Ex Parte Schaffner

Patent Trial and Appeal BoardMar 28, 2018

14263472 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/263,472 04/28/2014 92269 7590 03/30/2018 Global Intellectual Property Agency, LLC P.O. Box 382 Swedesboro, NJ 08085 FIRST NAMED INVENTOR Keith Schaffner 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. KS320161 4778 EXAMINER KIM, MINJUNG ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 03/30/2018 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): info@globalipa.com notifications@globalipa.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH SCHAFFNER Appeal2017-009357 Application 14/263,472 Technology Center 2600 Before CAROLYN D. THOMAS, ADAM J. PYONIN, and MICHAEL M. BARRY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MICHAEL M. BARRY Opinion Dissenting filed by Administrative Patent Judge CAROLYN D. THOMAS BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a Non-Final Office Action rejecting claims 1-8, which are all the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appeal2017-009357 Application 14/263,472 Introduction Appellant describes the invention as "relat[ing] to cellular telephones adapted for elderly individuals, extremely young children, or emergency situations." Spec. i-f 2. Appellant explains "there is a need in the prior art for a mobile phone that requires zero input from the user whatsoever to make a phone call." Id. i-f 4. The present invention comprises a mobile phone that automatically calls a pre-programmed number once it is opened, without requiring any additional actuation on the part of the user. In order to make a phone call, the user need not read any menus, press any buttons, or make any decision other than opening the phone. Id. i-f 5. Claim 1 is representative: 1 1. A mobile phone, comprising: a housing having a speaker and a microphone; a wireless transceiver adapted to send and receive signals over a wireless cellular network; a storage medium adapted to store a single phone number; wherein said single phone number is programmable; wherein said mobile phone is adapted to call and form a cellular connection only with said single phone number; wherein said mobile phone automatically calls said phone number when said phone is opened, without any additional actuation by a user; wherein said housing lacks any input, except for a power button and a volume button. Br. 16 (Claims App'x) (disputed limitations emphasized). 1 Appellant argues the patentability of all claims based on claim 1. See Br. 9-15. 2 Appeal2017-009357 Application 14/263,472 Rejections and References Claim 7 stands rejected under 35 U.S.C. Â§ l 12(b) as indefinite for failing to particularly point out and distinctly claim the recited subject matter, because "the call received or dialed," as recited, lacks antecedent basis. Non-Final Act. 12. Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Griefith et al. (US 2006/0135212 Al; June 22, 2006) and Boubelik (US 5,365,570; Nov. 15, 1994). Non-Final Act. 12-18. Claims 3, 4, and 8 stand rejected underÂ§ 103 as unpatentable over Griefith, Boubelik, and Zirul et al. (US 2002/0098874 Al; July 25, 2002). Non-Final Act. 18-20. ANALYSIS The Board "reviews the obviousness rejection[ s] for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon," and treats arguments not made as waived. Ex Parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)); see also 37 C.F.R. Â§ 41.37(c)(l)(iv). As an initial matter, because Appellant does not argue error in the 35 U.S.C. Â§ l 12(b) rejection of claim 7, we summarily affirm that rejection. In the 35 U.S.C. rejection of claim 1, the Examiner finds Griefith "discloses all features of the claimed invention" but "does not appear to disclose the entirety of the claim as a single embodiment." Final Act. 15. The Examiner reasons "it would have been obvious to one of ordinary skill in the art at the time that the invention was made to have incorporated the features of the various embodiments taught by Griefith et al. into a single 3 Appeal2017-009357 Application 14/263,472 embodiment. The motivation for the combination is given by Griefith et al. ([0049])." Id. at 16 (brackets in original). We find the claims obvious in view of Griefith. Griefith discloses embodiments of "a cellular portable radiotelephone for use with a remote central voice-activated dialing system" ("RCV ADS"). Griefith i-f 2. Griefith's phone automatically calls the RCVADS and "when the connection to the [RCVADS] is made, the user recites the number to be dialed and the call is made." Id. i-f 4. A "flip phone" embodiment of Griefith automatically calls the RCVADS when a user flips the cover of the phone open. Id. i-fi-147- 48, Figs. 7-8, Claim 11. Appellant argues "Griefith does not in fact teach a mobile phone adapted to call and form a cellular connection only with a single phone number that has been stored on a storage medium therein, as is presently claimed." Br. 9 (citing Griefith i-f 22). Instead, Appellant contends Griefith teaches that when connected to the central voice- acti vate dialing system, the system subsequently connects the mobile phone to a spoken telephone number that has been recited to the central voice-activate dialing system by a caller. See Griefith i-fi-14--5, 24--25, claims 1, 11, 13, 19, 20, 21. Thus, the cellular phone in Griefith forms two cellular connections with two distinct numbers, rather than only one connection with the electronically stored telephone number as does the mobile phone of the Appellant. Br. 10. This argument is unpersuasive. Claim 1 recites, in relevant part, "wherein said mobile phone is adapted to call and form a cellular connection only with said single phone number." While we agree with Appellant that Griefith's system subsequently connects the mobile phone to a spoken, second telephone number, we disagree that Griefith's mobile phone 4 Appeal2017-009357 Application 14/263,472 connection is outside the scope of the claim. To the contrary, we agree with the Examiner that the mobile phone in Griefith satisfies the recited requirements to call and form a cellular connection "only" with a single number because the mobile phone is adapted to call and form a cellular connection only with the RCV ADS. See Ans. 3--4. As the Examiner finds, after Griefith's mobile phone has established its cellular connection for its call to the RCV ADS, the RCV ADS places a second call and then connects the mobile phone to second callee in one of two ways. Ans. 4; Griefith i-f 42. In either case, it is the RCV ADS (i.e., not the mobile phone) that places the second call. In either scenario, the cellular connection established to connect to the RCV ADS remains in place as the only connection formed by the mobile phone-there is "[a]t all times, a single cellular connection." Ans. 4. In the first scenario, the RCVADS maintains its connection to the second call, i.e., it acts as a bridge to connect the second call to the first call. Id. In this case, the terminus of the first call is the RCV ADS and the terminus of the second call is the second callee. In the second scenario, the RCV ADS invokes a call redirection function of the telecommunications infrastructure to connect the mobile phone to the second call. Id. In this case, after the RCV ADS initiates the second call, the infrastructure reroutes the terminus of the mobile phone's initial call from the RCV ADS to the second callee, taking the RCV ADS "out of the loop" and resulting in a single call connection between the mobile phone and the second callee. This redirection does not affect the mobile phone's cellular connection to the cell tower established when the mobile phone called the RCVADS. See Spec. 26 ("the cell phone remains in contact with a cell tower at all times"). 5 Appeal2017-009357 Application 14/263,472 Thus, in both scenarios, the RCV ADS makes the second call----the mobile phone is not adapted to call the second number. In both scenarios, the cellular connection established between the mobile phone and the cell tower when the mobile phone called the RCV ADS remains in place-the mobile phone is not adapted to form a new cellular connection for the call to the second number by the RCVADS. 2 Accordingly, Appellant does not persuade us of Examiner error in the finding that Griefith teaches "wherein said mobile phone is adapted to call and form a cellular connection only with said single phone number," as recited. Separately, we note the claim term "only" is placed between the "call and form" and the "with said single phone number" terms. We find one of ordinary skill, in light of the Specification, would understand the disputed limitation to reasonably be taught or suggested by the phone call made by the mobile phone of Griefith, which is only with the RCV ADS phone number. See Griefith Abstract; Spec. i-fi-124, 26 ("the present simplified mobile phone connects cell phone users together via a cellular network in 2 Regarding the dissent's opinion that"[ c ]ontrary to the claimed invention, in Griefith, the user must recite the additional phone number to be called by the RCV ADS," we note claim recites limitations for a mobile phone. The activities performed by a caller speaking to the RCV ADS and the RCV ADS causing activities to take place within the network infrastructure cause no effect on how Griefith's mobile phone, as recited by claim 1, "is adapted to call and form a cellular connection only said single phone number" of the RCVADS. Consistent with Appellant's Specification, the only call placed (and connection formed) by the mobile phone of Griefith requires "zero input from the user" (Spec. ,-r 4). Vis-a-vis claim 1, connecting to a second call from the RCV ADS in Griefith is no different from forwarding a call from Appellant's preferred embodiment to a second number-in both cases the second call is an "extra element" that is immaterial to performance of the recited claim requirements. 