Binder, Yehuda

Patent Trials and Appeals Board

Dec 28, 2020

2019003425 (P.T.A.B. Dec. 28, 2020)

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.
12/889,998 09/24/2010 Yehuda Binder BINDER-004-US17 7418
131926 7590 12/28/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
WOO, STELLA L
ART UNIT PAPER NUMBER
2652
MAIL DATE DELIVERY MODE
12/28/2020 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 YEHUDA BINDER

Appeal 2019-003425
Application 12/889,998
Technology Center 2600
____________

Before ADAM J. PYONIN, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 15–32, 34–50, 53–61, 63–95, 98–
103, 105–115, 118–137, and 139–146, constituting all claims pending in the
current application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as May Patents
Ltd. Appeal Br. 2.
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STATEMENT OF THE CASE

Appellant’s invention generally relates to “a method, device and
system for obtaining information from a remote location to an information
device.” Spec. 1. Independent claims 1, 45, and 82, reproduced below, are
representative of the claimed subject matter:
1. A landline telephone set operative for making and
receiving telephone calls over a PSTN (Public Switched
Telephone Network) using a wired connection, the telephone
set being further operative for obtaining, storing and displaying
digital data from a first remote information server via the
Internet over a digital network, the telephone set comprising:
a telephone apparatus operative for making and receiving
telephone calls over the PSTN using the wired connection;
a connector for connecting to the digital network;
a transceiver coupled to said connector for bidirectional
packet-based digital data communication over the digital
network;
a first memory coupled to said transceiver for storing
digital data received by said transceiver;
a display for visually presenting information, said display
being coupled to said first memory for displaying the digital
data stored in said first memory; and
a single enclosure housing said telephone apparatus, said
connector, said transceiver, said first memory and said display,
wherein said telephone set is addressable in the digital network
and is operative for communicating over the Internet via the
digital network with the first remote information server for
receiving digital data from the first remote information server
and for storing and displaying the received digital data.
Appeal Br. 76, Claims App.

45. A telephone set operative for making and receiving
telephone calls, said telephone set being further operative for
obtaining digital data over a WLAN (Wireless Local Area
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Network) via the Internet from a first remote information server
that is identified by a Uniform Resource Locator (URL), and
for displaying the digital data, said telephone set comprising:
a telephone apparatus operative for making and receiving
telephone calls;
a first memory for storing the URL identifying the first
remote information server;
a WLAN antenna for transmitting and receiving digital
data over the air;
a WLAN transceiver coupled to said WLAN antenna for
bidirectional packet-based digital data communication over the
WLAN via said WLAN antenna;
a display component coupled for displaying the digital
data received via said WLAN antenna; and
a single enclosure housing said telephone apparatus, said
WLAN transceiver, said first memory, and said display
component, wherein said telephone set has an Internet address
identifying said telephone set in the Internet, and said telephone
set is further operative for receiving and displaying the digital
data received from the first remote information server.
Id. at 82.

82. A telephone set operative for making and receiving
telephone calls, said telephone set being further operative for
displaying information stored in a unit, said telephone set
comprising:
a telephone apparatus operative for making and receiving
telephone calls;
an adapter for mechanically attaching the unit to the
telephone set, said adapter including a connector for connecting
to the unit when the unit is mechanically attached to said
telephone set using said adapter;
a transceiver coupled to said connector for digital data
communication with the unit;
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a display for visually presenting information, said display
being coupled to said transceiver for displaying information
received from the unit;
a power port for connecting to a power source for
receiving a power signal from the power source;
a power supply connected to said power port for being
powered by the power signal, said power supply coupled to
supply DC power for powering said transceiver and said
display; and
a single enclosure housing said telephone apparatus, said
adapter, said power supply, said power port, said transceiver
and said display, wherein said power supply is coupled to said
connector for DC powering the unit when the unit is attached to
said adapter and connected to said power supply via said
connector.
Id. at 87.

REJECTIONS
Claims 1–10, 15–32, 34–50, 53–61, 63–95, 98–103, 105–115, 118–
137, and 139–146 stand rejected under 35 U.S.C. § 112 ¶ 1, as failing to
comply with the written description requirement.2
Claims 82–85, 88–95, 98, 99, 101–103, and 105 stand rejected under
pre-AIA 35 U.S.C. § 102(e) as being anticipated by Shneidman (US
2006/0038794 A1; published Feb. 23, 2006).3

2 Claims 2, 4, 5, 7–10, 15–30, 32, 42–44, 48–50, 53, 54, 57, 58, 61, 63, 64,
66–78, 80, 81, 83–89, 91–94, 98–103, 105, 107, 109, 110, 112–115, 118–
135, and 137 are listed in the heading of the rejection, but not in the body of
the rejection. We understand these claims to be rejected under 35 U.S.C.
§ 112 ¶ 1 by virtue of their dependence on claims 1, 45, and 82.
3 In the Final Office Action, claim 87 is rejected over 35 U.S.C. § 102(e)
over Shneidman. Final Act. 12. Appellant argues that claim 87 depends
from claim 86, which is rejected under 35 U.S.C. § 103(a) over Shneidman
and Bell ’785. Appeal Br. 42. In the Answer, the Examiner clarifies that
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Claims 1–8, 10, 15–32, 34–36, 39–41, 44, 45, 47–50, 53, 54, 57, 58,
61, 63–78, 81, 87, 106–113, 115, 118–137, 139–141, and 144–146 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Bell et al. (US 2004/0044785 A1; published Mar. 4, 2004)
(“Bell ’785”) and Shneidman.
Claims 9, 46, 55, 56, 59, 60, and 114 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Bell ’785, Shneidman, and Bell
et al. (US 2004/0044723 A1; published Mar. 4, 2004) (“Bell ’723”).
Claims 37, 38, 142, and 143 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Bell ’785, Shneidman, and Lavaud et al.
(US 2004/0057576 A1; published Mar. 26, 2004) (“Lavaud”).
Claims 42 and 43 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Bell ’785, Shneidman, and Yamada et al. (US
2004/0100460 A1; published May 27, 2004) (“Yamada”).
Claims 79 and 80 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bell ’785, Shneidman, and
Ulrich (US 4,803,719; issued Feb. 7, 1989).
Claim 86 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Shneidman and Bell ’785.
Claim 100 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Shneidman and Lavaud.

claim 87 is included in the 35 U.S.C. § 103(a) rejection over Shneidman and
Bell ’785. Ans. 13.
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ANALYSIS

Related Appeals

The current application is related to and has the same Specification as
(1) application 12/358,551, which was the subject of Appeal No. 2016-
000622, where Decision was mailed on February 2, 2017; (2) application
15/253,915, which was the subject of Appeal No. 2019-002199, where
Decision was mailed on August 11, 2020; and (3) application 12/890,888,
which was the subject of Appeal No. 2019-003193, where Decision was
mailed on November 18, 2020 (hereafter “Related Appeals”). There is
substantial overlap in the Examiner’s rejections and corresponding
arguments made by Appellant in the current appeal and in the Related
Appeals. Accordingly, where appropriate, rely on our analysis in those
Decisions rather than repeating the analysis again here. We similarly adopt
as our own the Examiner’s findings and analysis in the Final Action and
Examiner’s Answer for the present case, unless otherwise indicated herein.
35 U.S.C. § 112 ¶ 1 Rejections
Appellant repeats the two general arguments it made in the Related
Appeals. See Appeal No. 2019-002199, pp. 4–5; Appeal No. 2019-003193,
pp. 9–12. First, Appellant argues that the Examiner did not make similar
rejections in previous office actions in different, co-pending applications
having the same priority date and Specification. See Appeal Br. 8–37.
Second, Appellant argues the prior art rejections are inconsistent with the
written description rejections. See id.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
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subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
[T]he test requires an objective inquiry into the four corners of
the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id.; see also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1298 (Fed. Cir. 2014) (“The essence of the written
description requirement is that a patent applicant, as part of the bargain with
the public, must describe his or her invention so that the public will know
what it is and that he or she has truly made the claimed invention.”);
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61, 62 (Jan. 7, 2019).
“[W]hile the description requirement does not demand any particular form
of disclosure, or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad, 598 F.3d at 1352 (citation omitted).
“Adequate written description means that, in the specification, the
applicant must ‘convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the [claimed]
invention.”’ Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991)). “When no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.” Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed.
Cir. 1996)). “In the context of the written description requirement, an
adequate prima facie case must therefore sufficiently explain to the applicant
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what, in the examiner’s view, is missing from the written description.” Id.
The burden then shifts to the applicant to demonstrate where adequate
written description can be found. Id. at 1371.
Because the test for written description in the present case has no
bearing on the Examiner’s handling of different claims in different
applications,4 or on the disclosure in the references cited in the prior art
rejections, we do not find Appellant’s general arguments to be persuasive as
to Examiner error. We now turn to each of Appellant’s more specific
arguments.
“via the Internet over a digital network” and “digital network”–
Claims 1, 3, 6, 31, 106, 108, 111, and 136
The Examiner finds “obtaining, storing, and displaying digital data
from a first remote information server via the Internet over a digital
network,” as recited in independent claims 1 and 106, lacks written
description because the Specification describes that the information device is
addressable in and communicates with the remote information server over
the PSTN network, which is a circuit-switched network, rather than a digital
network. Final Act. 6–7; see also Ans. 3. Similarly, the Examiner finds the
“digital network” recited in claims 3, 6, 31, 106, 108, 111, and 136 is not
supported in the Specification. Id. at 7.
Appellant contends that dial-up connection technologies, such as ITU-
T V.34, V.90, and V.92, disclosed in the Specification, “are known to be
digital networking technologies, which use digital signalling for

