Ex Parte Bertino et al

Board of Patent Appeals and Interferences

Dec 13, 2010

10924542 (B.P.A.I. Dec. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY S. BERTINO and ERIC C. ROSEN
____________

Appeal 2009-006679
Application 10/924,542
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, 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.
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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27 and 29-49, which constitute all the claims pending in this
application. Claim 28 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to improving reliability for direct
communication, such as push-to-talk communication, between members of a
communicating group of wireless telecommunication devices. Each wireless
telecommunication device, such as a cellular telephone or PDA, periodically
informs a group communication server of its presence such that, upon
receipt of a request from a wireless device to bridge a direct communication,
the server will attempt to bridge the requested direct communication with the
target set of devices only if at least one of the wireless devices of the target
set has indicated its presence. (Abstract.)
Claim 1, which is illustrative of the invention, reads as follows:
1. A system for increasing successful direct
communications between a group of wireless
telecommunication devices on a wireless communication
network, comprising:
a plurality of wireless telecommunication devices
wherein each wireless telecommunication device being capable
of selectively directly communicating across the wireless
communication network with a target set of one or more other
wireless telecommunication devices within the plurality; and
a group communication server selectively receiving
requests to bridge direct communications between a
communicating wireless telecommunication device and the one
or more other wireless telecommunication devices in a target
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set for the communicating wireless telecommunication device
and then selectively bridging the requested direct
communication, the identity of the target set of one or more
other wireless telecommunication devices selectively available
to the group communication server,
wherein [(a)] each of the plurality of wireless
telecommunication devices of the target set periodically
informs the group communication server of the presence of that
wireless telecommunication device on the wireless
telecommunication network such that [(b)] upon the group
communication server receiving a request from a wireless
telecommunication device to bridge a direct communication,
the group communication server attempting to bridge the
requested direct communication with the target set of wireless
telecommunication devices only if at least one of the wireless
telecommunication devices of the target set has informed the
group communication server of the presence of that wireless
telecommunication device on the wireless network.
(Reference letters added.)
The Examiner relies on the following prior art in rejecting the claims:
Crocker US 2005/0009537 A1 Jan. 13, 2005
Malik US 2005/0044144 A1 Feb. 24, 2005
Ozzie US 2005/0102364 A1 May 12, 2005
Fitzpatrick US 2005/0143111 A1 Jun. 30, 2005
El-Fishawy US 7,069,032 B1 Jun. 27, 2006
Claims 1, 4, 5, 7-10, 13, 15, 16, 18, 21, 22, 24, 25, 30, 33, 35-37, 40,
43, and 45-47 stand rejected under 35 U.S.C. §103(a) as obvious over
Fitzpatrick in view of Malik.
Claims 2, 3, 11, 12, 19, 20, 26, 27, 31, 32, 38, 39, 41, 42, 48, and 492
stand rejected under 35 U.S.C. §103(a) as obvious over Fitzpatrick in view
of Malik and further in view of Crocker.

2 The grounds for rejection for claims 31, 32, 42, 48, and 49 are not
consistently stated in the Answer. Based on the similarity of the subject
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Claims 6, 14, 17, 23, and 34 stand rejected under 35 U.S.C. §103(a) as
obvious over Fitzpatrick in view of Malik further in view of Ozzie.
Claim 44 stands rejected under 35 U.S.C. §103(a) as obvious over
Fitzpatrick in view of Malik in view of El-Fishawy.
Claim 29 stands rejected under 35 U.S.C. §103(a) as obvious over
Fitzpatrick in view of Malik in view of El-Fishawy and further in view of
Crocker.
Rather than repeat the arguments here, we make reference to the
Briefs (Appeal Brief filed May 30, 2008; Reply Brief filed Sep. 2, 2008) and
the Answer (mailed Jul. 29, 2008) for the respective positions of Appellants
and the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Claims 1, 9, 10, 17, 18, 26, 30, 37, 40, and 47 are independent claims.
Appellants’ arguments for the patentability of claim 26 are substantially the
same as those presented for claim 1, and are used by Appellants to bolster
their arguments regarding claim 1 (App. Br. 28; Reply Br. 4). Appellants’
arguments for the patentability of claims 2-16, 18-25, 27, and 29-49 rely on,
repeat, or re-frame arguments made for the patentability of claim 1 or 26
(App. Br. 21-27, 29-30; Reply Br. 5-10), with no additional substantive