6 Appeal2017-009357 Application 14/263,472 precisely the same manner as conventional cell phones connect users together."); see also the ordinary meaning of "with" ("a function word to indicate a participant in an action, transaction, or arrangement" (www.merriam-webster.com/dictionary/with (last accessed Mar. 20, 2018))). Appellant also argues the Examiner errs in finding Griefith teaches or suggests "wherein said single phone number is programmable." Br. 11-12. This is also unpersuasive. The Examiner finds it is inherent that a mobile phone that automatically dials a previously stored phone number is programmable, as recited, because it is necessary at some point to program the stored number into the mobile phone. See Ans. 5. Appellant does not challenge this inherency finding. Regardless of the inherency finding, we agree with the Examiner that Griefith independently teaches "said single phone number is programmable" by disclosing (a) its portable phone is "programmed" to automatically dial the number of the remote voice- activated dialing system and (b) in alternative embodiments, a programmable "turbo dial" button is programmable to call a single number dedicated to that button (Ans. 5---6 (citing Griefith i-fi-19, 22, 34)). Appellant further argues the Examiner errs in combining the teachings of Griefith and Boubelik because the proposed combination would change the principle of operation of Griefith. Br. 12-14. We find this argument unpersuasive of reversible error because, as discussed above, Appellant does not persuade us the Examiner errs in determining Griefith alone renders claim 1 obvious. See, e.g., In re Kronig, 539 F.2d 1300, 1302---03 (CCPA 7 Appeal2017-009357 Application 14/263,472 197 6) (explaining the Board may rely upon less than all cited references in affirming an obviousness rejection). 3 Accordingly, we sustain the Examiner's 35 U.S.C. Â§ 103 rejection of claim 1. In doing so we adopt as our own the Examiner's findings and reasons as set forth in the Final Rejection and in the Answer, as consistent with our discussion above. We also, accordingly, sustain the 35 U.S.C. Â§ 103 rejections of dependent claims 2-8, for which Appellant offers no arguments separate from claim 1. DECISION For the above reasons, we affirm the 35 U.S.C. Â§ 112(b) rejection of claim 7 and theÂ§ 103 rejections of claims 1-8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 3 Regarding the dissent's opinion that the rejection does not use Griefith alone as a basis for rejecting claim 1, we note that after the rejection heading which states the rejection of claims 1, 2, and 5-7 are over Griefith "in view of' Boubelik, the Examiner discusses Griefith alone. The Examiner finds Griefith alone "discloses all the features of' claim 1, but not as a single embodiment. Final Act 15 (emphasis added). The Examiner concludes that combining features from Griefith's multiple embodiments into a single embodiment renders claim 1 obvious. Id. at 16. Subsequent findings and conclusions related to Boubelik do not negate the findings and conclusions related to Griffith alone. Examiners routinely buttress rejections. The Examiner's observation that Griefith "does not appear to explicitly disclose" (id. (emphasis added)) the "only" limitation is consistent with the previous findings and conclusion that Griefith alone renders claim 1 obvious. 8 Appeal2017-009357 Application 14/263,472 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH SCHAFFNER Appeal2017-009357 Application 14/263 ,4 72 Technology Center 2600 Before CAROLYN D. THOMAS, ADAM J. PYONIN, and MICHAEL M. BARRY, Administrative Patent Judges. THOMAS, Administrative Patent Judge, Dissenting DISSENTING OPINION I respectfully dissent from the Majority's decision to affirm the Examiner's rejection of claims 1-8 under 35 U.S.C. Â§ 103(a). Specifically, I disagree both with (1) the Majority's interpretation that the Examiner is using Griefith alone to reject the claims; and (2) the Majority's interpretation that Griefith teaches the claimed wherein said mobile phone is adapted to call and form a cellular connection only with said single phone number (see claim 1) (emphasis added). Regarding (1 ), in the Non-Final rejection, the Examiner explicitly states