4 We note Appellant has not identified, with specificity, the reasons why the
Examiner would be precluded from making a valid rejection herein, merely
based on previous Examiner decisions.
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communicating over the PSTN infrastructure (which was indeed designed
for analog telephone communication).” Appeal Br. 11 (citing Spec. 6:12–
13). Appellant also argues that the Specification “clearly discloses
connection over a telephone wiring using various XDSL (Digital Subscriber
Line) technologies.” Id. (citing Spec. 23:1–25).
The Specification describes:
The communication with the remote site may use the
PSTN, to which the information device is connected, by a dial
up modem or a cellular network, to which the device connected
thereto by a cellular modern. Other telephony connections or
any other medium may also be employed. Connection to a
telephone outlet may either use cable or be cordless. In
addition to narrowband, any broadband connection such as
ADSL or cable modem may be employed. The communication
may be direct point-to-point connection (such as in telephony)
or via the Internet.
Spec. 2:13–19 (emphasis added). The Specification also describes that “[i]n
other embodiments, the Internet is used for communication between the
information device 10 and the information server 32.” Id. at 28:3–4; see
also id. at 23:3–6 (“[I]t will be appreciated that any connection may be used,
. . . [o]ne common telephone-line based broadband connection uses xDSL
(Digital Subscriber Line) technology.”).
Although this Decision elsewhere discusses other similar terms or
combinations that may be lacking sufficient support in the Specification,
here, we agree with Appellant that, on this record, the Examiner does not
adequately explain why the foregoing disclosure does not reasonably convey
that Appellant was in possession of the recited “via the Internet over a digital
network,” as recited in independent claims 1 and 106, and “digital network,”
as recited in dependent claims 3, 6, 31, 108, 111, and 136. Accordingly, we
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are persuaded the Examiner erred.
“a connector for connecting to the digital network” and “a
transceiver . . . for bi-directional packet-based digital data communication”
– Claims 1 and 106

The Examiner finds these claim limitations are not described in the
Specification. Final Act. 7. In particular, the Examiner finds that Figure 16
of the Specification “shows an ADSL modem 161 which uses circuit-based
technology and connects to a circuit-switched telephone network.” Id.
Appellant contends the Examiner “clearly confuses between circuit /
packet switching and digital / analog signalling . . . dial-up and ADSL
technologies use the PSTN infrastructure to carry digital signaling.” Appeal
Br. 23.
The Examiner responds that “it is not the ‘digital data communication’
which is lacking” support. Ans. 4. Rather, the Examiner finds that “ADSL
modems communicate using a protocol based on frequency division
multiplexing over a dial-up telephone network, and [do] not use a packet-
based digital data communication protocol,” as required in the claims. Id.
Appellant does not challenge the Examiner’s reasonable findings in
the Answer, or persuasively address the Examiner’s rejection. Accordingly,
on this record, we are not persuaded the Examiner erred.
“addressable in a digital network” – Claims 1, 31, 106, 108, and 136
The Examiner finds the Specification shows the information device
“is addressable in and communicates over the PSTN network,” not “over the
Internet via the digital network,” as required by the claim language. Final
Act. 7–8.
Appellant contends that the rejection is unclear in that it admits that
the Specification discloses that the information device is “addressable in and
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communicates over the PSTN network,” and that in another, co-pending
application, the Examiner admitted that the Specification discloses
addressability using an IP address in a digital network (Internet). Appeal Br.
25.
In the Answer, the Examiner does not explicitly withdraw the
rejection, but states “[i]t is agreed that the specification sufficiently indicates
Appellant was in possession of the device being ‘addressable in a digital
network’ because it is addressable in a telephone network, which can be
considered as a digital network.” Ans. 5.
Accordingly, we do not sustain the Examiner’s rejection.
“connected unit” – Claims 34–41 and 139–146
The Examiner finds the Specification does not support the recited
“connected unit” in claims 34–41. Final Act. 8. Rather, the Examiner finds
the Specification describes that “the handheld unit itself provides the sole
communication means via its built-in cellular modem, wireless modem or
wired network connection . . . which conflicts with the device transceiver in
parent claim 1.” Id.; see also Ans. 5–6. The Examiner further finds the
Specification “fails to describe the information device receiving information
from or transmitting information to the connected unit” as required by
claims 34–36 and 139–146. Final Act. 8; see also Ans. 6–7.
Appellant contends that “the specification clearly supports using
multiple attachable devices to the information device, and further supports
using multiple communication devices, means, and protocols.” Appeal Br.
27. Appellant also argues that the “specification clearly describes
communication (receiving and transmitting) with cellular telephone . . . and
communication with the PDA . . . and further communication with BOTH.”
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Id. at 28.
We find Appellant’s arguments unpersuasive. Further, we have
extensively addressed Appellant’s arguments and the lack of written
description support for the recited “connected unit” in Related Appeals
2019-002199 and 2019-003193. For the same reasons discussed therein, we
are not persuaded the Examiner erred. See Appeal No. 2019-002199, pp.
15–16; Appeal No. 2019-003193, pp. 19–23.
“WLAN” – Claims 45–47, 55, 59, and 65
The Examiner finds “[Appellant’s] disclosure regarding telephony
communication is generally directed to communications using a dial-up
modem over the PSTN or a cellular modem over a cellular network . . . , not
over a WLAN, using a WLAN antenna and WLAN transceiver, or having an
Internet address identifying the device on the Internet.” Final Act. 8–9.
Appellant contends that the Specification describes connecting to a
server over the Internet via various examples. Appeal Br. 29–30 (citing
Figs. 1, 7, 8a, 12, 16, 17, Spec. 2:14–19, 24:13–29). Appellant also argues
that WLAN examples are also disclosed. Id. at 30 (citing Figs. 8a, 8b, 8c,
Spec. 24:21–28).
We are persuaded by Appellant’s arguments. For example, the
Specification states:
While the invention has been so far described with
respect to modem embedded within the information device 10
which connects directly to the remote server 32, it will be
appreciated that such external connection (either narrow or
broad-band, Local- or Wide area network) may be shared with
other networked appliances over a home network. As known in
the art, in such a configuration a single device, commonly
known as Residential Gateway connects to the external
connection, whereby multiple in-home appliances share this
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external pipe by means of an in-home network. Home
networks may use dedicated wiring commonly known as
‘structured wiring’ and employing Ethernet IEEE802.3
protocols. Other implementations involve wireless RF based
network such as standardized in IEEE802.11x or BlueTooth.
Other alternatives involve using existing wiring structure such
as telephone wiring (e.g. HomePNA technology), powerlines
(e.g. HomePlug) and CATV wiring. Adapting the information
device 10 to support a home network basically requires
substituting the dial-up modem 15 with a modem appropriate
for the home network media, such as Ethernet transceiver for
wired Ethernet network, IEEE802.11x wireless transceiver or
HomePlug compliant transceiver.

