Ex Parte Moskaluk et al

Patent Trial and Appeal Board

Oct 13, 2016

11755457 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111755,457 0513012007 Edward MOSKAL UK
126568 7590 10/17/2016
Zebra Technologies Corporation
3 Overlook Point
Lincolnshire, IL 60069
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SBL02730 9150
EXAMINER
SMITH, JOSHUA Y
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
10/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@zebra.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD MOSKAL UK and KELLY SCHLUETER
Appeal2015-003498
Application 11/755,457
Technology Center 2400
Before JOSEPH L. DIXON, CATHERINE SHIANG, and
CARLL. SILVERMAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 11/755,457
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a system and method of switching from
multicast to unicast calls. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method, comprising:
multicasting audio data from an initiator to a plurality of
mobile devices over Internet Protocol with a half duplex
multicast communication to allow the same audio data be sent
to the plurality of mobile devices;
receiving the half duplex multicast communication with
the plurality of mobile devices including data identifying the
initiator of the half duplex multicast communication with the
data identifying the initiator being originated from the initiator;
storing the data identifying the initiator of the half duplex
multicast communication in each of the plurality of mobile
devices with the data identifying the initiator being extracted
from the half duplex multicast communication; and
initiating a full duplex communication unicasted between
a first of the plurality of mobile devices and the initiator of the
half duplex multicast communication by selecting the initiator
of the half duplex multicast communication from the received
data identifying the initiator of the half duplex multicast
communication stored in the first mobile device with an action
of a user of the first mobile device acted upon one of the data
displayed on the first mobile device.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang et al.
Ito et al.
Tillet et al.
Maggenti
Erhart et al.
Pacchioli et al.
US 6,603,761 Bl
US 2005/0099946 Al
US 2006/0023649 Al
US 2006/0223459 Al
US 2006/0256734 Al
US 2008/0124697 Al
REJECTIONS
Aug. 5, 2003
May 12, 2005
Feb.2,2006
Oct. 5, 2006
Nov. 16, 2006
May 29, 2008
The Examiner made the following rejections:
Claims 1, 2, 5, and 7-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tillet in view of Maggenti and Pacchioli.
Claims 3, 4, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tillet in view of Maggenti and Pacchioli, and further in
view of Erhart.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tillet in view of Maggenti and Pacchioli, and further in
view of Wang.
Claims 16-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tillet in view of Maggenti and Pacchioli, and further in
view of Ito.
ANALYSIS
With respect to illustrative independent claim 1, Appellants argue:
Although both the user in the pending claims and the user
in Tillet are performing a selection to switch from half-duplex
mode to full duplex mode, the selection process recited in the
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pending claims is quite different from that disclosed in Tillet. In
Tillet, the user selects a communication mode switch from an
input device and the input device sends the switch selection to
processor. The communication mode selection switch of Tillet
is not affiliated with selecting identifying information of an
initiator of a previously received half-duplex multicast
communication neither does the communication mode selection
switch of Tillet identify the initiator of a previously received
half-duplex multicast communication. It is this selection (i.e.,
the selection of the communication mode selection switch from
the input dervice [sic]) that involves an action of the user in
Tillet. Once the processor in Tillet receives the switch selection
signal and determines the mode of the ongoing session, the
processor sends a request to switch from half-duplex (for
example) to full-duplex. Tillet also describes, for example, in
FIG. 9C and paragraphs 0084-0087, how a subscriber unit
accepts a request to participate in a communication session.
(App. Br. 10.) Appellants further argue:
In the pending claims, on the other hand, while a user on
a receiving device is receiving half-duplex communication, the
user may initiate a switch to full-duplex mode by selecting the
initiator of the half-duplex communication from data in the
half-duplex communication stored on the receiving device. The
recitation in the pending claims of "an action of a user of the
first mobile device acted upon one of the data displayed on the
first mobile device" relates to selection of the initiator of the
half-duplex communication from data in the half-duplex
communication stored on the receiving device. Tillet does not
teach or suggest "initiating a full duplex communication
uni casted between a first of the plurality of mobile devices and
the initiator of the half duplex multicast communication by
selecting the initiator of the half duplex multicast
communication from the received data identifYing the initiator
of the half duplex multicast communication stored in the first
mobile device with an action of a user of the first mobile device
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acted upon one of the data displayed on the first mobile
device," as recited in claim 1.
(App. Br. 10-11.)
The Examiner explains the grounds of rejection in the response to
arguments section of the Examiner's Answer and generally identifies that
the Tillet reference does not identify and select the initiator of the
communication half duplex mode. The Examiner repeats portions of the
Tillet reference that relate to the switch from half duplex to full-duplex
modes. While the Examiner identifies that the Tillet reference does not
identify and select the initiator of the communication half duplex mode for
the switch to full-duplex, the Examiner finds that all of the users are similar
subscriber units and one of them would be the initiator. (Ans. 26-32.)
