Ex Parte Whitley et alDownload PDFPatent Trial and Appeal BoardOct 31, 201211153266 (P.T.A.B. Oct. 31, 2012) Copy Citation 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. 11/153,266 06/15/2005 Noel Whitley 14528.00145 9362 16378 7590 11/01/2012 Broadcom/BHGL P.O. Box 10395 Chicago, IL 60610 EXAMINER LEE, JUSTIN YE ART UNIT PAPER NUMBER 2644 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 NOEL WHITLEY and JEYHAN KARAOGUZ ____________________ Appeal 2011-012526 Application 11/153,266 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012526 Application 11/153,266 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-22 and 30-52 (App. Br. 2). Claims 23-29 have been canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. A. INVENTION Appellants’ invention is directed to a gateway having enhanced caller ID information that not only transmits identifier information such as caller identifier (ID) information, but also information items from previous communication sessions retrieved from a storage unit within the gateway using the identifier information (Abstract). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A system supporting collection of enhanced caller identification (10) information, the system comprising: a gateway communicatively coupled to a broadband network and at least one wireless interface, the gateway capable of selectively communicating multimedia information among the at least one wireless interface and the broadband network, and of communicating with a plurality of access devices via the at least one wireless interface; the gateway capable of receiving information identifying at least one party of a first session of user to user communication of multimedia information; the gateway capable of analyzing the multimedia information of the first session of user to user communication of multimedia information, to identify information items having at least one predetermined type; Appeal 2011-012526 Application 11/153,266 3 the gateway capable of automatically storing the identified information items in association with the information identifying the at least one party of the first session of user to user communication of multimedia information; the gateway capable of accessing the stored information items associated with information identifying at least one party of a second session of user to user communication of multimedia information; and the gateway capable of delivering the accessed information items to a user participating in the second session via at least one of: the broadband network and the at least one wireless interface. C. REJECTIONS1 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mun U.S. Pat. Pub. 2003/0022659 A1 Jan. 30, 2003 Brisebois U.S. Pat. 6,853,711 B2 Feb. 8, 2005 Trossen U.S. Pat. Pub. 2005/0198525 A1 Sep. 8, 2005 Claims 1-3, 8, 11, and 45-48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mun in view of Trossen and Brisebois. Claims 12-15, 22, 30-33, 40-44, and 49-52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mun in view of Brisebois. Claims 20 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mun in view of Trossen2. 1 Examiner has withdrawn the rejection of claims 1, 12, and 30 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 2 The Examiner’s Non-final rejection (dated July 6, 2009) includes the rejection of claims 4-7, 9, 16-21, and 34-39 (Non Final Rej. 10-12). The Examiner fails to cite or withdraw these rejections in either the Final Appeal 2011-012526 Application 11/153,266 4 Claims 4-7, 16-19, and 34-37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mun in view of Trossen and Dunk3. Claims 9, 21, and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mun in view of Trossen and Sjodin4. II. ISSUE The dispositive issue before us is whether the Examiner has erred in determining that the combination of Mun, Trossen, and Brisebois teaches or would have suggested “the gateway capable of analyzing the multimedia information of the first session of user to user communication of multimedia information, to identify information items having at least one predetermined type,” “the gateway capable of automatically storing the identified information items in association with the information identifying the at least one party of the first session of user to user communication of multimedia information,” and “the gateway capable of accessing the stored information items associated with information identifying at least one party of a second session of user to user communication of multimedia information” (claim 1, emphasis added). Rejection or the Answer. Therefore, these rejections are still pending, even though the Examiner fails to correct the Appellants’ stated grounds of rejection on Appeal (Ans. 4; App. Br. 6). 3 Id. 4 Id. Appeal 2011-012526 Application 11/153,266 5 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Mun 1. Mun discloses a system and method for providing picture caller ID; wherein, during a call attempt of the first Mobile Station (MS), the first Base Station (BS) coupled to the MS sends a SETUP message to a first Mobile Switching Center (MSC) including Caller ID (CID) data (Abstract; ¶ [0031]). 2. In response to the SETUP message, the first MSC transmits a Picture Request message to a first Visitor Location Register (VLR) requesting the Picture Caller Identification (PCID) of the first MS (id.). 