that: "Claims 1, 2, and 5-7 [are] rejected under pre-AIA 35 U.S.C. [Â§] 103 as being unpatentable over US 20060135212 Al to Griefith; Gregory Clyde et al. in view of US 5365570 A to Boubelik; Mark J." (Non- Final Act. 12) (emphasis added), i.e., relying on the combination of Griefith 1 Appeal2017-009357 Application 14/263,472 and Boubelik to reject the claims. The Examiner goes on to present his/her findings related to the limitations in claim 1 (id. at 13-16). Specifically, the Examiner finds that Griefith teaches wherein said mobile phone is adapted to call and form a cellular connection with said phone number (id. at 13, citing Griefith i-f 22). Notably, the Examiner purposely omits the claimed term "only," i.e., the recitation regarding "a cellular connection only with said single phone number." To make up for this omission in Griefith, the Examiner further finds: Griefith et al. does not appear to explicitly disclose said mobile phone is adapted to form a cellular connection only with said phone number. However, attention is directed to Boubelik which teaches said limitation. Boubelik discloses said mobile phone is adapted to call and form a cellular connection only with said phone number (Boubelik Col. 2. Lines 50-53: It will be appreciated that phone 10 is a dedicated emergency cellular phone apparatus, the user being unable to utilized the phone for other than communication with the 911 station). (Id. at 16). In the Answer, the Examiner finds that "what Griefith et al. disclose is a call forwarding system ..... There are not two simultaneous cellular connections, only one that is redirected" (Ans. 3), and "[a]t all times, a single cellular connection is formed" (id. at 4). The Examiner says nothing about Griefith's call being only to a single phone number, only emphasizing no two simultaneous cellular connections, a limitation not found in the claims. The Examiner adds that "Boubelik discloses 'said mobile phone is adapted to call and form a cellular connection only with said phone number"' (id., citing Boubelik col. 2, 11. 50-53). 2 Appeal2017-009357 Application 14/263,472 I find that the Examiner is clearly relying on the combined teachings of Griefith and Boubelik to teach or suggest the argued limitation: wherein said mobile phone is adapted to call and form a cellular connection only with said single phone number. Although I agree with the Majority that the Examiner states: Although Griefith et al. discloses all the features of the claimed invention, Griefith et al. does not appear to disclose the entirety of the claim as a single embodiment. ... it would have been obvious to one of ordinary skill in the art ... to have incorporated the features of the various embodiments taught by Griefith et al. into a single embodiment. (Non-Final Act. 15-16), I find that this declaration by the Examiner cannot be viewed as Griefith alone teaches all the features of the claimed invention because the Majority has overlooked that the Examiner purposely omitted a feature from its findings, i.e., the claimed term "only," i.e., the recitation regarding "only with said single phone number," and explicitly states that Boubelik teaches the only to a single phone number limitation (see Final Act. 16 and Ans. 4). In other words, the above-noted Examiner's statement conflicts with the Examiner's actual fact findings. An Examiner cannot entirely ignore any limitation in a claim while determining whether the subject matter of the claim would have been obvious. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Specifically, without the identification of any disclosure in Griefith of Griefith's apparatus having the capability of being used in the way recited in Appellant's claim 1, I cannot agree with the Majority/Examiner that Griefith alone forms the basis of a proper rejection of claim 1 or its dependent claims. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (analyzing functional language as an additional limitation to an apparatus claim). 3 Appeal2017-009357 Application 14/263,472 I therefore, disagree with the Majority's determination that the Examiner is relying on Griefith alone to teach or suggest Claim 1. Regarding (2), the Majority agrees with the Examiner's finding that in Griefith "[a ]t all times, a single cellular connection" is established (see Decision 5) and then elaborates that the "redirection [of the initial call] does not affect the mobile phone's cellular connection to the cell tower established when the mobile phone called the RCVADS" (id.). I find that even if this is true, i.e., "remains in contact with a cell tower at all times" (id.), claim 1 requires a cellular connection only with said single phone number, not only with a single cell