Ex Parte Lee et al

Patent Trial and Appeal BoardOct 31, 2012

11246241 (P.T.A.B. Oct. 31, 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. 11/246,241 10/11/2005 Hyun Jeong Lee 49789 5229 1609 7590 11/01/2012 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER RENNER, BRANDON M ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 11/01/2012 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 HYUN JEONG LEE, JOON SEO LEE, and SANG SOO CHAI Appeal 2010-005388 Application 11/246,241 Technology Center 2400 ____________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-4 and 6-22, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ Invention Appellants’ invention relates to a system and method for providing a Appeal 2010-005388 Application 11/246,241 2 tone/announcement over a wireless network. More particularly, the present invention relates to a system and method for providing a multimedia tone (for example, a Ring Back Tone (RBT)) and a multimedia announcement for a video phone service based on H.324M in a circuit switched wireless network. (Spec. 1, ¶ [002].)1 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method for providing a tone/announcement over a circuit switched wireless network, the method comprising the steps of: receiving a multimedia tone/announcement request message from a switch which determines whether to transmit the tone/announcement to a first terminal using a circuit switched wireless network; performing an initialization to open a channel between the first terminal and a server for providing a multimedia tone/announcement in response to the multimedia tone/announcement request; storing initialization information of the first terminal in the server for providing the multimedia tone/announcement: providing the first terminal with the multimedia tone/announcement; receiving a multimedia tone/announcement stop request message from the switch; stopping the multimedia tone/announcement in response to the multimedia tone/announcement stop request; and 1 We refer to Appellants’ Specification (“Spec.”), Reply Brief (“Reply Br.”) filed Jan. 12, 2010 and Appeal Brief (“App. Br.”) filed Aug. 6, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed Nov. 13, 2009. Appeal 2010-005388 Application 11/246,241 3 relaying the initialization information between the first terminal and a second terminal using the initialization information of the first terminal stored in advance in the server for providing the multimedia tone/announcement; wherein the stored initialization information comprises at least one of a terminal capability of the first terminal, multiplex information, a multiplex capability, and logical channel information. Rejections on Appeal 1. The Examiner rejects claims 1-3, 8-16, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Cook (U.S. Patent App. Pub. No. 2004/0131048 A1, published Jul. 8, 2004) and Virtanen (U.S. Patent App. Pub. No. 2004/0048612 A1, published Mar. 11, 2004). 2. The Examiner rejects claims 4, 6, 7, and 17-20 under 35 U.S.C. § 103(a) as being unpatentable over Cook, Virtanen, and Jabri (U.S. Patent App. Pub. No 2004/0174817 A1, published Sep. 9, 2004). ISSUE Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, we have determined that the following issue is dispositive in this appeal: Under § 103, did the Examiner err in finding that the combination of Cook and Virtanen collectively would have taught or suggested “receiving a multimedia tone/announcement request message from a switch which determines whether to transmit the tone/announcement to a first terminal using a circuit switched wireless network,” (emphasis added) within the meaning of independent claim 1 and the commensurate limitation recited in independent claim 11? Appeal 2010-005388 Application 11/246,241 4 ANALYSIS Claims 1-3, 8-16, 21 and 22 Appellants contend, inter alia, that Cook does not describe receiving a multimedia tone/announcement request message from a switch. (App. Br. 5.) In particular, Appellants contend: Cook describes that a caller places a call to a TDM PBX, which provides a call setup request to a router. See Cook at [0019]. The router provides a call setup request to a controller, which “respond[s] to the received call setup request by providing a signal and/or message containing a call setup request confirmation (CSRC) to the router.” See Cook at [0021]. Thus, in Cook, the controller sends the call setup request confirmation to the caller.” (App. Br. 5.) The Examiner contends that Cook’s teachings are directed towards a caller initiating a setup request which is propagated through the network via a switch/router to a controller. The controller returns the request through the network which results in the caller (first terminal) perceiving an audible indication or ringing tone Paragraph 14. (Ans. 18-19.) We disagree for essentially the same reasons argued by Appellants. (App. Br. 5-6.) As noted by Appellants (App. Br. 5), the Examiner mapped the claimed “server” to the “controller” disclosed in Cook. (Ans. 4.) Therefore, we agree with Appellants that Cook does not teach or suggest receiving a multimedia tone/announcement request message from a switch, as required by independent claims 1 and 11 because according to Cook, the controller (server) sends the call setup request confirmation to the caller (first terminal). (App. Br. 6.) Appeal 2010-005388 Application 11/246,241 5 Based on this record, Appellants have shown the Examiner erred in rejecting claims 1 and 11. Accordingly, we reverse the Examiner’s rejection of claims 1 and 11 and dependent claims 2, 3, 8-10, 12-16, 21 and 22 which depend on and stand with their respective base claims. Claims 4, 6, 7, 17-20 We do not find, nor has the Examiner established, that Jabri cures the deficiencies of Cook and Virtanen discussed supra. Accordingly, we reverse the Examiner’s rejection of dependent claims 4, 6, 7, and 17-20 for the same reasons discussed supra. CONCLUSION OF LAW Appellants have shown that the Examiner erred in rejecting claims 1-4 and 6-22 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejection of claims 1-4 and 6-22 under 35 U.S.C. § 103(a). REVERSED peb