3. When the PCID has been previously registered by the MS, the first VLR sends the PCID to the first MSC and the first MSC sends the PCID to the second MSC which verifies whether the second MS has subscribed to the PCID service (id.). When verified, the second VLR transmits an INFO Response message to the second MSC and, in response, the second MSC sends both the CID and the PCID to the second MS (id.). 4. The MCS 230 includes a PCID storage (location register 232) for storing the PCID of each MS and controls signal transmission and reception between the first and second MS 210 and 250 (Fig. 7; ¶ [0035]). Brisebois 5. Brisebois discloses enhanced caller ID; wherein, caller ID information is accompanied by context information which indicates whether the call is a return call or the call is a conference call including who is already connected (col. 3, ll. 13-28). Appeal 2011-012526 Application 11/153,266 6 IV. ANALYSIS Claims 1-3, 8, 11, and 45-48 Appellants contend that “Mun does not … make any mention of a session of user to user communication, in general, nor does it make any mention of multimedia information of such a session of user to user communication, in particular” and, therefore, Mun “does not describe, teach, or suggest ‘analyzing’ or ‘automatically storing’ [the media information]” (App. Br. 13-14). Appellants argue that since “‘caller ID’ [in Mun] takes place before a session of user to user communication is established… the teachings of Mun related to providing ‘caller ID’ cannot teach, suggest, or disclose a ‘session of user to user communication of multimedia information,’ or the first and second ‘session[s] of user to user communication of multimedia information’” (App. Br. 21). Appellants finally contend that “Brisebois clearly discloses that ‘context information’ is used before a call is established;” therefore, Brisebois does not “disclose a ‘session of user to user communication of multimedia information’ or the first and second ‘session[s] of user to user communication of multimedia information’” (App. Br. 23). However, the Examiner finds that “Mun clearly teaches user to user communication” since “user/MS1 calls user/MS2” (Ans. 14). The Examiner finds further that “Brisebois teaches context information (same as PCID) is transmitted from calling party (MS1) to (MS2) when making a call” (Ans. 17). The Examiner notes that “Mun teaches the MSC/VLR determines (the claimed analyzing) the received media is a PCID” and “the PCID is stored (the claimed automatically storing) associated with the caller’s CID” (Ans. 14). Appeal 2011-012526 Application 11/153,266 7 We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 1 does not place any limitation on what “user to user communication of multimedia information” means, includes, or represents. We find multimedia information to comprise data, and thus we give “user to user communication of multimedia information” its broadest reasonable interpretation as any data communication between two users, as consistent with the Specification and claim 1. Furthermore, we note that claim 1 merely requires a gateway that is “capable” of analyzing, storing, accessing, and delivering information. That is, claim 1 merely requires a gateway that has an ability to be programed to analyze, store, access and deliver information. Thus, though Appellants argue that Mun “does not describe, teach, or suggest ‘analyzing’ or ‘automatically storing’ [the media information]” (App. Br. 13-14) , claim 1 does not positively recite such “analyzing” and “storing” steps, but rather only requires a “gateway capable of analyzing… storing… accessing … and … delivering” (claim 1, emphasis added). Mun discloses a system and method for providing enhanced caller ID, including a picture caller ID; wherein, during a call attempt of the first MS, the first BS sends a SETUP message to a first MSC that includes CID data (FF 1). In response to the SETUP message, the first MSC transmits a Picture Request message to a first VLR which sends the PCID to the first MSC that forwards this PCID to the second MSC which verifies whether the second MS has subscribed to the PCID service (FF 2 and 3). When verified, the second MSC sends both the CID and the PCID to the second MS (FF 3). Appeal 2011-012526 Application 11/153,266 8 We find that the call attempt of the first MS to the second MS represents the first session of user to user communication of multimedia information. We find further that the processing by the MSC of the SETUP message containing the CID to request the PCID be sent by the VLR comprises an analysis of the SETUP message. That is, we find that Mun’s MSC comprises a gateway that is capable of “analyzing the multimedia information of the first session of user to user communication of multimedia information” to “identify information items having at least one predetermined type” (claim 1), such as CID or PCID. Mun also discloses an embodiment that includes an MSC having a PCID storage unit for storing the PCID for each MS; wherein, the MSC controls signal transmission during a MS to MS communication session (FF 4). We find that the MSC is capable of storing information associated with the CID of at least one MS. In particular, we find that Mun’s MSC comprises a gateway that is capable of “automatically storing the identified information items in association with the information identifying the at least one party of the first session of user to user communication of multimedia information” (claim 1). In addition, Brisebois discloses a system having enhanced caller ID; wherein, caller