Ex Parte Amaitis et al

Patent Trial and Appeal Board

Jan 29, 2018

11839412 (P.T.A.B. Jan. 29, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/839,412 08/15/2007 Lee M. Amaitis 04-7136-4 8475
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
01/31/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE M. AMAITIS, JOSEPH M. ASHER,
HOWARD W. LUTNICK, DARRIN M. MYLET,
and ALAN B. WILKINS
Appeal 2016-002973
Application 11/839,412
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 2-6 and 11-13 as unpatentable under 35 U.S.C. § 103(a)
over Wells (US 2003/0064805 Al, pub. Apr. 3, 2003), Nelson (US 2003/
0148809 Al, pub. Aug. 7, 2003), Walker (US 6,139,431, iss. Oct. 31, 2000),
and Katz (US 2004/0259631 Al, pub. Dec. 23, 2004).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify CFPH, LLC as the real-party-in-interest. Appeal Br. 2.
2 This case came before the Board for regularly scheduled oral hearing on
January 23, 2018.
Appeal 2016-002973
Application 11/839,412
THE INVENTION
Appellants’ invention relates to mobile communications on a wireless
network. Spec. 4. Independent Claim 5, reproduced below, is illustrative of
the subject matter on appeal.
5. An apparatus, comprising a computing device operable
to:
determine that a user of a mobile phone is within a first area
and that a current time is during a second predefined period of
time,
in which the user is permitted to at least one of make
voice calls and receive voice calls via the mobile phone
from within the first area during a first predefined period of
time, and
in which the user is not permitted to at least one of
make voice calls and receive voice calls via the mobile
phone from within the first area during the second
predefined period of time; and
not permit the user to at least one of make voice calls and
receive voice calls via the mobile phone based at least in part on
determining that the user is within the first area and that the
current time is during the predefined second period of time; and
in which the user is permitted to at least one of make voice
calls and receive voice calls via the mobile phone from within a
second area during the second predefined period of time; and
in which the computing device is further operable to:
determine that the user has moved from within the first
area to within the second area during the second predefined
period of time; and
permit the user to at least one of make voice calls and
receive voice calls via the mobile phone based at least in
part on determining that the user has moved from within the
first area to within the second area during the second
predefined period of time.
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Appeal 2016-002973
Application 11/839,412
OPINION
Appellants argue claims 2-6 and 11-13 as a group. Appeal Br. 6-9.
We select claim 5 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Wells discloses a computing device that is
operable to determine that a user of a mobile device is located within a
predefined area during a predefined period of time. Final Action 3. The
Examiner relies on Nelson for enabling or disabling activities on a gaming
machine based on location and timing criteria. Id. at 4. The Examiner relies
on Walker as enabling and disabling voice telephone communications on a
gaming machine. Id. The Examiner relies on Katz as disclosing the use of a
mobile phone as a gaming device. Id. at 4-5. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the teachings of Wells, Nelson, Walker and Katz
to achieve the claimed invention. Id. at 5. According to the Examiner, a
person of ordinary skill in the art would have done this to prevent a user
from bothering nearby patrons, such as in a movie theater, and to use
common devices, such as a cellphone, for phone call and gaming
applications. Ans. 3.
Appellants traverse the Examiner’s rejection by arguing that Nelson,
Walker, and Katz are not related to making voice calls. Appeal Br. 6. The
Examiner responds to this argument by pointing out, correctly, that one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. Ans. 2, citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
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Application 11/839,412
Next, Appellants argue that Nelson merely discloses silencing a
machine, but that silencing is not the same as enabling or disabling voice
call capability within the meaning of claim 5. Appeal Br. 6. Appellants
argue that “silencing” merely entails turning off the ringer function of a cell
phone, but does not prevent the making and receiving of voice calls. Id.
(“patrons in the movie theater are still able to make and receive voice calls
even when the ringer function is turned off or set to vibrate.”).
Appellants’ argument is unpersuasive as it mischaracterizes Nelson.
Paragraph 52 of Nelson discloses:
if the rules of a particular jurisdiction prohibit a gaming
machine from being located within a certain distance from a
particular area, such as a family area, the monitoring system can
be configured to automatically monitor the location between a
family area and the gaming machines. Game play may also be
suspended in certain areas or locations after a certain time of
day or on Sundays based on current regulations.
Nelson, 52 (emphasis added). Thus, contrary to Appellants’ espoused
position, Nelson teaches suspending the operation of gaming machines in
certain areas and/or during certain predefined periods of time, not mere
silencing. Thus, since it is known to suspend gaming operations at
predefined locations and times, the question remains whether it obvious to
suspend voice calling at predefined locations and times. We answer that
question in the affirmative.
As correctly found by the Examiner, Walker enables and disables
telephone voice calls based on satisfying certain specified criteria related to
a gaming device. Final Action 4. Katz discloses electronic gaming on a
mobile phone. Katz 155. Nelson discloses enabling and disabling a
gaming device based on location and time. Nelson 52. The fact that
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Appeal 2016-002973
Application 11/839,412
Nelson’s enabling/disabling feature is used for gaming purposes instead of
voice calls would not prevent a person of ordinary skill in the art from
applying Nelson’s teaching to achieve a similar purpose. It is not necessary
for the prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016
(CCPA 1972). “A reference may be read for all that it teaches, including
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418-421
(2007).
The Examiner’s reasoning of not disturbing movie theater patrons
with voice calls is sufficient motivation to combine the prior art in the
manner claimed. Ans. 3. The noise and disruption caused by the modem
proliferation of mobile telephones is a well-known and ubiquitous problem
that is not limited to movie theaters. The same well-known problem arises,
inter alia, in school classrooms, public libraries, courtrooms, and churches.
One obvious solution to a dismptive noise is to simply turn it off. “One of
the ways in which a patent’s subject matter can be proved obvious is by
noting that there existed at the time of invention a known problem for which
there was an obvious solution encompassed by the patent's claims.” KSR
at 419-420. “Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” Id.
at 420. The Examiner’s cited references amply demonstrate that it was
known to suspend gaming activities on a mobile device based on location
and time criteria. If a technique has been used to improve one device, and a
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Application 11/839,412
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. KSR at 417. Here, Appellants
provide neither evidence nor persuasive technical reasoning showing that
suspending voice calls on a mobile phone based on location and time criteria
requires more than the exercise of ordinary skill.3
Appellants argue that the Examiner fails to provide sufficient reason
to modify the prior art to “not allow voice calls.” Appeal Br. 8. However,
the Examiner’s reasoning based on a movie theater example discussed above
is sufficient reason to modify the prior art as claimed. Ans. 3—4.
Finally, Appellants argue that combining the prior art in the manner
claimed would “frustrate the purpose of Walker.” Appeal Br. 8. We
disagree. Walker teaches conditionally enabling and disabling voice calls.
Walker, Abstract. A person of ordinary skill in the art would readily see that
such capability is useful for purposes other than rewarding game play. “A
reference may be read for all that it teaches, including uses beyond its
primary purpose.” Mouttet, 686 F.3d at 1331. Enabling and disabling voice
calling based on location and time conditions is an obvious, alternative,
useful purpose.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
3 Indeed, the lack of any teaching disclosure in Appellants’ Specification on
how to suspend voice calling in specified areas and during specified terms
indicates that the Appellants presume that such is already known and
familiar to the person of ordinary skill in the art. See Spec. 8 (“any known
or future transport technologies”); see also Spec. 13-16 (disclosing the use
of known and conventional geographic location technology).
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Application 11/839,412
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 2-6 and 11-13.
DECISION
The decision of the Examiner to reject claims 2-6 and 11-13 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)(l)(iv).
AFFIRMED
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