Spec. 24:16–31 (emphasis added). In other words, the Specification
explicitly describes adapting the information device (telephone set) with an
IEEE802.11x wireless transceiver. We note that the Specification also
describes that “any . . . type of connection can be used, allowing data
communication session between the information device 10 and the provider
server 32,” including “the Internet, [where] the user connects (through the
PSTN, ISDN or any other means) to an ISP (Internet service Provider) for
connection to the Internet.” Spec. 8:28–9:1. On this record, the Examiner
does not adequately explain why the disclosure does not reasonably convey
that Appellant was in possession of “A telephone set . . . being further
operative for obtaining digital data over a WLAN (Wireless Local Area
Network) via the Internet . . . comprising” a “WLAN antenna,” and a
“WLAN transceiver,” as recited in claim 45. We, therefore, are persuaded
the Examiner erred.
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“spread spectrum modulation” and “license-free radio frequency
bands” – Claims 55, 56, 59, and 60
The Examiner finds the recited “license-free radio frequency band and
spread spectrum modulation” is “described only with regard to cordless
telephone communication at the site of the information device . . . not over a
WLAN between the device and the information server.” Final Act. 9.
Appellant argues the Specification discloses “the communication may
use Digital Spread Spectrum (DSS) scheme.” Appeal Br. 32 (citing Spec.
14:27–29). Appellant also argues “wireless communication . . . is long
known in the art to use spread spectrum techniques . . . . Similarly, ITU-T
v.90 protocol, mentioned in page 6, line 16, involves using spread spectrum
technology.” Id.
Appellant’s arguments are not persuasive. Rather, we agree with the
Examiner that the cited portion of the Specification refers to cordless
telephone communication between a handset and a base set, and not wireless
communication between the claimed telephone set and remote information
server. Ans. 8. Appellant has not persuasively identified where the
Specification describes “license-free radio frequency band” or “spread
spectrum modulation,” as claimed, or provided persuasive argument that the
disclosure in the Specification reasonably conveys possession of “license-
free radio frequency band” or “spread spectrum modulation,” as claimed.
Accordingly, we are not persuaded the Examiner erred.
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“concurrently carry a digital data signal and a DC power signal,
wherein said telephone set further comprises a rechargeable battery . . .” –
Claim 79
The Examiner finds that “the embodiment which uses a rechargeable
battery involves connection with a dial-up telephone line, not over the air via
a WLAN antenna. Power is extracted from the telephone line during an off-
hook condition in order to charge the rechargeable battery.” Final Act. 9
(citing Spec. 15:29–16:8).
Appellant contends “[t]he Action admits support when connected to a
telephone connection. However, this is an example only, and the
specification support[s] any powering by a cable carrying power.” Appeal
Br. 34.
Appellant’s arguments are not persuasive. Appellant does not cite to
any specific disclosure in the Specification that Appellant contends shows
possession of the embodiment claimed. Accordingly, on this record, we are
not persuaded the Examiner erred.
“adapter” – Claim 82
The Examiner finds that the Specification “describes coupling with a
handheld unit . . . in order to use the handheld unit as a communication
means via its cellular modem.” Final Act. 9–10 (citing Spec. 21:16–22:26,
21:24–27, 22:19–22). However, the Examiner finds “[t]here is no
description of data communication between the device and a mechanically
coupled handheld unit.” Id. at 10; see also Ans. 9.
Appellant argues the disclosure is merely an example, and the
Examiner “improperly limit[s] the disclosure to a specific example.” Appeal
Br. 35.
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While it is true that “examples are not necessary to support the
adequacy of a written description,” Falkner v. Inglis, 448 F.3d 1357, 1366
(Fed. Cir. 2006), “the specification itself . . . must demonstrate possession,”
Ariad, 598 F.3d at 1352. Appellant has not provided persuasive argument
challenging the Examiner’s findings, or otherwise provided persuasive
argument that the disclosure reasonably would have conveyed possession of
the claimed “adapter,” as recited in claim 82. Accordingly, on this record,
we are not persuaded the Examiner erred.
“television channels” – Claim 95
The Examiner finds “the disclosure describes a television set 115, not
the information device 10, receiving [television] channels.” Final Act. 10
(citing Spec. 18:15–21, Figs. 11, 17).
Appellant argues the Specification “explicitly teach[es] the integration
of an information device . . . in a television set.” Appeal Br. 36–37 (citing
Spec. 2:6–12, 3:10–13, 17:7–18:23, Fig. 17).
In response, the Examiner states “[i]t is agreed that the specification
sufficiently indicates Appellant was in possession of the device being
physically integrated within a television set.” Ans. 10.
Accordingly, we do not sustain the Examiner’s rejection.
Summary as to 35 U.S.C. § 112 ¶ 1 Rejections
As set forth above, we are persuaded the Examiner erred in the 35
U.S.C. § 112 ¶ 1 rejections as to certain limitations in claims 3, 6, 31, 45–47,
55, 59, 65, 95, 108, 111, and 136. We, therefore, do not sustain the
Examiner’s § 112 ¶ 1 rejection of claims 3, 6, 31, 45–47, 55, 59, 65, 95, 108,
111, and 136. Moreover, as discussed above, although we were not
persuaded of Examiner error as to certain limitations in claims 56, 60, and
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79, we, nonetheless also do not sustain the Examiner’s 35 U.S.C. § 112 ¶ 1
rejections for dependent claims 48–50, 53–54, 56–61, 63, 64, and 66–81, by
virtue of their dependence on claim 45. We sustain the Examiner’s 35
U.S.C. § 112 ¶ 1 rejection of claims 1, 2, 4, 5, 7–10, 15–30, 32, 34–44, 82–
94, 98–103, 105–107, 109, 110, 112–115, 118–135, 137, and 138–146,
either for the reasons discussed above, or because these claims were not
separately argued.
35 U.S.C. § 102(e) Rejections Over Shneidman
Claims 82–85, 88–95, 98, 99, 101–103, and 105
General Arguments
Appellant contends that the Examiner combines “various devices and
embodiments” in the Shneidman reference in the anticipation rejections.
Appeal Br. 38. For example, Appellant argues that
the rejection of the preamble of claim 82 is based on paragraphs
0049 and 0085, which describes telescreen device shown in
Figures 1–2. In contrast, the limitation of ‘power port’ is based
on paragraph 0125 of the Shneidman reference that relates to
Figure 15, expressly described in paragraph 0125 as ‘an
alternative configuration of the Telescreen and base unit’.
Id. Appellant further argues that

