Ex Parte Weiss

Board of Patent Appeals and Interferences

Sep 24, 2010

09848753 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFERY N. WEISS
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Appeal 2009-007501
Application 09/848,753
Technology Center 2600
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Before KENNETH W. HAIRSTON, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 2, 4, 5, 8 to 23, and 25 to 29. Claims 3, 6, 7, and 24
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the indefiniteness rejection of claim 25 under § 112,
second paragraph, and reverse the indefiniteness rejection of claims 9, 10,
and 12 under § 112, second paragraph. We will sustain the obviousness
rejections of claims 1, 4, 8 to 11, and 13 to 23, and 25 to 29 under 35 U.S.C.
§ 103(a), and reverse the obviousness rejection of claims 2, 5, and 12 under
35 U.S.C. § 103(a).
Appellant’s claimed invention is directed to an incoming telephone
call blocking method and device that selectively blocks calls based on a user
entering or not entering a code (Spec. 1:14-23). The calls are blocked during
periods of time selected by a user. Appellant discloses and claims an
incoming telephone call blocking device that allows call to come in during a
selected time period when the caller enters the correct code (claim 1; Spec.
1:14-23; Abs.). Appellant also discloses and claims disconnecting a
telephone by opening a series switch and closing two vertical switches
during a blocking mode which occurs at certain selected times of day (Spec.
5:24-30; claims 2, 5, and 12).
Claims 1 and 2 are representative of the claims on appeal, and read as
follows:
Claim 1. An incoming telephone call blocking device associated with
a telephone line operatively associated with a user's telephone, said blocking
device comprising:
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means for setting an activation period for blocking of incoming
telephone calls, said activation period including a user entered starting time
for blocking of incoming telephone calls;
means for requesting a caller during the activation period to enter a
code for passing the incoming telephone calls;
means for determining if a correct code has been entered by the caller;
and
means for allowing an incoming telephone call of the caller to pass
through during the activation period where it is determined that the caller
has entered a correct code.
Claim 2. The telephone call blocking device of claim 1 wherein when
not in the activation period the user's telephone is connected with the
telephone line through the closing of a series switch; wherein when blocking
has been activated the user's telephone is disconnected from the telephone
line by the opening of the series switch and closing of a first vertical switch
and a second vertical switch.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Novak US 4,266,098 May 5, 1981
Lee US 5,604,791 Feb. 18, 1997
Horne US 6,298,122 B1 Oct. 2, 2001
(filed Dec. 7, 1998)

The Examiner rejected claims 9, 10, 12, and 25 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which is regarded as the
invention.
The Examiner notes several lines of claims 9, 10, and 12 without
explaining what those lines contain or if and how the wording found in those
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lines causes indefiniteness (Ans. 3). The Examiner notes that claim 25
depends from canceled claim 24 (Ans. 3).
The Examiner rejected claims 1, 2, 4, 5, 8, 9, 13, 14, 17, 18, and 25 to
29 under 35 U.S.C. § 103(a) based upon the teachings of Novak and Horne.
The Examiner rejected claims 10 to 12, 15, 16, and 19 to 23 under 35
U.S.C. § 103(a) based upon the teachings of Novak and Horne, further in
view of the teachings of Lee.
In both of the obviousness rejections, the Examiner determines (Ans.
4-5) that it would have been obvious to incorporate the activation period
taught by elements 302 and 304 (Figure 3) of Horne in the incoming
telephone call blocking method and device of Novak “as such would make
the Novak device and method more convenient” (Ans. 4).

ISSUES
First Issue: § 112, Second Paragraph, Rejection
Appellant argues (Br. 4-5) that the wording of claims 9, 10, 12, and 25
does not rise to the level of a § 112, second paragraph, rejection. Appellant
requests (Br. 4) that the Board consider claim 25 to be dependent upon claim
17 for purposes of this appeal.
Based on Appellant’s arguments, the first issue is: are claims 9, 10,
12, and 25 indefinite based on the Examiner having set forth a proper basis
for finding these claims indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention?
Second Issue: Obviousness of Claims 1, 4, 8 to 11, 13 to 23, and 25 to 29
With regard to the obviousness rejection of claims 1, 2, 4, 5, 8, 9, 13,
14, 17, 18, and 25 to 29, Appellant argues (Br. 6-8) that Novak and Horne
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fail to teach, suggest, or provide motivation for incorporating elements 302
and 304 (i.e., activation period setting means) into the telephone call
blocking device of Novak. With regard to the obviousness rejection of
claims 10 to 12, 15, 16, and 19 to 23, Appellant argues (Br. 8-9) that
although Lee shows a speaker 223, Lee fails to cure the deficiencies of
Novak and Horne.
Based on Appellant’s arguments, the first second is: would it have
been obvious to modify the telephone call blocking device of Novak with
the elements 302 and 304 (i.e., activation period setting means) of Horne in
order to make the device and method of Novak more convenient, as set forth
in claims 1, 15, and 17 on appeal?
Third Issue: Obviousness of Claims 2, 5, and 12
With regard to claims 2, 5, and 12, Appellant argues (Br. 7) that
Novak and Horne fail to teach or disclose the claimed switches.
Based on Appellant’s arguments, the third issue: has the Examiner
properly addressed the limitations of a series switch and vertical switches,
and made a prima facie case of obviousness for claims 2, 5, and 12 on
appeal?

