Ex Parte Bloebaum et alDownload PDFPatent Trial and Appeal BoardMar 19, 201511761606 (P.T.A.B. Mar. 19, 2015) Copy Citation 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. 11/761,606 06/12/2007 L. Scott Bloebaum 2002-658 1298 54472 7590 03/19/2015 COATS & BENNETT/SONY ERICSSON 1400 CRESCENT GREEN SUITE 300 CARY, NC 27518 EXAMINER KASSIM, KHALED M ART UNIT PAPER NUMBER 2468 MAIL DATE DELIVERY MODE 03/19/2015 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 L. SCOTT BLOEBAUM, CHARLES LIU, and PER-AKE MINBORG ____________________ Appeal 2013-000052 Application 11/761,606 1 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–3, 7–14, and 17. Appellants have previously canceled claims 4–6, 15, 16, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Sony Ericsson Mobile Communications AB. App. Br. 1. Appeal 2013-000052 Application 11/761,606 2 STATEMENT OF THE CASE 2 The Invention Appellants' claimed invention "relates generally to a method and apparatus for exchanging information in a communication system . . . [, in particular,] to a technique for obtaining caller-originated alert signals in IP- based communication sessions." Spec. ¶ 4. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases added to contested limitation): 1. A method for obtaining caller-originated alert signals in an IP-based communication session, the method comprising: receiving, from a first user equipment and via a first communication channel, a request to initiate a communication session between the first user equipment and a second user equipment, the request being received at the second user equipment and including an indication of an intent to provide a caller-originated alert but not including an identifier or source address for the caller-originated alert; in response to the request, causing a phonepage server to transmit, via a second communication channel, a caller- originated alert to the second user equipment; and 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Feb. 29, 2012); Reply Brief ("Reply Br.," filed Sept. 17, 2012); Amendment ("Amend.," filed June 1, 2011); Advisory Action ("Adv. Act.," mailed Nov. 10, 2011); Examiner's Answer ("Ans.," mailed July 17, 2012); Final Office Action ("Final Act.," mailed Aug. 30, 2011); and the original Specification ("Spec.," filed June 12, 2007). Appeal 2013-000052 Application 11/761,606 3 rendering the caller-originated alert to alert a user associated with the second user equipment. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: La Porta et al. ("La Porta") US 6,041,103 Mar. 21, 2000 Koser et al. ("Koser") US 2004/0032946 A1 Feb. 19, 2004 Donnelly US 2004/0223605 A1 Nov. 11, 2004 Rejections on Appeal 3 R1. Claims 1–3, 7, 8, 10–14, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Donnelly and La Porta. Ans. 6. R2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Donnelly, La Porta, and Koser. Ans. 10. CLAIM GROUPING Based on Appellants' arguments (App. Br. 3–7), we decide the appeal of Rejection R1 of claims 1–3, 7, 8, 10–14, and 17 on the basis of representative claim 1. We address remaining claim 9 in rejection R2, not argued separately, infra. 3 We note the Examiner withdrew the written description rejection of claims 1–3, 7–14, and 17 under 35 U.S.C. § 112, first paragraph. Adv. Act. 2. Appeal 2013-000052 Application 11/761,606 4 ISSUE Appellants argue (App. Br. 3–7; Reply Br. 2–3) the Examiner's rejection of claims 1–3, 7, 8, 10–14, and 17 under 35 U.S.C. § 103(a) as being obvious over the combination of Donnelly and La Porta is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, the step of "receiving, . . . a request to initiate a communication session . . . including an indication of an intent to provide a caller-originated alert but not including an identifier or source address for the caller-originated alert," as recited in claim 1? (emphasis added). ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(vii)(2011). We disagree with Appellants' arguments with respect to claims 1–3, 7–14, and 17, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appeal 2013-000052 Application 11/761,606 5 Appellants contend, "Donnelly does not disclose or suggest a technique in which a communication session initiation message indicates an intent to provide a caller-originated alert without identifying the alert or the source of the alert" (App. Br. 3), and further contend, "[i]t does not appear that the citations of La Porta disclose an intent to provide a caller-originated alert but not an identifier or source address for the alert . . . the Final Office Action does not cite to La Porta as disclosing this aspect." App. Br. 6. We note Appellants' characterization of the Examiner's reliance upon La Porta is factually incorrect and contrary to the Examiner's finding that "La porta teaches sending . . . an alert indication requesting initiating a communication