Ex Parte Lai

Patent Trial and Appeal Board

Sep 17, 2014

11677126 (P.T.A.B. Sep. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FREDERICK CHEE-KIONG LAI
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Appeal 2012-001812
Application 11/677,126
Technology Center 2600
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Before ROBERT E. NAPPI, DANIEL N. FISHMAN, and J. JOHN LEE,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 5, and 12 through 17.
We affirm.
INVENTION
The invention is directed to a method for using external audio devices
with a single mobile telephone, where the external audio devices have audio
input functionality and audio output functionality. See Abstract of
Appellant’s Specification. Claim 1 is illustrative of the invention and
reproduced below:
1. A method in a mobile telephone for using external audio
devices, the method comprising:
communicating audio data of a first telephone call involving the
mobile telephone with one or more first external audio devices; and
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communicating audio data of a second telephone call involving
the mobile telephone with one or more second external audio devices,
wherein the first telephone call and the second telephone call
are concurrent for at least a period of time, and
wherein each of the external audio devices has audio input
functionality and audio output functionality.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 5, 12, 13, 15, and 16
under 35 U.S.C. § 103(a) as unpatentable over Frerking (US 2005/0282592
A1, pub. Dec. 22, 2005) and Shi (US 2004/0203674 A1, pub. Oct. 14, 2004).
Answer 5–7.1
The Examiner has rejected claims 14 and 17 under 35 U.S.C. § 103(a)
as unpatentable over Frerking, Shi and Todd (US 2008/0102843 A1, pub.
May 1, 2008). Answer 7.
ISSUES
Appellant’s arguments on pages 13 through 20 of the Appeal Brief
present several arguments directed to the Examiner’s rejections under 35
U.S.C. § 103(a). Appellant argues the Examiner misunderstood the
teachings of Frerking, the Examiner did not identify where the limitations of
claim 1 are taught in the reference, and that neither Frerking nor Shi teaches
an application arranged to manage concurrent telephone calls. Thus,
Appellant’s arguments present us with the following issues:
a) Did the Examiner err in finding Frerking teaches a mobile
telephone comprising a second wireless communication interface

1 Throughout this opinion we refer to the Appeal Brief filed June 7, 2011,
Reply Brief, filed October 30, 2011, and the Examiner’s Answer, mailed on
September 1, 2011.
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through which the telephone is able to communicate with one or
more external audio devices?
b) Did the Examiner err in finding the combination of Frerking and
Shi teaches an application which is arranged to manage concurrent
telephone calls involving the mobile telephone?
c) Did the Examiner err by not identifying where the limitations of
claim 1 are taught in the prior art?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of independent claims 1, 12 and 15.
Appellant’s arguments directed to the first issue assert the Examiner
has misunderstood Frerking’s teachings as Frerking does not teach a mobile
phone comprising a second wireless communication interface; rather, what
the Examiner is referring to as the second wireless interface is an adapter
external to the phone and is not part of the phone. Appeal Br. 13–15. Thus,
Appellant asserts the Examiner has not shown the combination of the
references teaches the second wireless communication interface as recited in
independent claims 12 and 15. Appeal Br. 15–16, 18.
In response, the Examiner finds Frerking teaches the adapter is used
as an intermediary between the telephone and the wireless device and thus
meets the claimed wireless interface. Answer 8. Further, the Examiner
considers the adapter to be part of the telephone. Answer 9. We concur
with the Examiner’s findings. Each of independent claims 12 and 15 recites
a “telephone comprising … a second wireless communication interface”;
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however, the claims do not recite a limitation precluding the interface from
being removable from the phone (such as Frerking’s adapter). As such, we
consider the Examiner’s interpretation of the adapter being connected to the
phone to meet the claimed second wireless interface.
Appellant’s arguments directed to the second issue assert that Shi
relates to the display of information for multiple calls and does not teach a
memory to store an application to control and manage concurrent telephone
calls. Appeal Br. 17–18. Appellant presents similar arguments directed to
claim 15 on page 19 of the Appeal Brief and claim 1 on page 20 of the
Appeal Brief.
The Examiner, citing paragraphs 6, 32, 45, 064, 68, and Figures 3A
through 3F, finds that Shi teaches a memory to store an application to
control and manage concurrent phone calls. Answer 6. In combination with
Frerking the Examiner finds this teaches allowing multiple simultaneous
calls originating from both Bluetooth headsets. Answer 6. We concur.
Each of independent claims 12 and 15 recites a memory to store an
application to manage concurrent telephone calls involving the mobile
telephone. Independent claim 1 recites a limitation directed to a first and
second call being concurrent for a period of time. Shi teaches in paragraph
6:
many communications systems allow a user to maintain
multiple calls concurrently with a single wireless
communication device (e.g. a cellular phone). The multi-call
capability is desirable for many applications. For example … a
three-way or conference call whereby two or possibly more
calls to different phone numbers are concurrently maintained.
Thus, Shi clearly teaches managing concurrent calls. Independent claims 12
and 15 further recite that audio data of a first telephone call is communicated
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with one or more first external audio devices, and audio data of the second
call is communicated to one or more second external audio devices.
Independent claim 1 includes similar limitations directed to communicating
audio of a first call to a first external device and audio of a second call to a
second device. It is important to note that the claims do not preclude the
first audio data from also being communicated to the second external audio
device and the second audio data being communicated to the first external
audio device (i.e., the scope of the claims encompasses both audio devices
receiving audio data from both calls). In combination with Frerking’s
teaching of wirelessly communicating with two external audio devices (see
Fig. 7, Abstract and para. 11), we find that one skilled in the art would
consider both audio devices to receive the audio from all of the concurrent
calls of the multi-call capability. Thus, we are not persuaded that the
Examiner erred in finding the combined teachings of Frerking and Shi teach
an application that is arranged to manage concurrent telephone calls
involving the mobile telephone.
Appellant’s arguments directed to the third issue merely assert the
Examiner’s discussion of the rejection of claim 1 “refers only to claim
limitations of claims 12 and 15 and is silent as to the claim limitations of
claim 1” and as such the rejection is in error. Appeal Br. 15. We are not
persuaded of error, as the argument is merely a general allegation and does
not identify a limitation of claim 1 not taught by the prior art. We recognize
claim 1 is directed to a method, and the Examiner, in the rejection, identified
the elements which perform the functions in lieu of identifying the method
steps (e.g., identifying the second communication interface which
communicates with external audio devices, in lieu of a step of
communicating with the separate audio devices). Answer 5–6. However,
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we consider the Examiner to have shown how the limitations of claim 1 are
taught by the combined teachings.
Appellant’s arguments directed to the three issues have not persuaded
us of error in the Examiner’s rejection of independent claims 1, 12, and 15.
Accordingly, we sustain the Examiner’s rejection of claims 1 through 5, 12,
13, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Frerking and
Shi.
Appellant has not presented separate arguments directed to the
rejection of claims 14 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Frerking, Shi and Todd. Accordingly, we similarly sustain this rejection.

DECISION
The decision of the Examiner to reject claims 1 through 5, and 12
through 17 is affirmed.

AFFIRMED

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