matter of these claims to other claims in this group, we treat claims 31, 32,
42, 48, and 49 as being rejected on the same grounds as the remainder of this
group of claims. See App. Br. 11 n.1; Reply Br. 2 n.1.
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arguments presented. Appellants argue the patentability of claim 17
separately. Therefore, we select claims 1 and 17 as the representative
claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). The
issues are:
1. Is the system of claim 1 obvious over the combination of
Malik’s teaching of allowing a message to be transmitted over a network to
an intended recipient only when an intended recipient is available on the
network with Fitzpatrick’s push-to-talk (PTT) system?
2. Does Ozzie disclose or suggest
a step for, if at least one of the wireless telecommunication
devices of the target set has not informed the group
communication server of the presence of that wireless
telecommunication device on the wireless network, polling the
wireless telecommunication devices to determine their presence
on the wireless network prior to bridging the requested direct
communication
as recited in claim 17?

FINDINGS OF FACT
Fitzpatrick
1. Fitzpatrick discloses a wireless PTT communication system
(Abstract; Fig. 1) in which messages are sent by a user using a PTT client
118, 122, 126, to a PTT group or individual (Fig. 1; ¶¶ [0002], [0022]).
2. Fitzpatrick discloses that the communication system includes a
PTT controller 112 (Fig. 1; ¶ [0022]).
3. Fitzpatrick discloses that the PTT clients 118, 122, 126 notify
the PTT controller 112 of their availability on the network (Fig. 3;
¶¶ [0028]-[0031]).
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Malik
4. Malik discloses a computer network 430 based instant
messaging (IM) system 400 in which messages are sent by a user 412 from
an IM client 415 to a second user 457 at a second IM client 455 (Abstract;
Fig. 4; ¶ [0045]).
5. Malik discloses that the IM system 400 includes one or more
IM servers 420, 425, 435, 450 (Fig. 4; ¶ [0045]).
6. Malik discloses that user 412, 457 Presence information,
indicating that the user 412, 457 is logged onto the network 430 is stored at
an IM server 450 (Fig. 4; ¶ [0061]).
7. Malik discloses that Presence information for an intended IM
recipient 457 is checked when a user 412 requests an IM session. The IM
session is established if the Presence information indicates that the IM
recipient 457 is logged in, and that a session is not established if the
Presence information indicates that the IM recipient 457 is not logged in
(Fig. 4; ¶ [0061])
Ozzie
8. Ozzie discloses a peer-to-peer collaborative computer system
(Title) in which in which each peer unit 802A-D notifies a presence server
812 of its connection status or, alternatively, the presence server 812 polls
the peer units 802A-D from time to time to determine their presence status
(Fig. 8; ¶ [0099]).
Crocker
9. Crocker discloses a single presence server 161 that may include
multiple presence servers each for individual services such as instant
messaging and/or push-to-talk services (Fig. 2; ¶ [0017]).
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PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. . . . [I]f a technique
has been used to improve one device, and a 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.
Id. at 417. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).

ANALYSIS
Rejection over Fitzpatrick and Malik
Regarding claim 1, we do not find Appellants’ various arguments
(App. Br. 28; Reply Br. 4) against the combinability of Malik and
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Fitzpatrick to be persuasive. As correctly found by the Examiner,
Fitzpatrick’s PTT system and Malik’s IM system are in related fields of
endeavor (Ans. 5). See KSR, 550 U.S. at 417. Both are concerned with
direct communications of messages on a network (FF 1, 4). Both Fitzpatrick
and Malik utilize servers or controllers to control and direct the message
sending process (FF 2, 5).
While Fitzpatrick and Malik may also be concerned with other
problems (see App. Br. 19), Fitzpatrick’s PTT system and Malik’s IM
system relate to the same problem identified by Appellants of ensuring that
messages are actually received by intended recipients. 3 Both Malik and
Fitzpatrick disclose that potential target communication devices inform a
server of the presence of the device on the network (FF 3, 6; Ans. 27;
compare phrase (a) of claim 1 supra). Malik discloses that it is
advantageous to use that information regarding the presence of the potential
target communication device to permit communication with a desired target
device only if the desired target device is present on Malik’s IM network (FF
7; Ans. 27-29; compare phrase (b) of claim 1 supra).
Therefore, we agree with the Examiner’s conclusion (Ans. 29-31) that
a person having ordinary skill in the art would have combined the references
in order to enhance the ability of Fitzpatrick’s PTT system to assure
messages are actually received by an intended (“target”) recipient. This is
accomplished by incorporating into the PTT controller, in addition to the

3 Appellants’ invention is directed to ensuring that PTT transmissions (i.e.,
messages) are actually received by one or more intended recipients (Spec.
¶ [0008]). Appellants’ invention solves this problem, in part, by the
functions described in phrases (a) and (b) of claim 1 supra (see also Spec.
¶¶ [0008]-[0009]).
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techniques disclosed by Fitzpatrick, Malik’s technique of only allowing a
message to be sent if an intended recipient indicates its availability on the
network. We find such combination would not require “surgical”
substitution of IM servers for a PTT controller (see, e.g., App. Br. 17-18;
Reply Br. 5), adding one or more IM servers to the PTT controller (see, e.g.,
App. Br. 17-18), or disabling any of the functions disclosed by Fitzpatrick
(see, e.g., App. Br. 17); nor would it involve the exercise of impermissible
hindsight (see, e.g., App. Br. 19; Reply Br. 4-5). In fact, Malik teaches a
technique for improving IM systems, which would be recognized by person
of ordinary skill in the art to enhance Fitzpatrick’s similar PTT system in the
same way. We further conclude that the actual application of Malik’s
technique to Fitzpatrick’s system is not beyond the person of ordinary skill
in the art. See KSR, 550 U.S. at 417, 421.
With respect to the rejection of claim 26, Appellants further contend
that Crocker teaches away from the combination of Fitzpatrick and Malik
(App. Br. 27-29; Reply Br. 7-8). In support of this contention, Appellants
point to Crocker’s statement that “although depicted as a single presence
server, presence server 161 may represent multiple servers each for
individual services such as IM and/or push-to-talk (PTT)” (Crocker ¶ [0017]
(emphasis added)). Appellants argue that the statement shows one of
ordinary skill in the art would view PTT and IM systems as separate and
individual services; thus the passage teaches away from a combination of
Fitzpatrick’s PTT system with Malik’s IM system (App. Br. 28; Reply Br.
4). The Examiner, citing Keller, correctly responds that “the test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art” (Ans. 31). We agree with the
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Examiner and also note that the passage cited by Appellants states that there
may be separate presence servers for instant messaging and push-to-talk
services (FF 9). We find this passage merely points to an alternative
embodiment using a single server, which is also disclosed by Crocker (FF 9)
and, as such, does not amount to a “teaching away,” as Appellants contend.
In view of the foregoing, we conclude that the Examiner did not err in
finding claim 1 obvious over the combination of Fitzpatrick and Malik and
claim 26 obvious over the combination of Fitzpatrick, Malik, and Crocker.
Accordingly, we sustain the rejections of claims 1-16, 18-27, and 29-49.
Rejection over Fitzpatrick, Malik, and Ozzie
Claim 17 recites, in pertinent part:
a step for [(c)] periodically informing a group
communication server from the wireless telecommunication
device of the presence of that wireless telecommunication
device on the wireless telecommunication network . . .
. . . .
a step for, [(d)] if at least one of the wireless
telecommunication devices of the target set has not informed
the group communication server of the presence of that wireless
telecommunication device on the wireless network, [(e)] polling
the wireless telecommunication devices to determine their
presence on the wireless network prior to bridging the requested
direct communication.
(Reference letters added.)
By citing to paragraph [0099] of Ozzie for disclosing the recited
limitations (d) and (e) (Ans. 23-24, 32), the Examiner emphasizes the use of
the word “alternatively” in Ozzies’s disclosure (Ans. 32). Appellants
correctly contend (Reply Br. 8-9) that Ozzie discloses two alternative
approaches to informing a group communications server of a device’s
presence on the network (see also FF 8). Appellants further contend that
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phrase (d) requires that if at least one of the target group of devices has not
informed the group communications server of its presence on the network in
accordance with phrase (c), then the group communications server polls the
devices as set forth in phrase (e) (Reply Br. 9). In other words, Appellants
argue that claim 17 requires the functions described in both phrases (c) and
(e) to be present in the claimed method with the function described in phrase
(d) being an operational link between the two. In contrast, the Examiner
takes the position that phrase (d) can be read as “alternatively” so that claim
17 reads on a method in which the functions described in phrase (c) or
phrase (e), but not necessarily both, may be present. We agree with
Appellants.
We conclude that the recited portion of claim 17 does not read on a
method in which the functions recited in phrases (c) and (e) are not both
present. Accordingly, we do not sustain the rejection of claim 17.

ORDER
The decision of the Examiner rejecting claims 1-16, 18-27, and 29-49
is affirmed. The decision of the Examiner rejecting claim 17 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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