ID information is accompanied by context information which indicates whether the call is a return call (FF 5). We find that the return call is a corresponding second session of a first session of user to user communication. More particularly, we find that Brisebois’ system with enhanced caller ID comprises “the gateway capable of accessing the stored information items associated with information identifying at least one party Appeal 2011-012526 Application 11/153,266 9 of a second session of user to user communication of multimedia information” (claim 1). In view of our claim construction above, we find that the combination of Mun and Brisebois at least suggests providing a gateway capable of “analyzing the multimedia information of the first session of user to user communication of multimedia information, to identify information items having at least one predetermined type,” “automatically storing the identified information items in association with the information identifying the at least one party of the first session of user to user communication of multimedia information,” and “accessing the stored information items associated with information identifying at least one party of a second session of user to user communication of multimedia information” as required by claim 1. Accordingly, we find that Appellants have not shown that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Mun in view of Trossen and Brisebois. Further, claims 2, 3, 8, 11, and 45-48 (depending from claim 1) which have not been argued separately, fall with claim 1. Claims 12-15, 22, 30-33, 40, 43, 44, 51, and 52 Appellants argue that independent claims 12 and 30 are patentable over the cited prior art for the same reasons asserted with respect to claim 1 (App. Br. 31). As noted supra, however, we find that Mun and Brisebois at least suggest all the contended features of claim 1. We therefore affirm the Examiner’s rejection of independent claims 12 and 30 having similar claim limitations and claims 13-15, 22, 31-33, 40, 43, 44, 51, and 52 (depending Appeal 2011-012526 Application 11/153,266 10 form claims 12 and 30) under 35 U.S.C. § 103 over Mun in view of Brisebois. Claims 41, 42, 49, and 50 As to claim 41, Appellants contend that “the ‘PCID storage 232’ is not a ‘potential source of multimedia information,’” (App. Br. 32). However, the Examiner finds that “the MSC 250 searches in the PCID storage 232 for a PCID of the caller using CID (where CID is the source that identifies the PCID)” (Ans. 17). Claim 41 does not place any limitation on what “potential sources of multimedia information” means, includes, or represents. We find “multimedia information….” to be just data, and thus, we give “potential sources of multimedia information related to the information identifying at least one party of the first session of communication of multimedia information” its broadest reasonable interpretation as any source for data, as consistent with the Specification and claim 41. As noted supra, Mun discloses that the receiving MSC determines the source of the multimedia information prior to sending both the CID and the PCID of the first MS to the second MS (FF 3). We find that the MSC includes a processor that determines the source of the multimedia information. That is, we find that Mun’s MSC comprises “at least one processor is operable to, at least, search at least one database to identify potential sources of multimedia information related to the information identifying at least one party of the first session of communication of multimedia information” (claim 41). In view of our claim construction above, we find that the combination of Mun and Brisebois at least suggests providing “wherein the at least one Appeal 2011-012526 Application 11/153,266 11 processor is operable to, at least, search at least one database to identify potential sources of multimedia information related to the information identifying at least one party of the first session of communication of multimedia information,” as required by claim 41. Accordingly, we find that Appellants have not shown that the Examiner erred in rejecting claim 41 under 35 U.S.C. § 103(a) over Mun in view of Brisebois. Further, claims 42, 49, and 50 having similar claim language (depending from claims 12 and 30) which have not been argued separately, fall with claim 41. Claims 4-7, 9, 16-21, and 34-39 Although the Examiner failed to recite the rejection for claims 4-7, 9, 16-21, and 34-39 in the Final Rejection, we note that the Examiner did set out a prima facie case for the rejection of claims 20 and 38 under 35 U.S.C. § 103 over Mun in view of Trossen, claims 4-7, 16-19, and 34-37 under 35 U.S.C. § 103 over Mun in view of Trossen and Dunk, and claims 9, 21, and 39 under 35 U.S.C. § 103 over Mun in view of Trossen and Sjodin in the non-final rejection and did not withdraw these rejections in the Final Rejection (Non Final Rej. 10-12; Final Rej. 1). We note however, that Appellants failed to show error. Therefore, we sustain the Examiners rejection of claims 4-7, 9, 16-21, and 34-39. Appeal 2011-012526 Application 11/153,266 12 V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-3, 8, 11-15, 22, 30-33, and 40- 52 under 35 U.S.C. § 103(a) is affirmed, while the Examiner’s rejection of claims 4-7, 9, 16-21, and 34-39 under 35 U.S.C. § 103(a) is reversed. 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). AFFIRMED-IN-PART tkl Copy with citationCopy as parenthetical citation