As described in Shneidman in Figures 1-3 and 12-19, and
for example in paragraphs 0079 and 0090-0091, Shneidman
system is based on three major building blocks: The Telescreen
1, base station 44, and the handset 2, each associated with
distinct task, each having different structure and purpose, and
each in a separate enclosure. The rejection is based on elements
from the three blocks, while claim 82 explicitly discloses a
single enclosure encasing all the elements and functionalities.
Further, the Action equates the claimed ‘unit’ to the handset
unit, but also equate features that are not part of claimed unit to
the handset. In another example, the claimed ‘single enclosure’
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is rejected based on Figure 20, paragraph 0130, which is a
different configuration named Telescreen TV, having different
enclosure from that of Figures 1-3 relied upon for the rest of the
claim. Further, no handset in general, and docking for such a
handset unit, are described relating to the Telescreen TV
configuration.
Id. at 39.
We do not find Appellant’s arguments persuasive. Initially, we note
that at least some of Appellant’s arguments appear to be directed to whether
Shneidman discloses the claim limitations, rather than argument that the
Examiner has improperly combined separate embodiments. To the extent
Appellant argues Schneidman does not disclose the claim limitations, we are
not persuaded of Examiner error; nor are we persuaded that the Examiner
has improperly combined embodiments.
To anticipate under § 102 “it is not enough that the prior art reference
discloses part of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention.”
Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
The general rule is that to anticipate a claimed invention, a prior art
reference must “disclose all elements of the claim within the four corners of
the document,” and it must “disclose those elements ‘arranged as in the
claim.”’ Id. at 1369 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983)).
Shneidman generally describes an integrated communication system
that brings together into one unit various communication functions that
previously had been provided by separate units. Shneidman ¶ 45. The
various embodiments of Shneidman generally include a Telescreen main
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unit and base station, a handset, and docking station. See Shneidman ¶¶ 49,
50, 54. After setting forth an “Introduction” of the “Detailed Description of
the Preferred Embodiments” in paragraphs 44–78, Shneidman goes on to
describe “The Embodiments” in paragraphs 79–136. The first embodiment
depicts the Telescreen unit in a horizontal orientation, and is described in
Figures 1–10 and paragraphs 79–104. Shneidman further describes
additional embodiments that build upon this first embodiment. For example,
Shneidman describes an embodiment where the handset unit is shown with
the touch screen configured as a cell phone (Figure 10), a Telescreen unit in
a vertical orientation (Figures 12 and 13), an alternative configuration of the
base station where the input and output sockets are configured differently
than in Figure 3 (Figure 15), and a configuration where a flat screen
television is incorporated into the Telescreen unit (Figure 20). Shneidman
¶¶ 23, 25, 26, 28, 33.
The Examiner primarily relies on the introductory disclosure of the
embodiments and the disclosure describing the first embodiment. See Final
Act. 11–12 (citing Shneidman ¶¶ 49, 51, 79, 81, 82, 85, 93, 99, 104). In
addition, the Examiner relies on paragraph 125, which describes the
embodiment shown in Figure 15, to disclose the claimed “power port,” and
on paragraph 130, which describes the embodiment shown in Figure 20, to
further disclose the claimed “display.” Id. However, these embodiments are
described with respect to the introductory disclosure and first embodiment,
as relied upon by the Examiner. See Shneidman ¶ 125 (“As can be seen by
comparing this embodiment with that shown in FIG. 3, the input and output
sockets may be configured in different arrangements”); ¶ 130 (“The
interaction between the handset unit 2 and the flat screen Telescreen TV 137
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is as described above for the Telescreen unit 1”); compare ¶ 130 (“[t]he flat
screen may once again be a LCD, plasma or similar display”), with ¶ 49
(Telescreen main unit may “comprise[] a touch sensitive liquid crystal
display (LCD) or plasma screen”). We are not persuaded by Appellant’s
arguments that these embodiments are separate and distinct from the first
embodiment; instead, they appear to be directly related. See Wm. Wrigley
Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)
(“The question for purposes of anticipation is therefore whether the number
of categories and components in Shahidi was so large that the combination
of WS–23 and menthol would not be immediately apparent to one of
ordinary skill in the art.”). Moreover, the introductory section of Shneidman
at least suggests the combination of the disclosed embodiments. See, e.g.,
¶ 49 (“Telescreen main unit . . . comprises a touch sensitive liquid crystal
display (LCD) or plasma screen . . . [and] is able to perform the functionality
of a . . . television”); ¶ 57 (“Telescreen is able to simultaneously connect and
process information . . . through a variety of ports on the unit and breakout
boxes”); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344
(Fed. Cir. 2016) (“[A] reference may still anticipate if that reference teaches
that the disclosed components or functionalities may be combined and one
of skill in the art would be able to implement the combination.”). Therefore,
we are not persuaded the Examiner is improperly combining teachings from
different embodiments.
Appellant also argues that Shneidman “is not enabling as required for
example by MPEP 2121.01.” Appeal Br. 39. Appellant contends that
Shneidman “only describes the functionalities as a ‘black box’ and is silent
about any hardware or software structure or arrangement.” Id. Appellant
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provides three examples: (1) claim 1 discloses a “modem,” but “Shneidman
is silent about any modem, transceiver, or any other component used for
communication”; (2) “Shneidman discloses communication of telephone
conversation and video simultaneously over a dial-up connection, while
technically the bandwidth of such connection does not support such
functionalities”; and (3) claim 82 recites a “transceiver,” but Shneidman “is
silent regarding any ‘transceiver,’ and transceiver for communication with
the handset unit in particular.” Id.
We do not find Appellant’s arguments persuasive for the reasons
stated by the Examiner. See Ans. 11–12. First, contrary to Appellant’s first
argument, there is no anticipation rejection over Shneidman for claim 1;
rather, the rejection for claim 1 is an obviousness rejection based upon the
combination of Shneidman and Bell ’785, and the Examiner relies on Bell
’765 to teach the recited “modem.” See Ans. 11; Final Act. 14. As
discussed further below, we do not find the rejection of claim 1 is in error.
Second, Appellant provides no citations to Shneidman in support of the
second argument. We agree with the Examiner that Shneidman teaches the
use of DSL. See Ans. 11 (citing Shneidman ¶ 57). Third, we agree with the
Examiner that Shneidman discloses communication between the handset
unit and the Telescreen unit, for example, uploading digital data or
communication of location data. See id. (citing Shneidman ¶¶ 117, 120).
Accordingly, on this record, we are not persuaded the Examiner erred.
Claim 82
Appellant argues Shneidman does not disclose “operative for
displaying information stored in a unit,” as recited in independent claim 82.
Appeal Br. 40. According to Appellant, the Examiner relies on Shneidman’s
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handset to disclose the claimed “unit,” and Shneidman is silent as to “any
storing of information, or regarding transferring any stored information to
the main Telescreen unit.” Id. Appellant also contends that “Shneidman is
silent about a wired communication or the use of any connector for the
Telescreen / handset communication.” Id.
Appellant’s arguments are not persuasive. We agree with the
Examiner that Shneidman teaches downloading information from the
handset to the Telescreen unit while docked, which indicates a connector.
See Ans. 12 (citing Shneidman ¶ 54 (“docking stations for the individual
handsets, which docking stations provide for charging of the handset,
downloading information from the handset to the Telescreen unit and
uploading of information to the handset”)). For example, Shneidman states
that “[t]he handset may function as a digital camera, capturing images to be
uploaded to the Telescreen unit.” Shneidman ¶ 51. Shneidman further
teaches that these images may be stored in memory on the handset. Id.
¶ 117 (“control area displayed on the touch screen 47 allows the user to save
the image to memory . . . [s]aved and copied images may be uploaded when
the handset unit 2 is communicating with the Telescreen unit 1”).
Accordingly, we are not persuaded the Examiner erred.
Claim 92
Claim 92 depends from claim 82 and recites “wherein the unit is a
handheld unit that is one of: a Personal Digital Assistant (PDA); and
cellular telephone handset.” Appeal Br. 88, Claims App. The Examiner
relies on paragraph 50 and Figure 16 of Shneidman to disclose this
limitation. Final Act. 12.
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Appellant argues that the disclosure in Shneidman’s paragraph 50
contradicts the language in Appellant’s claim 82, where the telephone
functionality is equated to the Telescreen main unit. Appeal Br. 41.
Appellant also argues that the configuration disclosed in paragraph 50 is
silent about a wired connection or the use of a connector, the paragraph
discloses only using cordless and infrared signaling, and Shneidman’s
handset 2 may only function as a cellular telephone device when it is
detached and remote from the Telescreen main unit. Id.
We are not persuaded by Appellant’s arguments. Claim 82 recites a
“telephone set,” a “telephone apparatus,” and a “unit.” Appeal Br. 87,
Claims App. The “telephone set” comprises, in part, “a telephone apparatus
operative for making and receiving calls” and “an adapter for mechanically
attaching the unit to the telephone set, said adapter including a connector for
connecting to the unit when the unit is mechanically attached to said
telephone set using said adapter.” Id. Appellant’s arguments contradict the
claim language, which separately recites “a telephone apparatus operative
for making and receiving calls” (claim 82) and a “unit” that is “a handheld
unit that is one of: a Personal Digital Assistant (PDA); and a cellular
telephone handset” (claim 92). Appeal Br. 87, 88, Claims App.
The Examiner relies on Shneidman’s “Telescreen unit” to disclose the
recited “telephone set” and “telephone apparatus,” and Shneidman’s
“handset” to disclose the recited “unit.” Final Act. 11. Paragraph 50 of
Shneidman states “[t]he handset alone functions as a telephone and
communicates with the Telescreen unit by infrared signaling or by cordless
technologies, when in range. Optionally, the handset may serve as a cellular
phone and as a low orbit satellite telephone communications device.” As
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discussed above, Shneidman also teaches that the Telescreen unit includes
docking stations for individual handsets, “which docking stations provide for
charging of the handset, downloading information from the handset to the
Telescreen unit and uploading of information to the handset.” Shneidman
¶ 54. “The docking stations have spring loaded dowels 6 that facilitate
handset 2 capture and charging.” Id. ¶ 82. We agree with the Examiner that
the disclosure in Shneidman sufficiently discloses the recited claim
limitations in claim 92. See Ans. 12–13. Accordingly, we are not persuaded
the Examiner erred.
Claim 85
Claim 85 depends from claim 84, which itself depends from claim 82,
and recites “wherein the communication with a first remote information
server is via the unit.” Appeal Br. 88, Claims App.5 The Examiner relies on
paragraph 133 of Shneidman to disclose this limitation. Final Act. 12.
Appellant acknowledges that paragraph 133 of Shneidman states that
“selection action can be made on the handset unit,” but argues that this
paragraph is silent regarding “communication with the server via the unit.”
Appeal Br. 41.
We are persuaded by Appellant’s arguments. Paragraph 133 of
Shneidman discloses a “Telescreen unit 1 physically attached to a server unit
148,” but also states that “[t]he attachment need not be physical and
represents the communication path between the two computers.”
Shneidman further states that “[t]he Telescreen . . . may communicate to the

5 We note that claim 84, from which claim 85 depends, also recites “a first
remote information server.”
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server . . . by the numerous ways such as telephonic, cellular, and satellite
communications.” Shneidman ¶ 133. The Telescreen unit
monitors the active areas [of the screen] for a selection action.
A selection action is a touch on the Telescreen’s touch screen or
a firm touch on the Handset unit’s touch screen in an area that
maps to an active area of the Telescreen’s display. The
selection action in a[n] active area of the display is registered
by the Telescreen and a corresponding code is then transmitted
back to the server unit 148 for processing. Upon processing the
selection, the server unit 148 then sends the next screen or
updates the data in its memory and sends appropriate display
and active area data to the Telescreen unit.

