Ex Parte Self

Patent Trial and Appeal Board

Jul 30, 2014

11332581 (P.T.A.B. Jul. 30, 2014)

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.
11/332,581 01/13/2006 Michael Self RMS-SE-260.001 2890
53437 7590 07/30/2014
ROBERT M. SCHWARTZ, P.A.
P.O. BOX 221470
HOLLYWOOD, FL 33022
EXAMINER
GAY, SONIA L
ART UNIT PAPER NUMBER
2651
MAIL DATE DELIVERY MODE
07/30/2014 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 MICHAEL SELF
________________

Appeal 2012-003499
Application 11/332,581
Technology Center 2600
________________

Before RICHARD E. SCHAFER, JOHN G. NEW, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Self (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 8, 10–13, 15, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-003499
Application 11/332,581

References
The Examiner relies upon the following prior art references:
Gerszberg US 5,983,098 Nov. 9, 1999
Goldman US 2006/0072549 A1 Apr. 6, 2006
Schwartz US 2006/0193447 A1 Aug. 31, 2006
Bifano US 7,356,348 B2 Apr. 8, 2008

Rejections
Appellant seeks review of the following rejections:
I. Claims 8, 10, 12, 13, 15, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bifano, Schwartz, and Goldman;
II. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bifano, Schwartz, Goldman, and Gerszberg.
Claimed Subject Matter
Because Appellant makes the same argument for all of the claims on
appeal, see App. Br. 22–23, we select claim 8 as representative. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 8 is reproduced below:
8. A voice communications system for communicating
voice signals over a data network or a mobile telephone
network, comprising
a telephone device for generating voice signals, said telephone
device including a user interface for generating a user input;
a communications device for receiving said voice signals and
providing said voice signals to either the data network or to the
mobile telephone network;
said communications device including a determination module
for determining, prior to attempting to place a call, whether the
voice signals are to be placed over the data network or the
mobile telephone network;
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Application 11/332,581

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said communications device further including a VolP module
and a modem module, said VolP module for encoding said
voice signals for transmission over a data network and
transmitting the encoded voice signals to the data network over
a wired connection, said modem module for transmitting said
voice signals over the mobile telephone network;
said voice signals being sent to said VolP module or said
modem module based on a determination from said
determination module;
if said determination module determines that the user input
entered is a request for emergency services, said determination
module further determining whether a path including the data
network is currently available, and if the path is available,
determines that the call should be placed over the data network,
and, if the path is unavailable, determines that the call should be
placed over the mobile telephone network; and
said communications device being configured to place a call
to the destination number 911 over the path determined by the
determination module once said determination module has
determined that the user input entered is a request for
emergency services.
App. Br., Claims Appendix (emphasis added).

Issue on Appeal
The issue presented on appeal is whether the Examiner erred in
finding that the combined cited prior art teaches or suggests the limitation of
claim 8 reciting “communications device being configured to place a call to
the destination number 911 over the path determined by the determination
module.” App. Br. 9–10 (emphasis omitted).

Appeal 2012-003499
Application 11/332,581

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. We disagree with Appellant’s
conclusions as to all rejections. We adopt as our own the findings and the
reasons set forth by the Examiner at pages 8–9 in the Answer to Appellant’s
Brief. We further highlight and address specific findings and arguments for
emphasis as follows.
Appellant argues that Goldman cannot teach the limitation of the
“communications device being configured to place a call to the destination
number 911” because Goldman substitutes another number from a database
in place of 911 before ultimately routing to a public safety answer point
(“PSAP”). See App. Br. 10–16 (emphasis omitted). As explained in one
embodiment of Goldman, after a 911 call is placed from the customer
premise equipment (“CPE”) the call is routed to a node outside the CPE
where another number for a PSAP is substituted. See Goldman ¶¶ 21–22;
Fig. 2. Thereafter, the call is routed to the PSAP through a public switched
telephone network (“PSTN”) using the substituted number. Id. There
seems to be little factual dispute as to what Goldman teaches. The Appellant
contends, however, that his claims do not allow for the substitution of
another number for 911 at a node outside the CPE because he has claimed
that the call must be “to the destination number ‘911.’” App. Br. 15–16
(emphasis omitted).
The Appellant’s arguments rest upon limitations not actually found in
the claim language. The claim language requires only that “the
communications device” must be configured itself to “place a call to the
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Application 11/332,581

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destination number 911.” Claim 8. There is no claim limitation addressing
any aspect of routing after the communication device may, in fact, dial 911.
The routing performed by Goldman after dialing 911 is irrelevant in light of
the claim language, which requires only the communications device
configured to dial such a call.
Appellant relies on the Specification, which discloses routing of the
911 telephone call to a PSAP via the PSTN. Spec. 10. The Specification’s
discussion of routing after 911 is dialed is not controlling because the claim
language simply requires the communications device be configured to call
destination number 911; Appellants may not import limitations from their
Specification into the claims. See CollegeNet, Inc. v. ApplyYourself, Inc.,
418 F.3d 1225, 1231 (Fed. Cir. 2005) (“In examining the specification for
proper context” it is improper to “import limitations from the specification
into the claims.”). The language of the claim recites “communication device
being configured to place a call to the destination number 911” and we agree
with the Examiner that Goldman teaches a device capable of placing a call to
destination number 911 as claimed. See Goldman ¶ 22. We therefore
conclude that Appellant has failed to show that the Examiner erred and we
affirm the Examiner’s rejection of the claim.
The arguments made by Appellant as to the advantages of his system
(App. Br. 17–20) are outside the scope of the actual language of claim 8.
Again, each of the Appellant’s arguments are based upon what happens
during routing after the communications device may call destination number
911.
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DECISION
We AFFIRM the Examiner’s decision rejecting claims 8, 10–
13, 15, and 17.
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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