Wilhoite, Michael T. et al.

Patent Trials and Appeals Board

Jan 31, 2020

13709732 - (D) (P.T.A.B. Jan. 31, 2020)

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.
13/709,732 12/10/2012 Michael T. Wilhoite 30006-002003 2387
69713 7590 01/31/2020
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
SHAND, ROBERTA A
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL T. WILHOITE and THOMAS A. CARTER
____________

Appeal 2019-000301
Application 13/709,732 1
Technology Center 2400
____________

Before BRYAN F. MOORE, NORMAN H. BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL2
Appellant seeks our review under U.S.C. § 134(a) of the Examiner’s
rejection of claims 2, 3, 8, and 11–15. We have jurisdiction under 25 U.S.C.
§ 6(b). We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Bridgeport
Networks, Inc. App. Br. 1.
2 Throughout this Decision we have considered the Specification filed
December 10, 2012 (“Spec.”), the Non-Final Rejection mailed August 3,
2017 (“Non-Final Act.”), the Appeal Brief filed April 3, 2018 (“Appeal
Br.”), the Examiner’s Answer mailed August 7, 2018 (“Ans.”), and the
Reply Brief filed October 9, 2018 (“Reply Br.”).
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BACKGROUND
Appellant’s invention relates to telephone systems and more
particularly to a system and method for delivering a circuit-based wireless
telephone call to a packet-based telephone call including a television cable
system-based telephone call. Spec. ¶ 2.
Claim 2, reproduced below with indentation added, is illustrative of
the claimed subject matter:
2. A call handover method comprising:
while a call is in progress between a mobile device and a
second device via a first component of a public mobile
telephone network over a circuit based leg of the public
mobile telephone network between the mobile device and
the first component, receiving a user initiated action at a
packet telephone connected to a local area data network
to initiate a handover of the call from the mobile device
to the packet telephone;
responsive to the action, forming a communication path from
the first component of the public mobile telephone
network to the packet telephone, the communication path
passing over a packet data based leg and terminating at
the packet telephone, wherein at least part of the packet
data based leg is established over the local area data
network;
completing the handover of the call from the mobile device to
the packet telephone including re-routing the call from
the circuit based leg to pass over the packet based leg.
Appeal Br. 27 (Claims Appendix).
THE REJECTIONS
1. Claims 2–4 and 8–15 stand rejected under 35 U.S.C. § 112(a) for failing
to comply with the written description requirement. Non-Final Act. 3–7.
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2. Claims 2, 3, 8, and 11–15 were rejected under 35 U.S.C. § 103(a) as
obvious over US 6,674,746 B1, issued Jan. 4, 2004 (“Lamarque”), in
view of US 2005/0170825 A1, issued Aug. 4, 2005 (“Dowling”). Non-
Final Act. 7–10. This rejection was withdrawn by the Examiner. Ans.
6.
3. Claims 4 and 10 were rejected under 35 U.S.C. § 103(a) as obvious over
Lamarque, in view of Dowling, in further view of admitted prior art.
Non-Final Act. 10–11. This rejection was withdrawn by the Examiner.
Ans. 6.
4. Claim 9 were rejected under 35 U.S.C. § 103(a) as obvious over
Lamarque, in view of Dowling, in further view of 6,459,783 B1, issued
Oct. 1, 2002, (“March”). Non-Final Act. 11–12. This rejection was
withdrawn by the Examiner. Ans. 6.
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
THE § 112 REJECTION
The Examiner rejects claims 2–4, 8–15 under § 112(a) for failing to
comply with the written description requirement. Non-Final Act. 3–4. In
particular, the Examiner considers as new matter the claim limitations
“while a call is in progress between a mobile device and a second device via
a first component of a public mobile telephone network over a circuit based
leg of the public mobile telephone network between the mobile device and
the first component” and “receiving a user initiated action at a packet
telephone connected to a local area data network to initiate a handover of the
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call from the mobile device to the packet telephone” as recited in claim 2
and similar recitations in claim 9. Id. at 4, 6; Ans. 7. According to the
Examiner, Appellant relies on paragraphs 54 and 55 of the Specification for
“while a call is in progress”, but the Specification at 54 and 55 shows only
initiating calls. Ans. 4. The Examiner also asserts that Appellant relies on
Figure 7 and its associated discussion to show “receiving a user initiated
action” to handover of a call, but Figure 7 only shows a mobile device
initiating handover of a call.
Appellant argues that “a description of the features of claims 2 and 9
that the Examiner contends are missing from the written description can
clearly be found in paragraphs [085]-[088] (related to FIG. 7) of the written
description.” Appeal Br. 12. Appellant also argues “[t]he Examiner has not
set forth any reasoning as to why a person of ordinary skill in the art who
has read paragraphs [085]-[088] (related to FIG. 7), in addition to paragraphs
[054]-[055] would not have recognized, in the Appellant’s disclosure, an
exemplary description of the invention defined by the claims.” Appeal Br.
12. (Emphasis omitted).
As to the limitation to “while a call is in progress,” we agree with
Appellant that a person of ordinary skill in the art would understand from the
Specification that the description of paragraphs 54 and 55 can be read in
conjunction with the description of Figure 7. For example, the Specification
states in paragraph 54 that “calls to and from the subscriber are transferred to
a local packet-based (IP) telephone when the subscriber approaches the
access point or initiates an action at the packet telephone.” Spec ¶ 54.
Similarly, the Specification states in paragraph 88 that “in the in-session call
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hand-off at registration process is as the mobile enters the cell site coverage
area for private domain.” Spec. ¶ 87 (emphasis added). Although the
Examiner states that paragraphs 54 and 55 are limited to initiating a new
call, the fact that paragraphs 54 and 55 do not expressly state they are
limited to new calls and the parallel language between paragraphs 54 and 87
suggests that they are discussing the same registration process which
paragraph 87 explicitly states can be during “in session” calls. We find that
a person of ordinary skill in the art would understand from this description
that the system can while a call is in progress between a mobile device and a
second device via a first component of a public mobile telephone network
over a circuit based leg of the public mobile telephone network between the
mobile device and the first component.
We agree with Appellant that a person of ordinary skill in the art
would understand from the Specification that the description of paragraphs
54 and 55 can be read in conjunction with the description of Figure 7. For
example, the Specification states in paragraph 55 that “subscriber registers
with his SCP either by merely approaching the access point with his
subscriber unit turned on or by taking an action at the desktop system or
other packet telephone..” Spec ¶ 55. Similarly, the Specification states in
paragraph 88 that “in the in-session call hand-off at registration process is as
the mobile enters the cell site coverage area for private domain.” Spec. ¶ 87.
Although the Examiner states that Figure 7 is limited to mobile device
initiating handoff of a call, the parallel language between paragraphs 55 and
87 suggests that they are discussing the same registration process which
paragraph 55 explicitly states can be initiated by a user. We find that a
person of ordinary skill in the art would understand from this description
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that the system can receive a user initiated action at a packet telephone
connected to a local area data network to initiate a handover of the call from
the mobile device to the packet telephone.
We, therefore, do not sustain the Examiner’s rejection of claims 2–4,
8–15 under 35 U.S.C. § 112(a).
CONCLUSION
We conclude the Examiner erred in rejecting claims 2–4, 8–15 under
35 U.S.C. § 112.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
2–4, 8–15 112(a) Lack of written
description support
2–4, 8–15

Because we reverse the existing ground of rejection with respect to
each claim on appeal, we reverse the Examiner’s rejection of claims 2–4, 8–
15.

REVERSED