session; said indication can [be] any desired message, voice or text indication, which can clearly . . . [be anything] not identifying the caller party." Final Act. 6 (emphases omitted). We further point out the Examiner finds that, in addition to La Porta's teaching cited above, Donnelly also broadly but reasonably teaches or suggests the contested negative limitation. Ans. 12 et seq. Because the Examiner rejects the claims as obvious over the combined teachings of Donnelly and La Porta, the test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner's finding that the combination of Donnelly and La Porta teaches or at least suggests the contested limitation of claim 1. In addition to the rationale provided by the Examiner (Ans. 11 et seq.), we observe Appellants amended independent claims 1 and 17 to Appeal 2013-000052 Application 11/761,606 6 include the contested negative limitation during prosecution in an amendment in which Appellants stated, "entry of these amendments is respectfully requested since the incorporation of previously pending dependent claim 4 does not introduce any new matter." Amend. 3. We point out, however, originally-filed claim 4 (now canceled) recited, in pertinent part, "wherein the at least one portion of the information associated with the caller-originated alert includes an indication of an intent to provide the caller-originated alert." We note claim 4, indicated by Appellants as being incorporated by amendment into independent claim 1 in the cited Amendment, is silent on any disclosure or recitation of the contested negative limitation, i.e., "but not including an identifier or source address for the caller-originated alert." 4 (emphasis added). Further, regarding the amount of patentable weight to be given to the negative limitation at issue, we find Appellants' cited support in the Specification (App. Br. 2: "but not include an identifier or source address for the caller-originated alert (Figs. 24, 25; ¶¶ 0142, 0145, 0152)") does not identify any "descri[ption of] a reason to exclude the relevant limitation." Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such 4 In the event of further prosecution, including any review for allowance, we invite the Examiner to re-review the pending claims for compliance with the written description requirement of 35 U.S.C. § 112, first paragraph, in view of the prosecution history of the contested negative limitation at issue, and the appearance that new matter may have been introduced into the claims by amendment. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2013-000052 Application 11/761,606 7 written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material."). "Although many original claims will satisfy the written description requirement . . ." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc); see Appellants' original claim 4), the Patent Rules require: [t]he claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. 37 C.F.R. § 1.75(d)(1) (emphasis added). To the extent the contested negative limitation recited in independent claims 1 and 17 may be given patentable weight by our reviewing court, Appellants fail to persuasively rebut the Examiner's specific findings regarding the limitation (e.g., see Ans. 12–14 and claim 1) by citing evidentiary support showing that both the Donnelly and La Porta references relied upon do, in fact, require "including an identifier or source address for the caller-originated alert," contrary to the contested negative limitation. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the contested limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness of claim 1, or of claims 2–3, 7, 8, 10–14, and 17 which fall therewith. See Claim Grouping, supra. Appeal 2013-000052 Application 11/761,606 8 § 103(a) Rejection R2 of Claim 9 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claim 9 under § 103 (see App. Br. 7), we sustain the Examiner's rejection of this claim, as it falls with independent claim 1. When Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. 5 In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Accordingly, we sustain the rejection of claim 9. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2–3) not in response to a shift in the Examiner's position in the Answer, we note that "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived."). CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 and R2 of claims 1–3, 7–14, and 17 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. 5 Appellants merely argue claim 9 depends from independent claim 1 and is patentable for the same reasons as claim 1. App. Br. 7. Appeal 2013-000052 Application 11/761,606 9 DECISION We affirm the Examiner's decision rejecting claims 1–3, 7–14, 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) (2011). AFFIRMED ELD Copy with citationCopy as parenthetical citation