Id. (emphasis added).
Claim 84, from which claim 85 depends, recites “said telephone set is
operative for communicating with a first remote information server via the
Internet.” Claim 85 then further specifies that the telephone set’s
“communication with a first remote information server is via the unit.” The
Examiner finds that Shneidman’s Telescreen discloses the claimed
“telephone set” and Shneidman’s handset unit discloses the claimed “unit.”
Final Act. 11. Although paragraph 133 of Shneidman discloses that the
Telescreen communicates with the server because of a button on the handset
being activated, the Examiner has not sufficiently explained how the
communication between Shneidman’s Telescreen and server is through the
handset (i.e., “via” the handset). Our interpretation of “via” is consistent
with the use of the same term in claim 84 (“via the Internet”).
Accordingly, we are persuaded the Examiner erred.
Claims 88, 98, and 99
Claim 88 depends from claim 82 and recites “further comprising a
first memory coupled to said transceiver for storing digital data received by
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said transceiver.” Appeal Br. 88, Claims App. Claim 98 depends from
claim 82 and recites “further comprising a non-volatile memory coupled to
said transceiver for storing digital data received by said transceiver.” Id. at
89. Claim 99 depends from claim 98 and recites “wherein said non-volatile
memory is based on a Flash memory.” Id. The Examiner relies on
paragraphs 80, 86, 87, 99, 113, and 117 of Shneidman to disclose the
limitations in these claims. Final Act. 12–13; Ans. 13.
Appellant argues that although Shneidman “may teach receiving
information by the main Telescreen unit from the handset unit, and may
further teach that the main Telescreen unit comprises non-volatile memory,”
the cited paragraphs “are silent regarding storing in the memory the
information received from the handset unit.” Appeal Br. 42. Appellant also
provides several case citations regarding inherency. Id. at 42–43.
We are persuaded by Appellant’s arguments. Specifically, we agree
with Appellant that the Examiner has not sufficiently shown that the
information received from the handset unit is stored in the Telescreen unit.
The Examiner finds that “Shneidman teaches the downloading of
information from the handset to the Telescreen unit, which implies storing
the downloaded data.” Ans. 13. The Examiner has not sufficiently
established, however, that downloading the information implies that the
downloaded data is necessarily stored as claimed, rather than simply
displayed (or stored in a volatile memory for claims 98 and 99). The
paragraphs of Shneidman cited by the Examiner do not disclose that the
information downloaded from the unit is necessarily stored. See Shneidman
¶ 80 (describing “RAM memory . . . including . . . flash memory”), ¶ 86
(“digital input and output to optical storage”), ¶ 87 (“read and write to more
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static media through an optical-magneto card unit 12”), ¶ 99 (scanned
information “can be uploaded to the Telescreen 1 for further processing”),
¶ 113 (“speed dial number may be uploaded or downloaded to an optical-
magneto card inserted into the card unit in the handset unit 2”), and ¶ 117
(“[S]aved and copied images may be uploaded when the handset unit 2 is
communicating with the Telescreen unit 1.”). As the Federal Circuit has
said, “differences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation.” Net
MoneyIN, 545 F.3d at 1371.
Accordingly, we are persuaded the Examiner erred in rejecting these
claims as anticipated.
Claim 89
Claim 89 depends from claim 82 and recites “wherein said single
enclosure is constructed to have a form substantially similar to that of a
conventional telephone set.” Appeal Br. 88, Claims App. The Examiner
relies on paragraphs 49 and 85 of Shneidman to disclose these limitations, in
particular that the “Telescreen 1 includes casing 1a and can be used as a
telephone.” Final Act. 13. The Examiner also finds that Shneidman teaches
that the casing “may be stylized and constructed of different materials and
colors, and follow different designs to suit individual tastes of purchasers”
and “the casing can be considered as ‘conventional’ to the extent required by
the claim.” Ans. 14.
Appellant argues that “casing 1a is NOT in the form of a conventional
telephone set,” and “the fact that a device ‘can be used as a telephone’ does
not mean that the device indeed is formed as a conventional telephone.”
Appeal Br. 43. Appellant further argues that Shneidman “is focused on a
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large screen and a form of a tablet, expressly remote from any telephone
form.” Id. Appellant also provides several case citations regarding
inherency. Id. at 43.
We are persuaded by Appellant’s arguments and agree that the
Examiner has not sufficiently shown that Shneidman’s casing “is
constructed to have a form substantially similar to that of a conventional
telephone set.”
Accordingly, we are persuaded the Examiner erred.
Claims 90 and 91
Claim 90 depends from claim 82 and recites “further addressable
using a digital address uniquely identifying said telephone set in a Local
Area Network (LAN) or in a Wide Area Network (WAN).” Appeal Br. 88,
Claims App. Claim 91 depends from claim 90 and recites “wherein said
digital address is a MAC address or an IP address.” Id. The Examiner finds
Shneidman inherently discloses these limitations because it discloses that the
“Telescreen unit connects to the Internet and loads web pages.” Final Act.
13 (citing Shneidman ¶¶ 110, 136).
Appellant argues that “being connected to a network does NOT
inherently suggest being addressable in that network.” Appeal Br. 44.
Appellant contends that “at the time of the invention, addresses in general
(such as IP or MAC address) have not been inherent, and many times the
addressing was assigned by the connection (such as in dial-up modem, or by
an ISP) or by a separate unit port (like a bridge or router).” Id.
We are persuaded by Appellant’s arguments. A prior art reference
may anticipate without disclosing a feature of the claimed invention if that
missing characteristic is necessarily present, or inherent, in the single
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anticipating reference. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991). However, inherency
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.] If, however,
the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well
settled that the disclosure should be regarded as sufficient.

Id. at 1269 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
When relying on the theory of inherency, the USPTO has the initial
burden of providing a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristic
reasonably flows from the teachings of the applied prior art. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). Once the USPTO establishes a prima
facie case of anticipation based on inherency, the burden shifts to the
applicant to prove that the prior art does not possess the characteristic at
issue. Id.
The Examiner states that “in order to receive information from a web
server, the device is inherently addressable, whether or not the IP address is
temporarily assigned.” Ans. 14. We agree with Appellant that the Examiner
has not sufficiently shown that the recited addressability is necessarily
present in Shneidman, even if it would have been obvious.
Accordingly, we are persuaded the Examiner erred.
Claims 93–95
Claim 93 depends from claim 82 and recites “wherein said display
comprises a flat screen that is based on Liquid Crystal Display (LCD)
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technology.” Appeal Br. 88, Claims App. Claim 94 depends from claim 82
and recites “wherein the information received from the unit is digital data,
and wherein said display is a video display.” Id. Claim 95 depends from
claim 94 and recites “wherein said telephone set is further operative to
receive and display television channels.” Id. The Examiner relies on
paragraph 130 of Shneidman to teach these limitations. Final Act. 13.
Appellant argues the Examiner improperly combines embodiments
because claim 82 was anticipated based upon Figures 1–3, yet the Examiner
rejects claims 93–95 based upon paragraph 130, “which relates to an isolated
and distinct configuration named telescreen TV involving integration in a
television set.” Appeal Br. 45. In particular, Appellant relies upon In re
Arkley, 455 F.2d 586, 587 (CCPA 1972) as holding that the need for any
picking and choosing amongst the various embodiments in a particular piece
of prior art renders an anticipation rejection as improper. See Appeal Br. 45
(quoting Arkley).
As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102
must clearly and unequivocally disclose the claimed compound
or direct those skilled in the art to the compound without any
need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited
reference. Such picking and choosing may be entirely proper in
the making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.
Arkley, 455 F.2d at 587–88. As discussed above, the embodiment shown in
Figures 1–3 is directly related to the embodiment shown in Figure 20 and
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described in paragraph 130, which simply shows the Telescreen unit in a
different configuration. As the Examiner points out (Ans. 14), paragraph
130 refers to elements of the embodiment shown in Figures 1–3: “The flat
screen may once again be a LCD, plasma or similar display that may or may
not have a touch sensitive screen. The handset unit 2 will once again
function as a remote for the flat screen Telescreen TV. The interaction
between the handset unit 2 and the flat screen Telescreen TV 137 is as
described above for the Telescreen unit 1.” Shneidman ¶ 130.
Accordingly, we are not persuaded the Examiner erred.
Summary as to 35 U.S.C. § 102(e) Rejections Over Shneidman
Appellant does not separately argue any of the additional dependent
claims. See generally Appeal Br. Accordingly, for the foregoing reasons,
we sustain the Examiner’s 35 U.S.C. § 102(e) rejections of claims 82–84,
92–95, 101–103, and 105. We do not sustain the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 85, 88–91, 98, and 99.

35 U.S.C. § 103(a) Rejections Over Bell ’785 and Shneidman
Claims 1–8, 10, 15–32, 34–36, 39–41, 44, 45, 47–50, 53, 54, 57, 58, 61, 63–
78, 81, 106–113, 115, 118–137, 139–141, and 144–146

Combination of References
The Examiner primarily relies on Bell ’785 to teach or suggest the
recited limitations in independent claims 1, 45, and 106, but relies on
Shneidman to teach that the device is a “telephone set” that is “operative for
making and receiving telephone calls.” Final Act. 14–17. The Examiner
finds it would have been obvious to one of ordinary skill in the art “to
modify Bell ’785 with Shneidman in order to increase the functionality of
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the device and convenience for the user by incorporating both data and voice
communications within a single device.” Id. at 17.
Appellant presents several arguments against the combination of Bell
’785 and Shneidman. Appeal Br. 46–50. Appellant asserts that the
Examiner’s rationale is conclusory, does not explain why the combination is
warranted, and is based on impermissible hindsight. Id. at 46–47. Appellant
further argues that Bell ’785 is “directed to simple and reduced resources
device,” so modifying Bell ’785 “requir[es] complicated hardware additions,
and renders the device described by the Bell reference improper for its
intended use of being simple and ‘low/reduced resources.’” Id. at 47–48.
Appellant argues modifying Bell ’785 “to support telephony . . . clearly
changes its configuration and requires major changes.” Id. at 48. Appellant
further argues that Bell ’785 “is clearly directed to a data device,” while
Shneidman “is directed to a telephone device,” and there is no “teaching or
motivation for any telephonic functionality in general, and real-time
operation in particular, as required for telephone functionality.” Id. at 48–
49. As such, Appellant contends the modification will “chang[e] the
principle of operation of the Bell ’785 reference.” Id. at 49. Appellant also
argues that Bell ’785’s disclosure that the processor-based device may take
the form of a cellular phone indicates that Bell ’785 already includes support
for “both data and voice communications within a single device,” which
renders the combination moot. Id.
We find Appellant’s arguments unpersuasive. Further, Appellant’s
arguments as to the combination of Bell ’785 and Shneidman were discussed
and analyzed in Appeal No. 2019–003193, and for the same reasons as
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discussed therein, we do not find Appellant’s arguments persuasive here.
See Appeal No. 2019–2003193, pp. 51–54.
Appellant also presents arguments that the Examiner has not provided
rationale for modifying Bell ’785 with Shneidman in the Final Action e
action for various dependent claims (claims 7, 34–36, 39, 40, 41, 44, 63, 81,
112, 118, 144, 145, and 129–141). Appeal Br. 59, 62. However, in the
Answer, the Examiner provides sufficient rationale for combining the
references, which Appellant does not challenge. See Ans. 20, 22. Because
Appellant does not persuasively address the rationale proffered by the
Examiner, we are not persuaded the Examiner erred.
General Arguments
Appellant contends that the Examiner combines two distinct
embodiments from Bell ’785 in the obviousness rejections. Appeal Br. 50.6
Specifically, Appellant argues there are two distinct entities described in
Bell ’785, and the Examiner relies on the features of both to disclose the
claimed device: (1) processor-based device 40, which connects to both local
area network 64 and WAN 65 and (2) peripheral devices such as Digital
Picture Frame 66, Digital Appliance 67, and other devices 68, which are
connected only to local network 64, and are different from the primary
device 40. Id. at 50–51.
Appellant’s arguments were discussed and analyzed in Appeal Nos.
2019-02199 and 2019-003193, and for the same reasons as discussed

