Ex Parte Park et al

Patent Trial and Appeal BoardDec 10, 2012

11299466 (P.T.A.B. Dec. 10, 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. 11/299,466 12/12/2005 Sung-Jin Park 678-3881 6859 66547 7590 12/10/2012 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER REGO, DOMINIC E ART UNIT PAPER NUMBER 2647 MAIL DATE DELIVERY MODE 12/10/2012 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 SUNG-JIN PARK, JOON-GOO PARK, and SANG-KYUNG SUNG ________________ Appeal 2010-005827 Application 11/299,466 Technology Center 2600 ________________ Before ERIC S. FRAHM, DAVID M. KOHUT, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of claims 1-14, and enter a new ground of rejection for claim 1. Appeal 2010-005827 Application 11/299,466 2 STATEMENT OF THE CASE 1 Background “The present invention relates to a method and system for controlling a talk time for a [Push-to-Talk over Cellular] PoC user, capable of freely making use of the talk time according to the priority of a talker when the talker obtains a floor without other requesters of the floor during PoC communication.” (Spec. p. 1, ll. 12-14 (“Field of the Invention”)). Exemplary Claim Exemplary independent claim 1 under appeal reads as follows (emphasis added to contested limitations): 1. A method for controlling a talk time for a PoC user, the method comprising the steps of: determining whether a talk time limit of a PoC client that is transferring a talk burst is close at hand; when the talk time limit is close at hand, determining whether a floor requester who makes a request for a floor is in a floor list for storing the floor requester; and when the floor requester is not in the floor list, extending the floor and transferring the talk burst. 1 Throughout this Decision, we refer to the Final Office Action (FOA) mailed Apr. 24, 2009; the Appeal Brief (App. Br.) filed Sep. 24, 2009; the Examiner’s Answer (Ans.) mailed Dec. 18, 2009; the Reply Brief filed Feb. 18, 2010; and the original Specification filed on Dec. 12, 2005. Appeal 2010-005827 Application 11/299,466 3 Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Noel US 2005/0032539 A1 Feb. 10, 2005 Kauppinen US 2005/0260988 A1 Nov. 24, 2005 Rejections on Appeal The Examiner rejected claims 1-14 under 35 U.S.C § 103(a) as being unpatentable over Kauppinen in view of Noel. (Ans. 3). GROUPING OF CLAIMS Based upon the Appellants’ arguments against the rejections (App. Br. 2),2 our authority under 37 C.F.R. §41.37(c)(1)(vii), and the dispositive issue raised due to the similarity of the limitations in each of independent claims 1 and 8, we select independent claim 1 as the representative claim to decide this appeal for all claims on appeal. We have only considered those arguments raised by Appellants in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. 2 Appellants indicated that claims 2-7 stand or fall together with independent claim 1 and that claims 9-14 stand or fall together with independent claim 8. (App. Br. 2). However, we find the same dispositive issue to be present for each of the claims on appeal such that claims 2-14 stand or fall with claim 1. Appeal 2010-005827 Application 11/299,466 4 CONTENTIONS Appellants contend that the Examiner has failed to establish that Kauppinen in combination with Noel renders claims 1-14 unpatentable under 35 U.S.C. § 103(a) (App. Br. 3-9). In particular, Appellants contend that the Examiner erred in relying upon Noel as teaching the two “when” clauses in claim 1, i.e., (1) “when the talk time limit is close at hand, determining whether a floor requester who makes a request for a floor is in a floor list for storing the floor requester; and [(2)] when the floor requester is not in the floor list, extending the floor and transferring the talk burst.” Appellants further contend in this regard that the Examiner erred in his fact finding because Noel instead teaches receiving a list of all participants and allowing participants with high priority to change the queue order, and also teaches a method for a Push-to-Talk (PTT) server that has received a call request message to check whether a mobile device of any call participant is registered in the network. Appellants contend that neither of these facts teach or suggest the claim limitations at issue. (App. Br. 6-7). In addition, Appellants contend that Noel “never determines whether a floor requester is in a floor list for storing the floor requester, as previously argued.” (Reply Br. 3). ISSUE Did the Examiner err in rejecting claims 1-14 as being unpatentable because the cited art does not teach or suggest all the claimed limitations of Appeal 2010-005827 Application 11/299,466 5 claims 1 and 8, in particular, the limitations of “when the talk time limit is close at hand, determining whether a floor requester who makes a request for a floor is in a floor list for storing the floor requester; and when the floor requester is not in the floor list, extending the floor and transferring the talk burst,” as recited in claim 1 and similarly recited in claim 8? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with the Examiner’s findings and reasoning only with respect to the recitation of “when the floor requester is not in the floor list, extending the floor and transferring the talk burst.” We find that Noel does not teach or suggest this limitation as it is recited in independent claims 1 and 8. We are unable to readily ascertain any teaching or suggestion of “extending the floor” in the cited portion of Noel (Noel ¶¶ [0021] – [0023]), or elsewhere in the reference. We agree with Appellants’ arguments in this regard, cited supra, and therefore find that the Examiner erred in the rejection of claims 1-14. However, we do agree with the Examiner’s findings regarding the remaining limitations of claim 1, for example, the Examiner’s finding that the talk time limit being “close at hand” is taught or suggested by Kauppinen, and as similarly recited in claim 8. (Ans. 4, 10). However, we reverse the Examiner’s rejection, pro forma, and apply a new ground of rejection to these claims, discussed infra. Appeal 2010-005827 Application 11/299,466 6 NEW GROUND OF REJECTION We enter a new ground of rejection for claim 1, and leave it to the Examiner to make a further determination regarding the patentability of claims 2-14. The following additional findings of fact are pertinent to the new ground of rejection. ADDITIONAL FINDINGS OF FACT We find that Kauppinen and Noel, either alone or in combination, do not explicitly teach “when the floor requester is not in the floor list, extending the floor and transferring the talk burst,” as recited in independent claim 1. As set forth by the Examiner in the Answer, and as discussed, supra, we find that Kauppinen and Noel teach the remaining limitations of claim 1. We enter a new ground of rejection under 35 U.S.C. § 103(a) for claim 1 as being unpatentable over the combination of Kauppinen and Noel. Although not explicit, we find that Kauppinen Figs. 3 and 4 and related disclosure suggest that, if there is no floor requester in the floor list, the floor will be extended and the talk burst will continue to be transferred. For example, if the user equipment (UE) does not send a release request (Fig. 3, 3-6) for group G1, the current speaker/user will continue to be able to transmit the talk burst until another user in the group requests to transmit. Further to this point, if no other voice streams are present at the same time (Fig. 4, step 4-8), the voice stream will continue to be transmitted to the UE (step 4-9). Appeal 2010-005827 Application 11/299,466 7 Accordingly, we find that the problem acknowledged in Appellants’ Specification in extending the time for transmission was previously solved by shutting down transmission and then re-requesting additional time, resulting in inefficiencies (Spec. 7:4-15). However, we point out that it is well-known in fixed-time communication sessions to extend the time available for transmission if nobody else is in the queue or has requested permission to transmit. Therefore, we find that it would have been obvious to modify the teachings of Kauppinen and Noel by the well-known fixed-time session communication practice of extending the time available to transmit if there is no present contention for the channel so that the method includes “when the floor requester is not in the floor list, extending the floor and transferring the talk burst,” as recited in independent claim 1. CONCLUSIONS (1) We do not sustain the Examiner’s rejection of claims 1-14 under 35 U.S.C. § 103(a). (2) We newly reject claim 1 under 35 U.S.C. § 103(a), as discussed above, and leave it to the Examiner to determine the patentability of claims 2-14. DECISION The Examiner’s rejection of claims 1-14 is reversed. Appeal 2010-005827 Application 11/299,466 8 Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Kauppinen and Noel in view of well-known communication practices, discussed supra. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) msc