Ex parte Bertocci

Board of Patent Appeals and Interferences

Nov 16, 1999

08498306 (B.P.A.I. Nov. 16, 1999)

The application was filed on July 5, 1995.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUIDO BERTOCCI
____________
Appeal No. 1998-1393
Application No. 08/498,3061
____________
HEARD: November 2, 1999
____________
Before THOMAS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 4 and 11. The appellant
filed an amendment after final rejection on May 2, 1997, which
was entered. We affirm.
Appeal No. 1998-1393 Page 2
Application No. 08/498,306
BACKGROUND
The invention at issue in this appeal relates to
telephony. Cordless telephones comprise two units: a base
unit and a handset unit. The invention incorporates features
into its handset unit that were previously available only at a
base unit. Specifically, a call screening feature allows a
user at the handset unit to listen to a message received over
telephone lines as it is being recorded by a telephone
answering device within the base unit. In addition, a caller-
identification (-ID) feature informs the user at the handset
unit of the identity of a calling party before the associated
call is answered.
Claim 4, which is representative for our purposes,
follows:
4. A cordless telephone system comprising:
a base unit for connecting to a telephone line
and for receiving a ring signal over said line, said
base unit including a telephone answering device for
responding to an incoming ring signal detected on
said line by going from an on-hook state to an off-
hook state on said line, a caller-ID device for
identifying a caller-ID signal detected on said
line, memory means for storing a telephone number
for comparing with said caller-ID signal and a voice
message associated with said telephone number, and
Appeal No. 1998-1393 Page 3
Application No. 08/498,306
said base unit further including a first radio
frequency transmitter for transmitting a first
plurality of information codes and a first radio
frequency receiver for receiving a second plurality
of information codes;
a handset unit with a second radio frequency
transmitter and a second radio frequency receiver
for respectively transmitting the second plurality
of information codes to the first receiver and
receiving the first plurality of information codes
from the first transmitter in the base unit, said
handset unit including loudspeaking means for
generating an audible acoustic signal upon receipt
of both a first and a second one from said first
plurality of information codes, said first one from
said first plurality of information codes being
indicative of a coincidence between said stored
telephone number and said caller-ID signal, and said
second one from said first plurality of information
codes being provided by said base unit for audibly
reproducing an incoming message being recorded in
said telephone answering device; and
control means in said handset unit for
activating said loudspeaking means in response to
receipt of said first one from said first plurality
of information codes for generating at the handset
unit said voice message associated with said
telephone number and in response to receipt of said
second one from said plurality of information codes
for audibly reproducing at the handset unit said
incoming message being recorded in the telephone
answering device, said control means further
including means for deactivating said loudspeaking
means in response to receipt of a third one from
said first plurality of information codes, said
third one from said first plurality of information
codes being provided by said base unit upon said
telephone answering device returning to an on-hook
state.
Appeal No. 1998-1393 Page 4
Application No. 08/498,306
The references relied on in rejecting the claims follow:
Fujioka 4,894,861 Jan. 16, 1990
Patsiokas et al. 5,063,588 Nov. 5, 1991
(Patsiokas)
Hasegawa 5,253,287 Oct. 12, 1993.
Claims 4 and 11 stand rejected under 35 U.S.C. § 103 as
obvious over Hasegawa in view of Fujioka and Patsiokas.
Rather than repeat the arguments of the appellant or examiner
in toto, we refer the reader to the brief and answer for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection and evidence
advanced by the examiner. Furthermore, we duly considered the
arguments of the appellant and examiner. After considering
the totality of the record, we are not persuaded that the
examiner erred in rejecting claims 4 and 11. Accordingly, we
affirm. Our opinion addresses the grouping and obviousness of
the claims.
Appeal No. 1998-1393 Page 5
Application No. 08/498,306
Grouping of the Claims
37 C.F.R. § 1.192(c)(7), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983).
The appellant states that claims 4 and 11 stand or fall
together for the appeal. (Appeal Br. at 3.) Conversely, the
appellant omits a statement that claims 4 and 11 do not stand
or fall together and reasons why the claims are separately
patentable. Therefore, we consider the claims to stand or
