Ex Parte Andreason

Board of Patent Appeals and Interferences

Apr 28, 2010

09898480 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOMAS ANDREASON
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Appeal 2009-009070
Application 09/898,480
Technology Center 2600
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Decided: April 28, 2010
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Before JOHN C. MARTIN, MAHSHID D. SAADAT, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-5 and 21-25.1 App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We reverse.

STATEMENT OF THE CASE
Appellant invented an arrangement and a method in which a
subscriber communicates with a stationary telephony terminal via the
subscriber’s mobile radio telephone that is connected to a mobile radio
telephony network, thus enabling the subscriber to have access to user data
stored on the stationary telephony terminal even when the subscriber is
utilizing the mobile radio telephone.2
Claim 1, which further illustrates the invention, follows:
1. An arrangement in a telephony system comprising:
at least one mobile radio telephone for being radio connected to a
mobile radio telephony network in the telephony system via a radio link; and
at least one stationary telephony terminal,
wherein the stationary telephony terminal and the mobile radio
telephone each have a short range transceiver for intercommunication via a
short range wireless communication link;
wherein the stationary terminal or the mobile radio telephone is
arranged to establish a speech channel over the short range wireless
communication link; and
wherein the stationary telephony terminal is arranged to communicate
speech over the mobile radio telephony network via the mobile radio

1 Claims 7, 9-16, 18, and 20 have been allowed by the Examiner. See Ans.
3. Appellant’s Brief incorrectly states that claims 6, 8, 17, and 19-24 have
been cancelled (App. Br. 2). Claims 21-24 have not been canceled and are
included in the rejected claims.
2 See App. Br. 2-3.
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telephone with another telephone including to transmit and receive speech
signals over the speech channel established over the short range wireless
communication link.

The Rejection
The Examiner relies upon the following prior art references as
evidence of unpatentability:
Henon US 6,999,769 B1 Feb. 14, 2006
Tada US 7,020,467 B2 Mar. 28, 2006
Claims 1-5 and 21-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Henon and Tada (Ans. 5-12).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Appeal Brief (filed October 10, 2008), the Reply Brief (filed
February 20, 2009), and the Answer (mailed December 22, 2008) for their
respective details. In this decision, we have considered only those
arguments actually made by Appellant. Arguments which Appellant could
have made but did not make in the Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

Obviousness rejection over Henon and Tada
Appellant argues that the independent claims require a call to be
conducted by a stationary wireline phone through a mobile phone to a called
device, contrary to Henon’s transference of the call from a mobile phone to a
stationary wireline phone to conserve the mobile phone’s battery and thus
removing the mobile phone from the call altogether. See App. Br. 11. The
Examiner maintains that the combination of Henon and Tada discloses or
suggests a radio telephone network wherein a wireless telephone is
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connected to a wired or stationary phone in the same manner as the claimed
invention. See Ans. 14-15.

ISSUE
Does the combination of Henon and Tada disclose or suggest an
arrangement wherein a stationary wireline phone communicates speech over
a mobile radio telephony network via a mobile telephone?

FINDINGS OF FACT
1. Figure 1 of Henon is reproduced below:

Figure 1 discloses how an in-process telephone call is transferred between a
wireless telephone device 100 and a wireline telephone device 102 (col. 2, ll.
59-62).
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2. Figure 2 of Henon is reproduced below:

Figure 2 discloses a flowchart describing the in-process call transfer
technique (col. 2, ll. 40-41).
3. Henon discloses that when the mobile phone’s battery is almost
exhausted or for other reasons, the mobile phone requests the wired
telephone’s phone number and routes the wired telephone’s number to the
cellular network. The cellular network then transfers the call from the
mobile telephone to the wired telephone (col. 4, ll. 24-31).
4. Henon discloses that the mobile radio handset includes a transceiver for
conventional cellular communications as well as short-range radio (or
infrared transceiver 110) for communicating with a similarly provisioned
wired telephone (col. 4, ll. 19-23).
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PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing “‘some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441
F.3d at 988).

ANALYSIS
The Examiner’s finding is similar to Appellant’s wherein they both
agree that Henon employs a short range communication link to establish a
connection between a mobile telephone and a stationary wireline phone. See
App. Br. 8-9; Ans. 14-15; FF 4. However, Appellant argues that Henon’s
mobile network transfers a call via a wireline network in the conventional
way from the mobile phone to the stationary wireline phone, and when the
user answers the call on the stationary phone, the call on the mobile phone is
terminated or hung up. See App. Br. 11. Appellant further argues that the
claimed invention distinguishes over Henon because the claimed invention
relies upon the mobile telephone to maintain the connection between the
stationary wireline phone and the called device or terminal, and without the
mobile telephone, the connection is broken or the call is dropped. See id.
The Examiner concedes that Henon does not specifically disclose a
speech channel; however, Henon discloses a short range communication link
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and therefore it would be obvious, in view of Tada’s teachings of a speech
channel within a short range communications link, to modify Henon by
incorporating speech within its short range communication link (Ans. 16-
17).
We find Appellant’s argument to be persuasive and we will not
sustain the Examiner’s rejection of claims 1-5 and 21-25. We agree with
Appellant that Henon transfers the call from the mobile phone to the
stationary wireline phone. See FF 1-2. Further, Henon discloses that once
the call is transferred from the mobile phone to the stationary wireline
phone, the mobile phone is no longer needed to maintain the call to the
called device. See FF 2-3. Modifying Henon as the Examiner has proposed
by incorporating a speech channel does not prevent the rerouting or
transference of the call from the mobile phone to the stationary wireline
phone. Once Henon transfers or reroutes the call, the mobile phone is no
longer needed to communicate speech or to maintain the call. See FF 1-3.
Both independent claims 1 and 21 require the stationary telephony terminal
to communicate speech over the mobile radio telephony network via the
mobile radio telephone with another telephone, including receiving speech
signals over the short range wireless communication link. Henon and Tada
do not disclose or suggest such an arrangement.

CONCLUSION
The combination of Henon and Tada fails to disclose an arrangement
wherein a stationary wireline phone communicates speech over a mobile
radio telephony network via a mobile telephone.

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ORDER
We reverse the Examiner’s decision rejecting claims 1-5 and 21-25.

REVERSED

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