Ex Parte Benco

Patent Trial and Appeal Board

Feb 25, 2016

10698783 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/698,783 10/31/2003
48116 7590
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
02/25/2016
FIRST NAMED INVENTOR
David S. Benco
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUTZ200250 1742
EXAMINER
DEAN, RAYMOND S
ART UNIT PAPER NUMBER
2649
MAILDATE DELIVERY MODE
02/25/2016 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 DAVID S. BENCO
Appeal2014-004457
Application 10/698, 783
Technology Center 2600
Before JASON V. MORGAN, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5, 7-17, and 23. Claims 6, 18-22, and 24--26 have
been cancelled. (Br. 11-14). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-004457
Application 10/698,783
STATEMENT OF THE CASE
Appellant's invention is directed to a method and apparatus for
providing mobile-to-mobile video capability to a network while also
providing user control of the transmission to accommodate the preferences
of the called party. (Spec. i-f 1 ). Claim 1, reproduced below with the
disputed limitations in italics, is representative of the claimed subject matter:
1. A system to provide transmission of video data from a first
mobile station to a second mobile station in a network, the system
compnsmg:
a mobile switching center, wherein the mobile switching center
compnses:
a call recognition module operative to recognize a call
from the first mobile station to the second mobile station as
including the video data and, if the video data is present,
validate the second mobile station as capable of receiving the
video data and determine a deli-vel}' preference for the second
mobile station based at least in part on information retrieved
from at least one database, wherein a subscriber sets the
delivery preference by selecting immediate delivery, delayed
delivery, blocked delivery, or conditional delivery;
a storage module operative to have stored therein the
video data;
an announcement module operative to selectively prompt,
based on the delivery preference, the second mobile station if
the second mobile station is validated, receive a response to the
prompt from the second mobile station and selectively forward
the response; and,
a control module operative to store the video data in the
storage module upon recognition, receive the response from the
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Application 10/698,783
announcement module and, based on at least one of the delivery
preference and the response, perform at least one of maintaining
the video data in the storage module, deleting the video data
from the storage module, and forwarding the video data to the
second mobile station.
The Examiner's Rejections
Appellant seeks our review of the following rejections:
Claims 1-2, 4--5, 7, 10-15, 19, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofNayak (US 2004/
0180689 Al; published Sept. 16, 2004), Oswald et al. (US 2005/0088513
Al; published Apr. 28, 2005), Shinohara (US 2002/0132608 Al; published
Sept. 19, 2002), Pyhalammi et al. (US 2003/0045273 Al; published Mar. 6,
2003) and Ellis (US 2004/0103434 Al; published May 27, 2004).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofNayak, Oswald, Shinohara,
Pyhalammi, Ellis, and Tervo et al. (US 2004/0207719 Al; published Oct.
21, 2004).
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofNayak, Oswald, Shinohara,
Pyhalammi, Ellis, and Cox et al. (US 2001/0044325 Al; published Nov. 22,
2001).
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofNayak, Oswald, Shinohara,
Pyhalammi, Ellis, and Turunen (US 7,289,792 Bl; issued Oct. 30, 2007).
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Appeal2014-004457
Application 10/698,783
ANALYSIS
Dispositive Issue: Did the Examiner err in finding the combination of
Nayak, Oswald, Shinohara, and Ellis teaches or suggests to "selectively
prompt, based on the delivery preference, the second mobile station" as
recited in claim 1 and commensurately recited in claim 1 O?
Appellants contend Shinohara does not teach or suggest selectively
prompting based on the delivery preference. (Br. 6). Rather, Appellant
contends that in Shinohara, the incoming call notification is always
provided, regardless of any delivery preference. (Br. 6-7).
We are persuaded by Appellant's arguments. Shinohara is directed to
a mobile phone that originates a transmission to a destination mobile phone
detecting the media types and formats of a multimedia message that can be
received by those destination mobile telephones. (Shinohara Abstract). The
Examiner relies on paragraphs 45--4 7 of Shinohara to teach or suggest the
disputed limitation. (Final Act. 5; Ans. 15-16). These paragraphs describe
a scenario where mobile telephone 101 receives information regarding what
data formats mobile telephones 102, 103, and 104, are able to receive.
(Shinohara i-f 45). Upon finding out that mobile telephone 103 cannot receive
data of a certain format, the user of mobile telephone 101 decides whether to
transmit the multimedia message to all of mobile telephones 102, 103, and
104 without modifying the data, transmit the multimedia message only to
mobile telephones 102 and 104, or transmit the multimedia message with a
modification to the data so that it may be received by all of mobile
telephones 102, 103, and 104. (Shinohara i-f 46). In the example relied upon
by the Examiner, the user of 101 decides to transmit the messages to all of
mobile telephones 102, 103, and 104 without modifying the data. (Shinohara
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Appeal2014-004457
Application 10/698,783
il 4 7). Each of mobile telephones 102, 103, and 104 receive an incoming call
notification that a multimedia message has arrived. (Shinohara i-f 4 7).
The Examiner relies on this incoming call notification as the prompt
in Appellant's claim. (Final Act. 5). The Examiner finds the incoming call
notification provided to the second mobile terminal with the capability of
receiving a multimedia message of a particular format is effectively a mobile
terminal with an immediate delivery preference. (Ans. 15-16). The
Examiner further finds that no incoming call notification is provided to a
second mobile terminal without the capability of receiving a multimedia
message of a particular format, and such a terminal is thus effectively a
terminal with a delivery preference different from immediate delivery.
(Ans. 16).
We find the Examiner has not shown that Shinohara teaches or
suggests selectively prompting the destination terminal based on a delivery
preference. As described in Shinohara, ifthe user decides to transmit the
multimedia message (which is permitted regardless of whether the
destination mobile device can receive the data format), the destination
mobile device receives an incoming call notification. (Shinohara i-fi-1 46-47).
Logically then, if the user decides not to transmit the multimedia message,
the destination mobile device will not receive an incoming call notification.
However, even if we equate the first scenario, where the user decides to
transmit the multimedia message, with a prompt based on an immediate
delivery preference, the Examiner has only shown Shinohara always
prompts based on an immediate delivery preference. The Examiner has not
shown Shinohara selectively prompts based on delivery preference, merely
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Application 10/698,783
that Shinohara does not prompt at all if no multimedia message has been
transmitted, which we find is not based on delivery preference.
Since we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant's other arguments. For
the foregoing reasons~ we sustain the Examiner's 35 lJ.S.C. § 103(a)
rejection of independent claims 1 and 10. For the same reasons, we sustain
the Examiner's 35 U.S.C. § l 03(a) rejection of dependent claims 2----5, 7----9,
11----17, and 23, which were not argued separately.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 7-17,
and 23 is reversed.
REVERSED
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