Ex Parte Brass et alDownload PDFPatent Trial and Appeal BoardJan 15, 201410579321 (P.T.A.B. Jan. 15, 2014) 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. 10/579,321 01/08/2007 Volker Brass 102132-36 1726 27388 7590 01/15/2014 Hildebrand, Christa Norris McLaughlin & Marcus PA 875 Third Avenue, 8th Floor New York, NY 10022 EXAMINER HAMMONDS, MARCUS C ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 01/15/2014 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 VOLKER BRASS, WALTER GRETHE, and THOMAS SIEREDZKI 1 ________________ Appeal 2011-006163 Application 10/579,321 Technology Center 2600 ________________ Before, CAROLYN D. THOMAS, JASON V. MORGAN, and LARRY J. HUME, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–6, 8–11, and 13–16. Claims 7 and 12 are canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 T-Mobile Deutschland Gmbh is the Real Party in Interest. App. Br. 2. Appeal 2011-006163 Application 10/579,321 2 Invention Appellants invented “a method for transmitting text- and/or binary information in form of a short message in addition to voice information for a talker and at least one listener of a Voice Group Call, characterised by sending a special, dedicated signal to all listeners and to the talker.” Abst. Exemplary Claims Claims 1 and 8, reproduced below with key and disputed limitations emphasized, are representative: 1. A method for transmitting text and/or binary information representing a short message (SM) in addition to voice information for a talker and at least one listener of a Voice Group Call (VGC), comprising the step of sending a special, dedicated signal to all listeners and to the talker in a network, wherein the SM will be addressed by an associated Voice Group Call reference representing a concatenated sequence of a group identification (ID) and a group call area identification (ID). 8. The method according to claim 1, wherein if the talker is sending the SM and during the sending the talker intends to end his speaking, a Mobile Station (MS) will hold uplink until the SM is sent completely to the network. Rejections The Examiner rejects claims 1, 3–5, 8, 9, and 13–16 under 35 U.S.C. § 103(a) as being unpatentable over Sanders, III (U.S. 6,138,011) (“Sanders”) and 3rd Generation Partnership Project; Technical Specification Group Core Network; Voice Group Call Service (VGCS); Stage 2 (Release 5), pp. 1–68 (Dec. 2002) (“3GPP”). Ans. 4–9 and 12–15. Appeal 2011-006163 Application 10/579,321 3 The Examiner rejects claims 2 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Sanders, 3GPP, and Laumen (U.S. 2003/0109269 A1). Ans. 9–10. The Examiner rejects claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Sanders, 3GPP, and Tarnanen (U.S. 6,085,100). Ans. 10–12. ISSUES 1. Did the Examiner err in finding that the combination of Sanders and 3GPP teaches or suggests “wherein the SM will be addressed by an associated Voice Group Call reference representing a concatenated sequence of a group identification (ID) and a group call area identification (ID),” as recited in claim 1? 2. Did the Examiner err in finding that the combination of Sanders and 3GPP teaches or suggests “wherein if the talker is sending the SM and during the sending the talker intends to end his speaking, a Mobile Station (MS) will hold uplink until the SM is sent completely to the network,” as recited in claim 8? ANALYSIS Claims 1–6, 10, and 11 The Examiner finds that Sanders teaches the claimed method for transmitting text and/or binary information, with the exception that “Sanders fails to explicitly state wherein the SM will be addressed by an associated Voice Group Call reference representing a concatenated sequence of group identification (ID) and a group call area identification.” Ans. 4–5. The Examiner further relies on 3GPP—which discloses a group call Appeal 2011-006163 Application 10/579,321 4 reference composed of a concatenated group call area ID and group ID—to cure this deficiency. Id. at 5 (citing 3GPP, p. 17, § 9.1). Appellants contend the Examiner erred because Sanders “expressly teaches away from such modification or combination.” App. Br. 7. Specifically, Appellants submit that 3GPP “is directed to VGCS which allows speech conversation of a predefined group of service subscribers in half duplex mode on the radio link taking into account multiple subscribers involved in the group call per cell.” Id. (citing 3GPP, p. 6, § 1). In contrast, Appellants submit, Sanders overcomes the limitations of half-duplex communications “by permitting a full duplex group call.” App. Br. 8 (citing Sanders, col. 2, l. 10). Appellants further argue that in Sanders: [T]he call request is addressed based on dispatch related information received by a dispatch controller including a talk group affiliation for the originating communication device (Col. 2, ll. 47–63), not a Voice Group Call reference representing a concatenated sequence of a group identification (ID) and a group call area identification (ID) as disclosed in the publication. App. Br. 8 (emphases added). Appellants do not provide persuasive arguments or evidence showing that Sanders teaches away from the claimed use of Voice Group Call reference addressing for short message transmission. Specifically, Appellants do not show how the enablement of full-duplex group calls in Sanders precludes using Voice Group Call as a type of addressing for short messages. App. Br. 7–8; Reply Br. 1–3. Furthermore, Sanders’ use of “dispatch-related information” does not teach away from the claimed subject matter. A reference’s mere disclosure of a different solution to a similar problem does not teach away from an alternative solution unless the Appeal 2011-006163 Application 10/579,321 5 reference criticizes, discredits, or otherwise discourages the alternative solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Because Appellants’ arguments do not persuasively show error in the Examiner’s rejection, we agree with the Examiner that the combination of Sanders and 3GPP teaches or suggests “wherein the SM will be addressed by an associated Voice Group Call reference representing a concatenated sequence of a group identification (ID) and a group call area identification (ID),” as recited in claim 1. Ans. 4–5. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and of claims 2–6, 10, and 11, which Appellants do not argue separately. Claims 9 and 13–15 The Examiner correctly notes that Appellants make similar arguments with respect to the Examiner’s rejection of claims 9, 13, and 15. Ans. 18; see also App. Br. 9–12; Reply Br. 3. For similar reasons as above, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 9, 13, and 15, and of claim 14, which Appellants do not argue separately. Claims 8 and 16 The Examiner finds that it would have been obvious to an artisan of ordinary skill to modify Sanders to incorporate the uplink management features of 3GPP, thus teachings or suggesting “wherein if the talker is sending the SM and during the sending the talker intends to end his speaking, a Mobile Station (MS) will hold uplink until the SM is sent Appeal 2011-006163 Application 10/579,321 6 completely to the network,” as recited in claim 8. 2 Ans. 6–7 (citing 3GPP, pp. 9 and 43–57, §§ 4.2.2.1, 11.4, and 11.5). Appellants contend the Examiner erred because Sanders does not disclose the simultaneous transmission of voice and SM data, but instead discloses “cellular and public-switched telephone users can engage in dispatch or group calls, or send short messages to a group of target users . . . .” App. Br. 8 (quoting Sanders, col. 10, ll. 14–15). However, the portion of Sanders cited by Appellants merely lists tasks users can perform without “requiring all participants of the group call to dial in to a commercial bridge provider.” See Sanders, col. 10, ll. 17–18. Contrary to Appellants’ argument, the cited portion of Sanders does not disclose that transmission of voice and transmission of SM data are exclusive of each other. Appellants further contend the Examiner erred because the 3GPP reference “neither discloses nor suggests any relationship between the duration for which the uplink is held and the sending of the SM message, 2 We note the disputed recitation of method claim 8 is a conditional recitation which has no effect in the broadest reasonable scenario (e.g., when the talker does not intend to stop speaking during the sending of a SM). Thus, the Examiner need not show that the combination of Sanders and 3GPP TS 43.068 V5.2.0 teaches or suggests this recitation (although such a showing would be necessary with respect to the similar recitation in system claim 16). See Ex parte Katz, 2011 WL 514314, *4 (BPAI 2011) (non- precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.2004)). Further, we note the recitation in claims 8 and 16 of “during the sending the talker intends to end his speaking” (emphasis added) may not be clear and enabled because intent is merely a state of mind. In the event of further prosecution, the Examiner should ascertain to whether this recitation affects the patentability of claims 8 and 16 under 35 U.S.C. § 112. Appeal 2011-006163 Application 10/579,321 7 much less that the uplink be held until the SM is sent completely to the network.” App. Br. 9. However, as the Examiner finds, the 3GPP reference teaches or suggests “[d]uring transmission of uplink data within the Voice Group Call from a particular mobile device, the uplink channel must only be accessed at any one time by that one particular device as stated above to avoid collision and interference within the network.” Ans. 18; see also Ans. 6–7 (citing 3GPP, pp. 9 and 43–57, §§ 4.2.2.1, 11.4, and 11.5). The Examiner further finds that with the addition of short message service of Sanders, the combination of 3GPP and Sanders teaches or suggests, “the VGCS uplink channel should be exclusively held for voice and short message communications, thus avoiding collisions and interference on the uplink channels.” Ans. 18 (emphasis added). That is, the Examiner finds that it would have been obvious to an artisan of ordinary skill that the uplink channel of 3GPP should be held until the transmission of data being sent is completed, regardless of whether the data is voice data, short message data (as taught by Sanders), or both. Appellants’ arguments do not persuasively show error in the Examiner’s findings. App. Br. 8–9. Therefore, we agree with the Examiner that the combination of Sanders and 3GPP teaches or suggests “wherein if the talker is sending the SM and during the sending the talker intends to end his speaking, a Mobile Station (MS) will hold uplink until the SM is sent completely to the network,” as recited in claim 8. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 8, and of claim 16, which Appellants do not argue separately. App. Br. 12. Appeal 2011-006163 Application 10/579,321 8 DECISION We affirm the Examiner’s decision to reject claims 1–6, 8–11, and 13–16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED kis Copy with citationCopy as parenthetical citation