Ex Parte McClendon

Patent Trial and Appeal BoardAug 27, 2014

11177565 (P.T.A.B. Aug. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/177,565 07/08/2005 Ginger McClendon 100773.55416US 6118 57541 7590 08/27/2014 SPRINT NEXTEL CORPORATION 6391 SPRINT PARKWAY MAILSTOP: KSOPHT0101-Z2100 OVERLAND PARK, KS 66251-2100 EXAMINER JAIN, ANKUR ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 08/27/2014 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 GINGER MCCLENDON ____________ Appeal 2012–003825 Application 11/177,565 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner finally rejected claims 1, 4–20, 23–28, 47, and 50–54. Appellant appeals from the final rejection under 35 U.S.C. § 134(a). Claims 2, 3, 21, 22, 29–46, 48, and 49 were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. INVENTION This invention relates “generally to the field of telecommunications, and in particular, to dispatch calling services.” (Spec. ¶ 2). Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012–003825 Application 11/177,565 2 1. A method for dispatch communication comprising the acts of: sending a first dispatch call request from an originating communication device to a dispatch network, wherein the first dispatch call request is configured to be forwarded by the dispatch network, as a second dispatch call request, to a destination communication device; buffering speech received by the originating communication device at least partially before receiving any response to the first dispatch call request regarding the availability of the destination communication device; and providing delivery options for the buffered speech in the event that the destination communication device is unavailable. (Contested limitation emphasized). REJECTION Claims 1, 4–20, 23–28, 47, and 50–54 stand rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Worger (US 2005/0250476 A1, pub. Nov. 10, 2005) and Gogic (US 2006/0003745 A1, pub. Jan. 5, 2006). GROUPING OF CLAIMS Based on Appellant’s arguments, we decide the appeal of claims 20, 23–28, 50, 53, and 54 on the basis of representative claim 20. We address the rejection of independent claims 1 and 11 and the claims that depend thereon separately, infra. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1 1 Appellant filed a Notice of Appeal on May 9, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title Appeal 2012–003825 Application 11/177,565 3 ANALYSIS After reviewing the record on appeal, we agree with Appellant the cited portions of the references fail to teach or suggest the contested temporal limitation of: “buffering speech received by the originating communication device at least partially before receiving any response to the first dispatch call request regarding the availability of the destination communication device,” as recited in independent method claim 1, and in commensurate form in independent method claim 11. (Emphasis added). We agree with Appellant that Worger’s Figure 2 and associated description describes step 115 as providing a response to the first dispatch call request regarding the availability of the destination communication device, which occurs before speech received by the originating communication device is at least partially buffered (i.e., stored) in step 128, within the meaning of the contested “buffering speech” step of claim 1. See App. Br. 9–10. Therefore, we agree with Appellant that Worger does not teach the claimed acts in the temporal order required by the contested language of independent claims 1 and 11. We also agree with Appellant that Gogic (which was not relied on for teaching or suggesting the contested limitation) does not remedy the deficiencies with Worger. (App. Br. 11–12). Accordingly, we reverse the §103 rejection of independent claims 1 and 11 and all claims that depend thereon. Claims 20, 23–28, 50, and 53 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012–003825 Application 11/177,565 4 Unlike claims 1 and 11 addressed supra, we note independent claim 20 is an apparatus claim, which recites the contested limitation in the context of a “wherein” clause: receive delivery options from said wireless communication network for delivery of buffered speech in response to a destination dispatch device not being available, wherein the buffered speech is at least partially buffered prior to receiving any response to the first dispatch call request regarding the availability of the destination communication device. (emphasis added). MPEP §2111.04 guides that claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. (MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012). Following this guidance, we conclude the “wherein” clause functional limitations do not limit the scope of the claim because the contested functional limitations do not further limit the structure of the apparatus of claim 20 (“originating dispatch device”). Moreover, our reviewing court guides the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product Appeal 2012–003825 Application 11/177,565 5 patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: “[A] system claim generally covers what the system is, not what the system does.”2 Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) ((“‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”). This reasoning is applicable here. Because Appellant’s arguments are directed to functional limitations recited in a “wherein” clause which does not further limit the structure of apparatus claim 20, we are not persuaded the Examiner erred. Accordingly, we sustain the Examiner’s § 103 rejection of representative independent claim 20, and of grouped claims 23–28, 50, 53, and 54 (not argued separately) which fall therewith. See Grouping of Claims, supra. 2 Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir. 2014) is a non-precedential opinion of the Court of Appeals for the Federal Circuit. However, we consider the concurring opinion by former Chief Judge Rader as guiding because it cites precedential authority in support. Appeal 2012–003825 Application 11/177,565 6 DECISION We reverse the Examiner's rejection of claims 1, 4–19, 47, 51, and 52 under § 103. We affirm the Examiner's rejection of claims claims 20, 23–28, 50, 53, and 54 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED–IN–PART cam