tower. As written, I find that claim 1 simply states "a cellular connection" which reads on either a direct connection or an indirect connection, e.g., can form a new indirect connection. On the other hand, Claim 1 requires that a connection, direct or indirect, be only with the [stored] single phone number. Thus, I interpret claim 1 to require a cellular connection only with the single phone number - stored in the storage medium. I agree with the Majority that Griefith's mobile phone makes a single call to the RCVADS and that it is this call that gets redirected to another phone number. However, the sole purpose of this single call to the RCV ADS is to initiate Griefith's mobile phone being connected to other phone numbers. The fact that Griefith's mobile phone is connected to the RCVADS first, does not take away from the fact that Griefith's mobile phone is then subsequently connected to a second number. Therefore, I disagree that Griefith's mobile phone forms a cellular connection only with the stored single phone number, i.e., only forms a connection with the phone number to the RCV ADS and no other number. 4 Appeal2017-009357 Application 14/263,472 At best, Griefith forms its' first connection with the RCVADS, but this is not the only cellular connection made by Griefith's mobile phone. I believe that one of ordinary skill in the art would recognize that "a cellular connection" is formed when the caller is connected to the desired phone number. Griefith's mobile phone is clearly connected to a second phone number, via this single call initiated by the mobile phone. The Majority, and the Examiner, has even admitted that in Griefith the end result is "a single call connection between the mobile phone and the second callee" (see Decision 5; see also Ans. 4). In other words, the mobile phone in Griefith is connected to a second phone number not stored in the mobile phone, albeit through redirection/call forwarding (see Griefith i-f 4). As noted supra, the main feature/point of Griefith is to create a cellular connection between the mobile phone and different phone numbers voice- recited by the user, not a cellular connection to only the stored phone number for the RCV ADS. I interpret the term "only" in claim 1 to require that the mobile phone be adapted to call and form a cellular connection only with said single phone number at any and all times, not just sometimes. I do not think claim 1 reads on limited moments in time, but rather requires forming a cellular connection only with the stored single number - at all times. I believe my interpretation is consistent with Appellant's Specification, i.e. "zero input from the user" and "the user need not read any menus, press any buttons, or make any decision other than opening the phone" (see Appellant's Spec., i-fi-14--5). Contrary to the claimed invention, in Griefith, the user must recite the additional phone number to be called by the RCVADS. The purpose of Griefith is to connect the mobile phone to various phone numbers, not a single number. 5 Appeal2017-009357 Application 14/263,472 In any case, I believe the Examiner was specifically relying on Boubelik to cure this deficiency of Griefith (see Non-Final Act. 15-16 and Ans. 4). For example, Boubelik teaches "that phone 10 is a dedicated emergency cellular phone apparatus, the user being unable to utilize the phone for other than communication with the 911 station" (Boubelik, 2:50- 53). Although Boubelik's teachings are strikingly similar to the claimed feature, I believe that Appellant's further argument regarding "the combination of Griefith with Boubelik would change the principle [of] operation of Griefith" (see App. Br. 12-14 (emphasis omitted)) is persuasive. Because the Majority found that the claims were obvious in view of Griefith alone, this additional argument about the combination was not considered by the Majority. In essence, I find that the Majority's decision has changed the thrust of the rejection presented by the Examiner because the Majority's affirmance of the rejection draws from the teachings of Griefith more content/explanation than that which was relied on by the Examiner, i.e., the Examiner pulls in Boubelik to teach or suggest a cellular connection only with said phone number (see Non-Final Act. 16), not Griefith. In summary, I find that "[A ]ppellant[] ha[ s] [not] had fair opportunity to react to the thrust of the rejection" (See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976)) presented by the Majority and also find that Griefith alone fails to teach or suggest the aforementioned limitation. I therefore, respectfully dissent from the Majority Decision affirming the rejection of claims 1-8 under 35 U.S.C. Â§ 103(a). 6