Ex Parte Bloebaum et al

Patent Trial and Appeal Board

Mar 19, 2015

11761606 (P.T.A.B. Mar. 19, 2015)

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.
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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).
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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.
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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.
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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
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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.
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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.
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§ 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.
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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