Ex Parte Butterworth

Patent Trial and Appeal BoardSep 25, 2012

09858174 (P.T.A.B. Sep. 25, 2012)

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. 09/858,174 05/15/2001 Martyn Ian Butterworth 40369.001 1570 75398 7590 09/26/2012 Musick Peeler & Garrett, LLP One Wilshire Boulevard Suite 2000 Los Angeles, CA 90017 EXAMINER VANDERHORST, MARIA VICTORIA ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 09/26/2012 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 MARTYN IAN BUTTERWORTH ____________ Appeal 2011-005074 Application 09/858,174 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005074 Application 09/858,174 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 4 to 8, and 18 to 25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative: 1. A method for transmitting pre-recorded images using telecom networks, the method comprising the steps of: detecting when a telecommunications apparatus is used by a caller to send a message to a recipient, establishing a connection with a telecommunications apparatus of the recipient, thereafter, displaying a supplementary image at the telecommunications apparatus of the caller in addition to, or to replace, conventional connection messages, if the recipient does not answer during a predetermined time period, then replacing the supplementary image by connection message text, and if, during transmission of the supplementary image to the caller, a connection is established between the caller and the recipient, transmission of the supplementary image is terminated. Appellant appeals the following rejections: 1. Claims 1, 4 to 8, 18, and 21 to 25 under 35 U.S.C. § 102(b) as anticipated by Gregorek (US 5,428,670, iss. Jun. 27, 1995). 2. Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Gregorek in view of Gabbard (US 6,205,432 B1, iss. Mar. 20, 2001). Appeal 2011-005074 Application 09/858,174 3 ANALYSIS Anticipation The Appellant argues that Gregorek does not disclose: “if the recipient does not answer during a predetermined time period, then replacing the supplemental image by connection message text” as required by claim 1. The Examiner relies on column 5, lines 35 to 65 for teaching this subject matter. We find that Gregorek discloses at column 5, lines 35 to 65 that if a second telephone is idle when a calling party has placed a call, the system produces an audible ring back signal or plays a prerecorded announcement to the calling party. If the telephone is busy, the system activates either a busy signal or plays a series of pre-recorded announcements to the calling party for a predetermined period of time while periodically checking to determine if the second telephone is still busy. Gregorek does not disclose that if the call continues to be busy, the recorded announcement is replaced by a connection message. Gregorek only discloses that the system continues to check to see if the second telephone is still busy but does not disclose any replacement of the message if the second telephone continues to be busy for a predetermined time. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1 and claims 4 to 8 dependent thereon. Claim 18 also includes the recitation of a means for responding to the detecting a signal by conveying a supplemental image and if the recipient does not answer during a predetermined time period replacing the Appeal 2011-005074 Application 09/858,174 4 supplementary image by a connection message. We will also not sustain this rejection as it is directed to claim 18 and claims 21 to 25 dependent thereon for the same reasons. Obviousness In this rejection the Examiner relies on Gregorek for teaching the subject matter we found lacking in the anticipation rejection. As such, we will not sustain this rejection of claims 19 and 20 for the same reasons given above for the anticipation rejection. DECISION We REVERSE the Examiner’s § 102(b) and § 103(a) rejections. REVERSED hh