6 Appellant presents the same arguments with respect to independent claim
82. Appeal Br. 77.
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therein, we do not find Appellant’s arguments persuasive here. See Appeal
No. 2019-02199, pp. 18–19; Appeal No. 2019-003193, pp. 36–37.
Claims 1, 45, and 106
Appellant contends that Bell ’785 does not teach a “connector for
connecting to the cable,” as recited in claim 1. Appeal Br. 51 (emphasis
omitted). We have previously addressed Appellant’s arguments in Appeal
Nos. 2019-02199 and 2019-003193, and for the same reasons as discussed
therein, we do not find Appellant’s arguments persuasive here. See Appeal
No. 2019-02199, p. 20; Appeal No. 2019-003193, p. 37.
Appellant further argues Bell ’785 does not teach “said telephone set
. . . addressable in a digital network,” as recited in claim 1. Appeal Br. 52.
Appellant argues that “at the time of the Bell ’785, many devices were
addressable by a connected device, where the address was assigned by a
service provider (ISP). In other scenarios, a device is referred to not by any
address, but rather upon the port it is connected to, where the port is
considered ‘addressable,’ and not the device itself.” Id.
We have previously addressed Appellant’s arguments in Appeal Nos.
2019-02199 and 2019-003193, and for the same reasons as discussed
therein, we do not find Appellant’s arguments persuasive here. See Appeal
No. 2019-02199, pp. 22–25; Appeal No. 2019-003193, pp. 38–40.
Appellant further argues Bell ’785 does not teach “local connecting to
a ‘server’ or to the Internet.” Appeal Br. 53. According to Appellant, Bell
’785’s “LAN 64 is used only for local connections and NOT for any
connecting to the Internet.” Id.
It is not entirely clear what specific limitation Appellant is arguing,
but it appears to be “obtaining digital data over a WLAN (Wireless Local
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Area Network) via the Internet,” as recited in claim 45, for which the
Examiner relies on Bell ’785 teaching obtaining data over a LAN 64 via
Internet 65. Final Act. 15. We note that claims 1 and 106 do not appear to
recite any limitations that refer to a “local connection.”
We have previously addressed Appellant’s arguments in Appeal No.
2019-02199, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019-02199, pp.
19–20.
Appellant further argues Bell ’785 does not teach a “WLAN antenna
for transmitting and receiving digital data over the air,” as recited in claim
45. Appeal Br. 53–54 (emphasis omitted). Specifically, Appellant argues
that the citations relied upon by the Examiner fail to teach an “antenna.” Id.
Appellant also provides several case law citations to the law regarding
inherency. Id.
The Examiner finds “paragraph 0056 [of Bell ’785] specifically states
that the device uses physical and/or logical connections to LAN 64 or WAN
65, including a wireless connection which necessarily includes an antenna.
Moreover, paragraph 0030 states that the device may take the form of a
wireless communication such as a laptop, cellular phone, etc., which are
known to include a wireless antenna.” Ans. 16–17; Final Act. 16.
Appellant does not provided any supporting argument associated with
the inherency citations, or argument that the Examiner has not established
that a “WLAN antenna” is inherent in Bell ’785. See Appeal Br. 54. Nor
has Appellant rebutted the Examiner’s findings in the Answer. Therefore,
on this record, we are not persuaded the Examiner erred.
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Appellant further argues that Bell ’785 does not teach a “wireless
transceiver coupled to said antenna for bi-directional packet-based digital
data communication . . . over the air,” as recited in claim 45. Appeal Br. 54.
Specifically, Appellant argues that the citations relied upon by the Examiner
fail to teach a “transceiver.” Id. at 54–55. Appellant also provides several
case law citations to the law regarding inherency. Id. at 55.
The Examiner finds “Bell ‘785 specifically states that the processor-
based device is used to access the Internet to retrieve HTML data (para.
0030) and uses physical and/or logical connections to a LAN 64 or WAN
65, including a wireless connection (para. 0056), which would necessitate a
wireless transceiver to retrieve the HTML data.” Ans. 30. The Examiner
also finds that paragraph 30 “states that the device may take the form of a
wireless communication such as a laptop, cellular phone, etc., which
inherently include a wireless LAN transceiver for retrieving HTML data
from the Internet via a wireless LAN.” Id.
Appellant provides several case law citations; however, Appellant
does not provide any argument associated with that law as to why the
Examiner has not sufficiently established that a “wireless transceiver” is
inherent in Bell ’785. See Appeal Br. 54, 55. Therefore, on this record,
Appellant has not raised a separate argument to challenge the Examiner’s
findings, and we are not persuaded the Examiner erred.
Accordingly, for the foregoing reasons, we sustain the Examiner’s 35
U.S.C. § 103(a) rejection of independent claims 1, 45, and 106.
Claims 2, 53, 64, and 107
Claims 2, 53, 64, and 107 depend from claims 1, 45, and 106, and
recite “telephone set is [further] operative for automatically and periodically
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communicating with the first remote information server.” Appeal Br. 76, 82,
83, 91, Claims App. The Examiner relies on paragraphs 76 and 93 of Bell
’785 to teach these limitations. Final Act. 17.
According to Appellant, the citations relied upon by the Examiner
only teach “periodically locally retrieving and displaying, and fails to teach
any automatic and periodic external communication in general, and with a
server for receiving therefrom in particular.” Appeal Br. 55.
We have previously addressed Appellant’s arguments in Appeal Nos.
2019-02199 and 2019-003139, and for the same reasons as discussed
therein, we do not find Appellant’s arguments persuasive here. See Appeal
No. 2019-02199, p. 26; Appeal No. 2019-003193, pp. 42–43.
Claims 3, 4, 31, 32, 54, 61, 108, 109, 136, and 137
Claims 3, 4, 31, 54, 61, 108, 109, and 137 are dependent on claims 1,
45, and 106, and recite, inter alia, a “digital address.” Appeal Br. 77, 80,
83–84, 92, 95, Claims App. Claims 61, 32, and 137 more specifically recite
“a digital address that is a MAC address or an IP address.” Appeal Br. 80,
84, 95, Claims App.
The Examiner relies on paragraph 40 of Bell ’765 to teach these
limitations, and states “an HTTP ‘GET’ request message inherently includes
a source IP address.” Final Act. 17. In the Answer, the Examiner also finds
that “an HTTP request transmitted by a sending device to a web server
necessarily includes a source IP address, whether it is static or assigned by a
service provider, in order for the server to know where to send the response
message” and relies on Squire to show such inherency.7 Ans. 19. The

7 US 7,080,158 B1 (issued July 18, 2006).
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Examiner also relies on Angelo8 to support the finding that “the network
interface unit of Bell ’785 inherently includes a MAC address assigned at
the time of manufacture in order to ‘function correctly on the network’ and
‘correctly receive data addressed to it.’” Id. at 18–19 (emphasis omitted).
Appellant argues that “at the time of invention, addresses in general
(such as the IP or MAC address) have not been inherent, and many times the
addressing was assigned by the connection (such as in dial-up modem, or by
an ISP) or by a separate unit port (like a bridge or router).” Appeal Br. 57;
see also id. at 61. Appellant further argues the Examiner has not provided
evidence establishing that Bell ’785 inherently discloses this feature. Id.
We have previously addressed Appellant’s arguments in Appeal Nos.
2019-02199 (pp. 28–29) and 2019-003193 (pp. 45–46), and for the same
reasons as discussed therein, we are persuaded that the Examiner has not
sufficiently shown that Bell ’785 inherently discloses an IP address, but we
are persuaded that the Examiner has sufficiently shown that Bell ’785
inherently discloses the alternatively claimed requirement of a MAC
address. Accordingly, we are not persuaded the Examiner erred in finding
the disputed limitations are taught by Bell ’785.
Claims 5 and 110
Claims 5 and 110 depend from claims 1 and 106 and recite “said
telephone set is configured for wall mounting.” Appeal Br. 77, 92, Claims
App.
Appellant argues that in a Final Office Action in a related application,
the Examiner stated that Bell ’785 does not disclose this limitation. Appeal
Br. 58.