For example, the Examiner further maintains:
User A's action that causes call controller 102 to selectively
transmit REINVITE messages 608 and 610 to subscriber units
122 and 120; which are possible initiators of a half-duplex
communication mode, is substantively the same as selecting the
initiator of the half duplex multicast communication of [ c ]laims
1, 7 and 13.
(Ans. 29 (emphasis added).) The Examiner additionally finds:
each subscriber unit is participating in an ongoing session and
has become aware of the other participating subscriber units
after the ongoing session started, and this awareness includes
awareness of a subscriber unit that initiated the ongoing
session, and this implicitly teaches received data identifying the
initiator of the half duplex multicast communication stored in
the first mobile device of [c]laims 1, 7 and 13. The examiner
notes that the Maggenti reference is presented in the rejection of
[ c] laims 1, 7 and 13 as teaching the step of storing the data
identifying the initiator of the half duplex multicast
communication in each of the plurality of mobile devices of
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[ c] laims 1, 7 and 13, and a person of ordinary skill in the art at
the time of the invention could take the technique of Maggenti
for user identification information messaging and introduce it
into the ongoing session of Tillet to ensure users can accurately
identify who is currently talking among multiple active users.
(Ans. 29-30 (emphasis added).)
Because the Examiner paints with a broad brush in making the
obviousness rejection, we are left to speculate as to the precise details of
how each argued claim limitation is taught or suggested by the Tillet
reference or the combination relied on by the Examiner. We note that the
Board is a reviewing body and not a place of initial examination.
"The review authorized by 35 U.S.C. Section 134 is not a process
whereby the examiner ... invite[ s] the [B]oard to examine the application
and resolve patentability in the first instance." Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999). We decline and will not resort to
speculation, unfounded assumptions, or hindsight reconstruction to make up
for this deficiency in the Examiner's rejection.
The Examiner further attempts to differentiate the express claim
language from Appellants' arguments (Ans. 30-32) and the Examiner then
finds that:
As a result, a user that activates a displayed communication
mode switch selection that selectively involves only the other
participants in an ongoing session, and where the other
participants are possible initiators of the initial condition's half-
duplex communication mode, is substantively the same as
selecting the initiator of the half duplex multicast
communication with an action of a user of the first mobile
device acted upon one of the data displayed of [ c ]laims 1, 7 and
13.
(Ans. 32 (emphasis added).)
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Throughout the Examiner's statement of the grounds of rejection and
the response to arguments section of the Examiner's Answer, the Examiner
stretches the express teachings and suggestions of the Tillet reference. The
Examiner then generally contends that the prior art and the combination is
essentially close enough for a determination of obviousness.
While the Examiner generally addresses the prior art, the Examiner
does not provide a teaching or specific suggestion regarding the method
steps as expressly recited in the language of independent claim 1.
Consequently, we find the Examiner's prior art rejection to be lacking
underlying factual findings and sufficient specificity regarding the
conclusion of obviousness of the express steps recited in the language of
independent claim 1. As a result, we cannot sustain the obviousness
rejection of illustrative independent claim 1. Based on the foregoing, we
find that the Examiner has not properly established factual determinations
and articulated reasoning with a rational underpinning to support the legal
conclusion of obviousness for independent claims 1, 7, and 13, resulting in a
failure to establish a prima facie of obviousness.
Appellants additionally contend that the Examiner has improperly
relied upon hindsight reconstruction in the rejection of independent claim 1.
(App. Br. 13.) We agree with Appellants.
"It is impermissible to use the claimed invention as an instruction
manual or 'template' to piece together the teachings of the prior art so that
the claimed invention is rendered obvious." In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992). While our reviewing courts have never established a
bright-line test for hindsight, in KSR, the U.S. Supreme Court guided that
"[a] factfinder should be aware, of course, of the distortion caused by
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hindsight bias and must be cautious of arguments reliant upon ex post
reasoning." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 421 (2007) (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966)).
We agree with Appellants that the prior art rejection is tainted with the
use of improper hindsight reconstruction. Therefore, we cannot sustain the
Examiner's rejection for this additional reason.
With respect to independent claims 7, 13, and dependent claims 2, 5,
and 8-12, Appellants rely upon the arguments advanced with respect to
illustrative independent claim 1. (App. Br. 14.) The Examiner has not
identified how the base combination remedies the deficiency with respect to
these additional claims, we cannot sustain the rejection ofindependent
claims 7, 13, and dependent claims 2, 5, and 8-12.
With respect to dependent claims 3, 4, 6, and 14--18, Appellants rely
upon the above arguments. (App. Br. 14--15.) Because the Examiner has
not identified how the additional references remedy the noted deficiency
above, we cannot sustain the obviousness rejection of these claims.
CONCLUSION
The Examiner erred in rejecting claims 1-18 based upon obviousness.
DECISION
For the above reasons, we reverse the Examiner's rejections of claims
1-18.
REVERSED
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