FINDINGS OF FACT
1. Novak describes an incoming telephone call blocking method and
device (Figs. 1 and 2) for preventing unwanted calls from disturbing a called
party (Abs.). Novak sets conditions for accepting calls including having a
caller input a predetermined code (col. 1, l. 47 to col. 2, l. 14), and using a
clock 10 and processor 6 to program certain calls to be accepted at certain
times while accepting other calls all the time (col. 2, ll. 21-22).
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2. Horne describes a caller ID system and call screening method (Fig.
4) and system (Fig. 1) for blocking and screening incoming calls where an
override code permits incoming calls to ring through (Abs.). Horne
describes programmable system features for call screening such as TIME
ON field 302, TIME OFF field 304, and other database fields like
OVERRIDE code field 306 and allowable calling party entries 308 for
activating and/or deactivating a period for call screening (Fig. 3; col. 7, l. 59
to col. 8, l. 27).
3. Lee describes a telephone answering system using a speaker 223
(Figure 13; col. 17, ll. 56-58) and a speaker 123 (Figures 5 and 12; col. 14,
ll. 13-15) for emitting a ringing sound to alert a user of an incoming and/or
desired call.

PRINCIPLES OF LAW
Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second
paragraph is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). Claims must “particularly point[] out and distinctly
claim[] the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶ 2.
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
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Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
First Issue:§ 112, Second Paragraph, Rejection
The Examiner has not pointed out any specific limitations in claims
9, 10, and 12 that are indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
In the absence of any reasons for finding the claims indefinite, we hereby
decline the Examiner’s invitation (Ans. 3) to find indefiniteness as to claims
9, 10, and 12, and find that “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc., 806 F.2d at 1576. Accordingly, we will not sustain the Examiner’s
indefiniteness rejection of claims 9, 10, and 12 under § 112, second
paragraph.
We also decline Appellant’s invitation (Br. 4) to pretend for purposes
of appeal (or for any other reason) that claim 25 depends from claim 17.
The fact remains that claim 25 improperly depends from canceled claim 24,
and thus does not particularly point out and distinctly claim the subject
matter which the Appellant regards as the invention (see 35 U.S.C. § 112, ¶
2) because those skilled in the art would not know what features are
incorporated from the underlying claim from which claim 25 depends. See
Orthokinetics, Inc., 806 F.2d at 1576.
Accordingly, we will sustain the Examiner’s rejection of claim 25
under § 112, second paragraph, as being indefinite.
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Second Issue: Obviousness of Claims 1, 4, 8 to 11, 13 to 23, and 25 to 29
Turning now to the obviousness rejection of (i) claims 1, 4, 8, 9, 13,
14, 17, 18, and 25 to 29 over Novak and Horne, and (ii) claims 10, 11, 15,
16, and 19 to 23 over Novak, Horne, and Lee, we will sustain the
Examiner’s rejections of these claims for the reasons that follow.
We agree with the Examiner (Ans. 4-7) that the obviousness
rejections of claims 1, 4, 8 to 11, 13 to 23, and 25 to 29 are proper because
(i) Novak teaches the incoming telephone call blocking method and device
as set forth in claims 1, 15, 17 except for the setting of an activation period,
and (ii) Horne teaches setting an activation period. See Fine, 837 F.2d at
1073; Kahn, 441 F.3d at 988.
We agree with the Examiner (Ans. 3-7) that it would have been
obvious to modify Novak’s incoming telephone blocking system and method
with Horne’s activation period setting feature in order to make the device
and method of Novak “more convenient” (Ans. 4). The Examiner has
provided articulated reasoning with a rational underpinning to support the
combination for the legal conclusion of obviousness (Ans. 3-8). See Kahn,
441 F.3d at 988. Appellant’s contentions (App. Br. 5-8) that there is no
motivation for making such a modification are unconvincing.
In view of the foregoing and Findings of Fact 1 and 2, Novak and
Horne disclose or suggest all of the elements of claims 1, 4, 8, 9, 13, 14, 17,
18, and 25 to 29 of an incoming telephone call blocking method and device
that allows calls through during an established activation period when the
caller has entered the correct code. We will sustain the Examiner’s rejection
of claims 1, 4, 8, 9, 13, 14, 17, 18, and 25 to 29 as being obvious under
§ 103(a) over the combined teachings of Novak and Horne.
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With regard to claims 10, 11, 15, 16, and 19 to 23, we note