8 US 2004/0002877 A1 (published Jan. 1, 2004).
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However, to teach these limitations, the Examiner relies on paragraph
124 of Shneidman, not Bell ’785. Final Act. 18; Ans. 20.
We have previously addressed Appellant’s arguments in Appeal No.
2019-003193, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019-003193, pp.
41–42.
Claims 6 and 111
Claims 6 and 111 depend from claims 1 and 106 and recite “the
communication over the digital network is based on IEEE802.3 standard;
said connector is a RJ-45 type connector; and said transceiver is an Ethernet
transceiver.” Appeal Br. 77, 92, Claims App. The Examiner cites to
paragraphs 56 of Bell ’785 and paragraphs 92 and 93 of Shneidman to teach
these limitations. Final Act. 18.
Appellant argues “Bell ’785 is silent regarding connecting with the
Internet via a local network.” Appeal Br. 58.
Appellant’s arguments are not persuasive. As the Examiner points
out, the Examiner relies on Bell ’785 and Shneidman to teach these
limitations. Ans. 20. Appellant’s arguments only address Bell ’785.
Accordingly, we are not persuaded the Examiner erred.
Claims 8 and 1139
Claims 8 and 113 depend from claims 1, 45, and 106, and recite, inter
alia, a “video display.” Appeal Br. 77, 92, Claims App. The Examiner

9 Appellant also refers to claim 49 in the title of this section, but claim 49
does not recite the argued “video display.” Appeal Br. 83, Claims App.
Appellant may have intended to refer to claim 50. See id.
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relies on paragraphs 26 and 48 of Bell ’785, and display 22/46 to teach these
limitations. Final Act. 18.
Appellant contends that Bell ’785 does not teach a “video display.”
Appeal Br. 59. Appellant also provides several case law citations to the law
regarding inherency. Id.
We have previously addressed Appellant’s arguments in Appeal No.
2019-002199, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019-002199, p. 25.
Claims 10 and 115
Claims 10 and 115 depend from claims 1 and 106 and recite, “wherein
said telephone set is further operative to receive and display television
channels.” Appeal Br. 77, 92, Claims App. The Examiner relies on
paragraphs 30, 57, and 70 of Bell ’785 to teach these limitations. Final Act.
18; Ans. 21.
Appellant argues that paragraph 57 “does not refer to the equated
Internet-connected device shown in Figure 3, but rather to the devices
connected to the Internet-connected device 40 over the local network 64, and
thus not relevant to the equated device.” Appeal Br. 60.
We have previously addressed Appellant’s arguments in Appeal No.
2019-002199, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019-002199, pp.
29–30.
Claims 25, 26, 57, 58, 130, and 131
Claim 25 depends from claim 1 and recites “wherein communication
with the first remote information server is based on Internet Protocol suite.”
Appeal Br. 79, Claims App. Claim 26 depends from claim 25 and recites
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“wherein communication with the first remote information server is based
on TCP/IP.” Id. Claims 57, 58, 130, and 131 depend from claims 45 and
106 and recite similar limitations. Id. at 84, 94.
The Examiner relies on paragraphs 37 and 40 to disclose the
limitations in claims 25 and 66, specifically that Bell ’785 discloses using
HTTP Web protocol. Final Act. 20. The Examiner also relies on Squire to
show what was known in the art, that “HTTP is a request/response protocol
that is typically used in conjunction with the Transmission Control Protocol
(TCP) and the Internet Protocol (IP).” Ans. 21–22 (citing Squire 6:25–27).
Appellant argues that HTTP is an application layer protocol, relating
to information formatting, while the recited IP and TCP/IP protocols are
link/network layer and transport layer protocols. Appeal Br. 61.
We have previously addressed Appellant’s arguments in Appeal No.
2019-003139, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019–003139, pp.
43–44.
Claim 48
Claim 48 depends from claim 45 and recites “wherein said second
memory is non-volatile.” Appeal Br. 83, Claims App. The Examiner relies
on memory 50 and paragraphs 50–52 of Bell ’785 to teach these limitations.
Final Act. 22.
Appellant argues Bell ’785 does not teach “non-volatile.” Appeal Br.
63. According to Appellant, “while the Bell ’785 reference may disclose
various types of non-volatile memory, the Bell ’785 reference and the
Action are both silent regarding using non-volatile memory for storing
information received from the digital network.” Id. Appellant further
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argues that memory 50 and memory 34 in Bell ’785 are not the same, so,
even if memory 50 includes Flash memory, it is not relevant to memory 34,
which is relied upon by the Examiner. Id.
We have previously addressed Appellant’s arguments in Appeal No.
2019-003139, and for the same reasons as discussed therein, we do not find
Appellant’s arguments persuasive here. See Appeal No. 2019-003139, pp.
49–50.
Claims 72 and 73
Claim 72 depends from claim 45 and recites “wherein said telephone
set is operative to initiate a communication with the first remote information
server after a set period following a prior communication session.” Appeal
Br. 85, Claims App. Claim 73 depends from claim 72 and recites “wherein
the set period is at least one of: set by the user; set previously in said
telephone set; and set by the first remote information server in a previous
communication session.” Id. The Examiner relies on paragraphs 27, 69, 76,
and 93 of Bell ’785 to teach these limitations. Final Act. 22.
Appellant argues Bell ’785 “is silent about periodic communication
with the server, and only teaches periodic notifying to the user.” Appeal Br.
64 (emphasis omitted). Appellant also argues that “‘periodic operation’ is
not equal to ‘operation after a set period.’” Id. at 65. Appellant also argues
the claims explicitly recites “. . . to initiate a communication”,
referring to establishing a physical layer connection for a
communication session (such as exampled in the specification
by dialing a number for establishing a communication session).
In contrast, the rejection is based on the passages in the Bell
‘785 reference that teach retrieving an object, which is clearly a
higher layer (such as OSI Layer-7) communication, as part of
the browser continuous operation, AFTER AND WHILE the
lower layers, such as the physical layer are connected. The Bell
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‘785 is silent regarding any lower layer connection in general,
and in particular regarding any establishing a physical layer
connection. Further, the Bell ‘785 is silent regarding any
periodical establishing of a lower layer communication session.
Id.
We are persuaded by Appellant’s arguments. The Examiner finds that
“Bell ’785 teaches initiating a downloading process by the calling device
requesting a retrieval of an HTML object from a selected HTML page (para.
0093–0095), which can be considered as ‘operative to initiate a
communication with the first remote information server.’” Ans. 23. We do
not see, and the Examiner has not sufficiently explained, how Bell ’785
teaches initiating a communication (e.g., a download or retrieval) with the
first remote information server “after a set period following a prior
communication session.”
Accordingly, we are persuaded the Examiner erred.
Summary 35 U.S.C. § 103(a) Rejections Over Bell ’785 and Shneidman
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 1–8, 10, 15–32, 34–36, 39–41, 44, 45, 47–50,
53, 54, 57, 58, 61, 63–71, 74–78, 81, 106–113, 115, 118–137, 139–141, and
144–146. We do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 72 and 73.

35 U.S.C. § 103(a) Rejections
Over Bell ’785, Shneidman, and Bell ’723
Claims 9, 46, 55, 56, 59, 60, and 114
Claims 9 and 114
Claim 9 depends from claim 8 and recites “further connectable to an
analog video display, the telephone set comprising a composite video
interface that is one of a PAL and an NTSC interface, said composite video
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interface being coupled to said first memory for displaying the digital data
stored in said first memory on the analog video display.” Appeal Br. 77,
Claims App. Claim 114 depends from claim 113 and recites “further
comprising a composite video interface that is one of a PAL and an NTSC
interface.” Id. at 92. The Examiner relies on Bell ’723 to teach the
limitations in these claims. Final Act. 22–23.
Appellant argues that paragraph 38 of Bell ’723 “refers to HDTV
ONLY with regard to EXTERNAL display . . . while the claim recites
INTERNAL display.” Appeal Br. 66.
Appellant’s arguments are not persuasive. Rather, we agree with the
Examiner that the claim recites an external display – “further connectable to
an analog video display.” Ans. 23. Bell ’723 describes “[p]rocessor-based
appliance 10 . . . can optionally be coupled via a wire or cable 7 to an
auxiliary display 5 having a screen or display 6.” Bell ’723 ¶ 38. Bell ’723
further discloses “Auxiliary display 5 could be a television, computer
monitor, or any other equipment that is suitable to render visual and/or audio
media . . . . For example, auxiliary display 5 can be a large-screen TV or
high-definition TV.” Id. We agree with the Examiner that Bell ’723 teaches
the limitations in claims 9 and 114. See Ans. 22–23. Accordingly, we are
not persuaded the Examiner erred. Moreover, Appellant’s arguments are
unpersuasive because they do not address the combination of references as
relied upon by the Examiner. We sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 9 and 114. We also sustain the Examiner’s 35 U.S.C.
§ 103(a) of claims 46, 55, 56, 59, and 60, which Appellant does not
separately argue.
35 U.S.C. § 103(a) Rejections Over
Bell ’785, Shneidman, and Yamada
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Claims 42 and 43
Claim 42 depends from claim 1 and recites “wherein said telephone
set is further operative as a clock for maintaining and displaying the current
hour, minute and second.” Appeal Br. 81, Claims App. Claim 43 depends
from claim 42 and recites “wherein said telephone set is further operative to
display the current year, the current month and the current day of the
month.” Id.
The Examiner relies on Yamada to teach the limitations in claims 42
and 43. Final Act. 24 (citing Yamada, Fig. 8 (showing date and time)). The
Examiner “takes Official Notice that it was well known at the time of the
invention to display time up to the second. It would have been obvious to
one of ordinary skill [in the art] to incorporate” Yamada’s features into Bell
’785 and Shneidman “in order to expand the functionalities of the device.”
Id.
Appellant argues Yamada “is directed to a navigation system to be
used in a vehicle while travelling,” while “the claim explicitly recite[s] a
tethered (LAN) connection to a network via a connector to a cable,” and Bell
’785 “expressly shows . . . a stationary desktop computer.” Appeal Br. 66.10
Appellant argues that the “references are directed towards respectively

