Ex Parte 6,628,771 et al

Board of Patent Appeals and Interferences

Jan 14, 2011

90008635 (B.P.A.I. Jan. 14, 2011)

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.
90/008,635 05/10/2007 6,628,771 2027
7590 01/18/2011
HENRY KERNIUS
1139 Fairfield Place
OAKVILLE, ON L6M 2L9
CANADA
EXAMINER
CHOI, WOO H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAY J. FRISE
____________________

Appeal 2011-001057
Reexamination Control 90/008,635
Patent 6,628,771
Technology Center 3900
____________________

Before RICHARD TORCZON, ALLEN R. MacDONALD and
STEPHEN C. SIU, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2011-001057
Application 90/008,635

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added):
Claim 1: An apparatus for alerting a subscriber of a call waiting or a
distinctive call waiting condition without the subscriber having to
aurally monitor the subscriber's telephone receiver for call waiting
SAS tones or distinctive call waiting SAS tones comprising;
(a) call progress detector circuitry for detecting either a call
waiting SAS signal or a distinctive call waiting SAS signal;
(b) microcontroller set of instructions signals received from the
call progress detector circuitry;
(c) circuitry to recognize a first signal with a duty cycle or
cadence coupled with frequency and level indication of a call waiting
SAS signal or a distinctive call waiting SAS signal; wherein the
apparatus is configured to operate in either the presence or absence
of a band-width encompassing modem signal;
(d) alert circuitry to alert the subscriber visually when the
microcontroller set of instructions, stored in program memory,
executing logic determines either a call waiting or a distinctive call
waiting condition.
Rejections 2
1. The Examiner rejected claims 6-8 and 17 under 35 U.S.C.
§ 102(b) as being anticipated by Hepp US 4,751,726.
2. The Examiner rejected claims 1, 4, and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Fukao US 5,432,616.

2 In the Appeal Brief, Appellants do not argue any claims separately.
Appeal 2011-001057
Application 90/008,635

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3. The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of O’Horo US 5,519,767 and Lin
US 5,287,401.
4. The Examiner rejected claims 6-8 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Goldman US
4,995,074 and Lin.
5. The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Goldman, Lin, and Jefferson
(AT&T Technical Digest, No. 76, March 1985).
6. The Examiner rejected claims 1-3 and 14-16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Jefferson and Lin.
Appellants’ Contentions
At pages 18-19 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 1-20 under 35 U.S.C. §§ 102(b) and
103(a) because the Examiner’s claim construction is mistaken, particularly:
(1) As to claim 1:
The claims require that the device be capable of the
"detecting" operation if the call waiting signal is a standard call
waiting signal and capable of the "detecting" operation if the
call waiting signal is distinctive, [i.e.,] "either standard call
waiting or distinctive call waiting." see limitation found in
Claim 1:
"call progress detector circuitry for detecting
either a call waiting SAS signal or a
distinctive call waiting SAS signal"
In order to operate in this manner it must be capable of
detecting both, not one or the other, as misunderstood by
Examiner Choi. The device detects in the presence of either
signal, if it does not, it is not an improvement over the prior art.
None of the references cited in the reexamination detect both.
Appeal 2011-001057
Application 90/008,635

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(2) Also:
The second limitation misunderstood by reexamination
examiner Choi is the meaning of bandwidth encompassing
modem signal. Again, the device, in order to be an
improvement over the prior art, must be able to function when
the modem signal operates in the same frequency range and be
capable of operation when the modem signal is not in the same
frequency range. This limitation is properly expressed in the
claims as:
"wherein the apparatus is configured to
operate in either the presence or absence of a
bandwidth encompassing modem signal."
None of the references can operate when the modem
signal overlaps (encompasses) the frequency of the call waiting
signal (440Hz) because they are incapable of discerning the call
waiting signal. Examiner Choi read this limitation completely
out of the claims, citing prior art which satisfied only one of the
two conditions as anticipatory, completely ignoring the other
half of the requirement of the claim language.

Issue on Appeal
Did the Examiner err in rejecting claims 1-20 as being anticipated
and/or obvious because the Examiner’s claim construction is mistaken?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner.
Appeal 2011-001057
Application 90/008,635

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Particularly as to Appellants’ first contention, we agree with the
Examiner’s conclusion that “Appellants’ argument requires impermissible
rewriting of the limitation as ‘call progress detector circuitry for detecting
both a call waiting SAS signal and a distinctive call waiting SAS signal.’”
(Ans. 25).3
Particularly as to Appellants’ second contention, we agree with the
Examiner’s conclusion that Appellants’ argument “requires impermissible
rewriting of the limitation as ‘wherein the apparatus is configured to operate
in both the presence and absence of a bandwidth encompassing modem
signal.’ By the very words used in the claim, the apparatus is required to
operate in either the presence or absence of a bandwidth encompassing
modem signal, but not both, regardless of what the term ‘bandwidth
encompassing signal’ means.” (Ans. 25).4
Appellants’ contentions both argue for a conjunctive (“and”) reading
of the claims’ disjunctive (“or”) language. First, Appellants argue: “The

3 Even if we had been persuaded by Appellants’ contention, we note
that O’Horo at column 6, lines 53-57, teaches:
In a telecommunications system that generates multiple types of
call-waiting signals, the modem may individually recognize
these call-waiting signals and regenerate for the user whichever
one of these call-waiting signals has been received.

4 Even if we had been persuaded by Appellants’ contention, we note
that Appellants’ disclosure provides no particularized support for the
claimed “wherein the apparatus is configured to operate in either the
presence or absence of a band-width encompassing modem signal” which
was added to the claim by amendment. Therefore, once the Examiner has
shown that the prior art teaches or suggests Appellants’ disclosed structure,
it is reasonable to presume that this prior art structure has the claimed
property. Otherwise the structure found in Appellants’ disclosure would not
have been sufficient support to add this limitation by amendment.
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Application 90/008,635

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claims require that the device be capable of the ‘detecting’ operation if the
call waiting signal is a standard call waiting signal and capable of the
‘detecting’ operation if the call waiting signal is distinctive.” (App. Br.
18)(Emphasis added). Second, Appellants argue: “[T]he device . . . must be
able to function when the modem signal operates in the same frequency
range and be capable of operation when the modem signal is not in the same
frequency range.” (App. Br. 18) (Emphasis added). Further, as to the first
contention, Appellants argue that “[i]n order to operate in this manner it
must be capable of detecting both, not one or the other, as misunderstood by
Examiner Choi.” (App. Br. 18)(Emphasis added). We find it telling that
Appellants must resort to language (“and”) not found in the claim to explain
the claim while at the same time insisting that the Examiner has erred in
relying on the language (“or”) actually in the claim.
We conclude that Appellants’ arguments that the claims should be
given a different interpretation than is evident on their face are not an
adequate substitute for actually amending the claims to so limit them.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The USPTO is not required in the course
of prosecution to interpret claims in the same manner as courts are required
to during infringement proceedings. It would be inconsistent with the role
assigned to the PTO in issuing a patent to require it to interpret claims in the
same manner as judges who, post-issuance, operate under the assumption the
patent is valid. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.1997). The
question then is whether the PTO's interpretation of the disputed claim
language is “reasonable.” Id at 1055.
Appeal 2011-001057
Application 90/008,635

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.

DECISION
The Examiner's rejection of claims 1-20 is affirmed.
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)(v).

AFFIRMED

kis

HENRY KERNIUS
1139 Fairfield Place
OAKVILLE ON L6M 2L9 CA CANADA

DAVID NOCILLY
BOND, SCHOENECK & King
ONE LINCOLN CENTER
SYRACUSE, NY 13202-1355