Ex Parte Brass et al

Patent Trial and Appeal Board

Jan 15, 2014

10579321 (P.T.A.B. Jan. 15, 2014)

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.
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Application 10/579,321

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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.
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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
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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
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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
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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.
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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.
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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