10 Appellant captions this argument as “Teaching away”; however, Appellant
merely summarizes contentions as to what Yamada is directed to, what the
claim recites, and what Bell ’785 expressly shows. Appellant has not
addressed where the references criticize, discredit, or otherwise discourage
the Examiner’s proposed modification with Yamada. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”).
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different fields and purposes, and are based on respectively different
structures, and thus are not analogous to one another and cannot logically be
combined.” Id. at 67. Appellant also argues that the Examiner’s rationale
for the combination provides no link to the application and is conclusory.
Id.
We have previously addressed Appellant’s arguments in Appeal Nos.
2019-002199 and 2019-003193, and we for the same reasons as discussed
therein, we do not find Appellant’s arguments persuasive here. See Appeal
No. 2019-002199, pp. 40–42; Appeal No. 2019-003193, pp. 59–62.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 42 and 43.
35 U.S.C. § 103(a) Rejections Over
Bell ’785, Shneidman, and Ulrich
Claims 79 and 80
The Examiner relies on Ulrich to teach “wherein said telephone set
further comprises a rechargeable battery for powering at least part of said
telephone set, and a connector for connecting to the cable, for
communication over the cable and for charging said rechargeable battery by
the DC power signal from the cable,” as recited in claim 79. Final Act. 25
(citing Ulrich 1:8–4:9). Ulrich generally describes powering a telephone
apparatus directly from the telephone lines and without external power
sources. Ulrich, Abstr., 1:8–10. Ulrich describes various advantages to
powering directly from the telephone line and without auxiliary power, such
as operability in the event of a power outage. Id. at 1:49–51. The Examiner
finds “it would have been obvious to one of ordinary skill in the art at the
time of the invention to incorporate the teaching of Ulrich within the
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disclosure of [Bell ’785] so that the device can operate in the event of a
power outage, as taught by Ulrich.” Final Act. 25.
Appellant argues that the Examiner improperly combines Bell ’785,
Shneidman, and Ulrich. Appeal Br. 68–72. Appellant argues that Ulrich is
not analogous art because Ulrich “is silent regarding any video or text data,
regarding any server connection, or regarding Internet connection.” Appeal
Br. 69. Appellant also argues that Bell ’785 is based on “wireless telephone
functionality,” so it “teach[es] away from any connection to any wired
connection in general, and use[s] dial-up connection.” Id. Appellant also
argues that the Examiner’s rationale for modifying Bell ’785 and Shneidman
with Ulrich is conclusory and based on impermissible hindsight. Id. at 70.
Appellant further argues Ulrich’s cable connection renders the device
disclosed by Bell ’785 inoperative for its intended use (1) in wireless/mobile
applications; and (2) because the combination with Ulrich results in “ONLY
connection via WAN” via “telephone wiring/dial-up connection.” Id. at 70–
71. Appellant further asserts that the references cannot be combined
because “Bell ’785 . . . is silent about any analog telephone device or any
connection to any telephone wiring.” Id. at 71. Appellant also argues that
the constraint of connecting to telephone wiring and using a dial-up modem,
as well as the “additional complex powering-related hardware required by
the Ulrich reference, clearly makes the device less ‘user friendly.’” Id. at 72.
Appellant further contends that adding the powering mechanism of Ulrich
with “complicated hardware additions,” renders Bell ’785 improper for its
intended purpose of “being simple and ‘low/reduced resources.’” Id.
We have previously addressed Appellant’s arguments in Appeal No.
2019-003193, and for the same reasons as discussed therein, we do not find
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Appellant’s arguments persuasive here. See Appeal No. 2019-003139, pp.
51–58.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 79 and 80.
35 U.S.C. § 103(a) Rejections Over
Shneidman and Bell ’785
Claim 86
Claim 86 depends from claim 85 and recites “wherein said telephone
set is operative for automatically and periodically communicating with the
first remote information server at all times when said telephone set is in
operation.” Appeal Br. 88, Claims App. The Examiner relies on Bell ’785
to teach these limitations, and finds “[i]t would have been obvious to
incorporate this feature of Bell ’785 within Shneidman in order to
automatically retrieve the latest version of the desired HTML object on a
regular basis without human involvement, as taught by Bell ’785 (para.
0110).” Final Act. 25.
Appellant contends the Examiner improperly combines Shneidman
with Bell ’785. Appeal Br. 73–74. First, Appellant argues that the
Examiner’s rationale is moot because Shneidman is “silent regarding any
‘object’ in general, and regarding ‘HTML object’ in particular.” Id. at 73.
Second, Appellant argues that Shneidman teaches away from any
“automatic” operation because “is directed to a telephone device, where all
action are always initiated and handled by a human.” Id. Third, Appellant
argues that the Examiner’s rationale is conclusory, does not establish why
the combination is warranted, and is based upon impermissible hindsight.
Id. at 73–74. Fourth, Appellant argues that the addition of a browser
“clearly changes its configuration and requires major changes.” Id. at 74.
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Appellant’s arguments are not persuasive. As the Examiner points
out, Shneidman teaches displaying a web page on a browser on the
Telescreen’s touch screen. Shneidman ¶¶ 62–67; Ans. 26. We also agree
with the Examiner that Appellant’s teaching away argument is not
persuasive, as Bell ’785’s disclosure of automatic retrieval serves as an
alternative to human retrieval, and therefore does not rise to a teaching
away. See Ans. 26. Accordingly, we are not persuaded by Appellant’s
arguments that the Examiner has failed to provide sufficient rationale for
combining Shneidman and Bell ’785. Rather, we find the Examiner has
provided sufficient rationale to combine the references pursuant to the
guidelines in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).
See Final Act. 25; Ans. 26. Therefore, we are not persuaded the Examiner
erred.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 86.

35 U.S.C. § 103(a) Rejections over Bell ’785, Shneidman, Lavaud;
and Shneidman and Lavaud
Claims 37, 38, 100, 142, and 143

Appellant does not separately argue the remaining rejections. We,
therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent
claims 37, 38, 100, 142, and 143.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 15–32,
34–50, 53–61,
63–95, 98–103,
105–115, 118–
137, 139–146
112 ¶ 1 Written
Description
1, 2, 4, 5, 7–
10, 15–30,
32, 34–44,
82–94, 98–
103, 105–
107, 109,
110, 112–
115, 118–
135, 137,
139–146

3, 6, 31, 45–
50, 53–61,
63–81, 95,
108, 111,
136
82–85, 88–95,
98, 99, 101–
103, 105
102(e) Shneidman 82–84, 92–
95, 101–103,
105
85, 88, 89–
91, 98, 99
1–8, 10, 15–32,
34–36, 39–41,
44, 45, 47–50,
53, 54, 57, 58,
61, 63–78, 81,
87, 106–113,
115, 118–137,
139–141, 144–
146
103(a) Bell ’785,
Shneidman
1–8, 10, 15–
32, 34–36,
39–41, 44,
45, 47–50,
53, 54, 57,
58, 61, 63–
71, 74–78,
81, 87, 106–
113, 115,
118–137,
139–141,
144–146
72, 73
9, 46, 55, 56,
59, 60, 114
103(a) Bell ’785,
Shneidman, Bell
’723
9, 46, 55, 56,
59, 60, 114

37, 38, 142, 143 103(a) Bell ’785,
Shneidman,
Lavaud
37, 38, 142,
143

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Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
42, 43 103(a) Bell ’785,
Shneidman,
Yamada
42, 43
79, 80 103(a) Bell ’785,
Shneidman, Ulrich
79, 80
86 103(a) Shneidman, Bell
’785
86
100 103(a) Shneidman,
Lavaud
100
Overall
Outcome
1–10, 15–32,
34–50, 53–
61, 63–71,
74–95, 98–
103, 105–
115, 118–
137, 139–
146
72, 73

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART