 2, 3, 5, 6, 14-16, 18, 19, and 22-26 not separately argued by
Appellants, is sustained.

Claims 4, 7, 17, and 20
We also sustain the Examiner’s obviousness rejections of dependent
claims 4, 7, 17, and 20, in which Zellner and Jolllis are applied in separate
combinations with the Bookstaff/Go combination to address the features of
the rejected claims (Ans. 14-18). Appellants’ arguments are not persuasive
of any error in the Examiner’s stated position (App. Br. 10-11; Reply Br. 4).

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-7 and 13-26 for obviousness under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-7 and 13-26
under 35 U.S.C. § 103(a).

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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)(2010).

AFFIRMED

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