12701817 (P.T.A.B. Jul. 31, 2017)

Ex Parte Basir

Patent Trial and Appeal BoardJul 31, 2017

12701817 (P.T.A.B. Jul. 31, 2017)

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. 12/701,817 02/08/2010 Otman A. Basir 67182-005PUS3 1824 26096 7590 08/02/2017 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER DOAN, KIET M ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 08/02/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTMAN A. BASIR Appeal 2017-000469 Application 12/701,817 Technology Center 2600 Before DEBRA K. STEPHENS, KEVIN C. TROCK, and JESSICA C. KAISER, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant asserts we have misapprehended or overlooked (1) “that the advantages are not provided to the Yamato system by the proposed modifications in light of Gurbani” (Req. for Reh’g 1), (2) “the requirement to provide a clear statement of the modification being made to the primary reference” {id. at 2), and (3) that “the ‘communication’ was an email message” in independent claim 33, but “the ‘communication’ is a telephone call” in dependent claims 42 and 44 {id.). In our Decision, we found that the Examiner’s combination of Yamato and Gurbani “incorporates Gurbani teachings — identifying a user for communications routing — into Yamato’s hands-free system” (Decision Appeal 2017-000469 Application 12/701,817 5 (citing Ans. 4—5; Final Act. 7)). We also found the Examiner articulated a sufficient reason why an ordinarily skilled artisan would have been motivated to combine Yamato and Gurbani and specifically, that Appellant had not persuaded us the Examiner’s articulated reasoning lacked rational underpinning or was unclear (Decision 5—6 (citing Final Act. 3,7; Adv. Act. 2)). Appellant contends that the Yamato and Gurbani combination’s “advantages,” identified in our Decision and by the Examiner, “are not provided to the Yamato system by the proposed modifications” (Req. for Reh’g 1—2). We are not persuaded by Appellant’s arguments. Specifically, Appellant’s argument that “nothing in Gurbani could improve ‘identifying which user is using the system’” or provide a “convenient manner of user identification” (id.) does not address the incorporation of Gurbani’s user identification into Yamato’s system (Ans. 4—5; Decision 5). Gurbani teaches a system that identifies a user, e.g., “a user profile 108 associated with the telephone 104B” (Gurbani 116; see Gurbani | 8). As set forth by the Examiner, “the user profile could be used as a means for identifying the user” (Ans. 4; Final Act. 7). The incorporation of Gurbani’s user identification into Yamato results in Yamato identifying users. In our Decision, we noted Appellant did not address that combination and, instead, argued a bodily incorporation of Gurbani into Yamato (Dec. 5). Appellant discusses alternative possibilities for combining Yamato and Gurbani that the Examiner does not rely on (Req. for Reh’g 1 (“any person with the phone could use both the Yamato hands-free system and the Gurbani features”), 2 (Yamato and Gurbani “simply operate in parallel”)). 2 Appeal 2017-000469 Application 12/701,817 Further, Appellant’s newly presented argument that “there is no improvement in ‘relieving the user of the need to engage with the mobile device while driving’” because “[t]hat is already the purpose achieved by Yamato” (Req. for Reh’g 2) is not persuasive. Gurbani teaches additional mobile communication features — user identification and routing communications to the identified users (Gurbani || 8, 18—20, 22—24). Modifying Yamato’s hands-free system to incorporate Gurbani’s added features provides additional hands-free use of Gurbani’s features. Next, Appellant contends “a clear statement of the modification being made to the primary reference (Yamato)” was not made in the rejection of independent claim 33 because “[i]t is unclear whether the Board is finding that the telephone call of Yamato or the email message of Gurbani is the claimed ‘communication’” (Req. for Reh’g 2). We are not persuaded. The type of communication, whether a telephone call or an email, is not the teaching from Gurbani that is incorporated into Yamato. Rather, Gurbani’s user-based communications routing is incorporated into Yamato such that communications, whatever the type, are routed based on the user (see Ans. A-5 ; see Final Act. 7). Appellant’s arguments rely on the premise that Gurbani teaches routing only for one specific type of communication, i.e., text; however, “[a] person of ordinary skill [in the art] is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellant did not provide persuasive argument or evidence that user-based communications routing — whether the communication routed is telephone, text, or some other data — would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog 3 Appeal 2017-000469 Application 12/701,817 Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. 418-19). Appellant further contends “the Board cannot. . . say that the ‘communication’ is a telephone call” in dependent claims 42 and 44 (Req. for Reh’g 2). We are not persuaded. As discussed supra, the skilled artisan would have understood the combination of Yamato and Gurbani teaches routing communications, generally. Furthermore, we are not persuaded that routing a particular type of communication, e.g., telephone communications or data communications, would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog Enters., 485 F.3d 1162 (internal citation omitted). Therefore, we find Appellant’s arguments that we misapprehended or overlooked arguments unpersuasive. DECISION Accordingly, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision, but have denied it with respect to making any modifications to the Decision. 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)(l)(iv). DENIED 4