Appellant’s admission (Br. 8) that Lee teaches a speaker. Although
Appellant argues (Br. 8) that there is no teaching in Novak for redesigning
circuitry and increasing the number of parts to include a separate speaker,
we do not find this line of reasoning persuasive. We agree with the
Examiner’s reasoning that “[s]peakers are old in the art and it would have
been obvious to one of ordinary skill to use a speaker wherever it was
deemed necessary” (Ans. 5), and conclude that the ordinarily skilled artisan
would not find it difficult to add a speaker or redesign a circuit to allow for
user notifications of incoming calls and the like.
Novak, Horne, and Lee disclose or suggest all of the elements of
claims 10, 11, 15, 16, and 19 to 23 of an incoming telephone call blocking
device including a speaker that allows calls through during an established
activation period when the caller has entered the correct code (see FF 1-3).
Appellant has failed to persuade us that it would be improper to combine
Lee’s speaker with the method and device of Novak as modified by the
activation period setting feature of Horne. In view of the foregoing, we will
sustain the Examiner’s rejection of claims 10, 11, 15, 16, and 19 to 23 as
being obvious under § 103(a) over the combined teachings of Novak, Horne,
and Lee.
Third Issue: Obviousness of Claims 2, 5, and 12
Turning now to the obviousness rejection of claims 2, 5, and 12 over
the various teachings of Novak, Horne, and Lee, we agree with the
Appellant’s assertions (Br. 7) that Novak and Horne fail to teach or disclose
the recited switches (e.g., series switch, answer switch, and first and second
vertical switches), and their specifically claimed operations. We will not
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sustain the Examiner’s rejections of claims 2, 5, and 12 for at least the
reason that no prima facie case of obviousness has been made.
The Examiner’s inclusion of claims 2, 5, and 12 in the statement of
the rejection of claim 1 from which these claims depend (Ans. 4-5) is
insufficient as applied to claims 2, 5, and 12 because of the difference in
claim scope. Specifically, the Examiner has not sufficiently addressed the
limitations found in claims 2, 5, and 12 of (i) opening and/or closing a series
switch and first and second vertical switches to connect a telephone line
(claim 2), (ii) closing answer switch which also answers the incoming
telephone call (claim 5), and (iii) detecting when a user’s telephone is picked
up to answer an incoming call during an activation period by closing a series
switch and opening first and second vertical switches (claim 12). The
Examiner fails to address these differing features of claim 2, 5, and 12, or
Appellant’s arguments with regard to these features, in the Response to
Argument section of the Answer (see Ans. 5-7). Although the Examiner
asserts (Ans. 3-4) that Appellant fails to provide any supporting description
for the claimed series and vertical switches in the Specification, we note that
the Specification describes vertical switches 14 and 16, and series switch 12,
at page 5 therein. As a result, we find that the Examiner has neither
provided (i) a factual basis to support the legal conclusion of obviousness
(see In re Fine, 837 F.2d at 1073), nor (ii) articulated reasoning possessing a
rational underpinning to support the legal conclusion of obviousness (In re
Kahn, 441 F.3d at 988) as to claims 2, 5, and 12.

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CONCLUSIONS OF LAW
For the foregoing reasons, we find that the Examiner erred in rejecting
claims 9, 10, and 12 under § 112, second paragraph, as being indefinite, but
not claim 25 which improperly depends from canceled claim 24. We also
find that the Examiner erred in rejecting claims 2, 5 and 12 under § 103(a) as
being obvious in view of the respective teachings of Novak, Horne, and Lee
because the Examiner has failed to adequately address the various recited
switches and the operation thereof in combination with the other limitations
of the claims. Lastly, we find that the Examiner did not err in rejecting (i)
claims 1, 4, 8, 9, 13, 14, 17, 18, and 25 to 29 under § 103(a) as being
obvious in view of the teachings of Novak and Horne, and (ii) claims 10, 11,
15, 16, and 19 to 23 under § 103(a) as being obvious in view of the
respective teachings of Novak, Horne, and Lee.

ORDER
We reverse the Examiner’s rejections of claims 9, 10, and 12 under §
112, second paragraph, as being indefinite.
We affirm the Examiner’s rejection of claim 25 under § 112, second
paragraph, as being indefinite.
We affirm the Examiner’s obviousness rejections of claims 1, 4, 8 to
11, 13 to 23, and 25 to 29 under § 103(a).
We reverse the Examiner’s obviousness rejection of claims 2, 5, and
12 under § 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)(v).

AFFIRMED-IN-PART

KIS

DANIEL S. POLLEY, P.A.
1215 EAST BROWARD BOULEVARD
FORT LAUDERDALE, FL 33301