Appeal No. 1998-1393 Page 6
Application No. 08/498,306
fall together, with claim 4 as the representative claim of the
group. Next, we address the obviousness of the claims.
Obviousness of the Claims
We begin our consideration of the obviousness of the
claims by finding that the references represent the level of
ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573,
1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (finding that the
Board of Patent Appeals and Interference did not err in
concluding that the level of ordinary skill in the art was
best determined by the references of record); In re Oelrich,
579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("[T]he PTO
usually must evaluate ... the level of ordinary skill solely
on the cold words of the literature."). Of course, every
patent application and reference relies on the knowledge of
persons skilled in the art to complement its disclosure. In
re Bode, 550 F.2d 656, 660, 193 USPQ 12, 16 (CCPA 1977). Such
persons must be presumed to know something about the art apart
from what the references teach. In re Jacoby, 309 F.2d 513,
516, 135 USPQ 317, 319 (CCPA 1962). The appellant make two
Appeal No. 1998-1393 Page 7
Application No. 08/498,306
arguments regarding the obviousness of claims 4 and 11. We
address these seriatim.
First, the appellant argues, “one skilled in the art
would not look to Fujioka to achieve the automatic screening
operation in a cordless telephone handset unit as applicants
[sic] have disclosed and claimed.” (Appeal Br. at 4.) The
examiner replies, “Fujioka teaches that it is known in the
telephony art (including wireless telephony) to provide voice
notification when a particular caller id matches a list stored
in memory at the telephone.” (Examiner’s Answer at 8.) We
agree with the examiner.
The appellant errs in determining the scope of the prior
art. A reference is analogous art if it is within the field
of an inventor's endeavor or is reasonably pertinent to the
particular problem with which the inventor was involved. In
re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443, 1445 (Fed.
Cir. 1992); In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058,
1060 (Fed. Cir. 1992). Furthermore, a reference is reasonably
pertinent if, because of the matter with which it deals, it
Appeal No. 1998-1393 Page 8
Application No. 08/498,306
logically would have commended itself to the inventor's
attention in considering his problem. If the reference’s
disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports
use of that reference in a rejection. An inventor may have
been motivated to consider the reference when making his
invention. Clay, 966 F.2d at 659, 23 USPQ2d at 1061.
Here, a problem with which the appellant are involved is
the “caller-ID feature,” (Spec. at 2), which informs a user
“of the identity of a pre-identified calling party before the
call is answered.” (Id.) Similarly, the problem that Fujioka
solves relates to “telephone networks ... [that] offer an
originating number notifying service ....” Col. 1, ll. 15-17.
The reference “enables the terminating subscriber of a c[a]ll
from a registered originating party to judge the originating
party from an audible indication ....” Id. at ll. 37-40.
Accordingly, both the claimed invention and Fujioka address
the problem of caller-identification. Therefore, the
reference reasonably pertains to the particular problem with
which the appellant was involved and is analogous art.
Appeal No. 1998-1393 Page 9
Application No. 08/498,306

Second, the appellant summarizes the remainder of his
arguments as follows.
There is ... no disclosure or suggestion provided in
any of these cited references, of a voice message
being stored in memory in a base unit of a cordless
telephone and then being transmitted to a handset
unit, also in the cordless telephone, where the
voice message is generated in a loudspeaker in the
handset unit. (Appeal Br. at 5.)
The examiner replies, “Since the cited references disclose
that it is known in the art to forward caller identification
information (whether visual or audible), the combination of
Hasegawa, Fujioka, and Patsiokas renders the present invention
obvious ....” (Examiner’s Answer at 8-9.) We agree with the
examiner.
The appellant errs in considering the references
individually. “Non-obviousness cannot be established by
attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981)). In determining obviousness, furthermore,
Appeal No. 1998-1393 Page 10
Application No. 08/498,306
references are read not in isolation but for what they fairly
teach in combination with the prior art as a whole. Id. at
1097, 231 USPQ at 380.
Here, the rejection is based on the combination of
Hasegawa, Patsiokas, and Fujioka. The appellant admits that
Hasegawa “describes a cordless telephone system ....” (Appeal
Br. at 3.) As is conventional, the system of the reference
includes a base unit 1 and a handset unit 4. Fig. 1. The
appellant further admits that Hasegawa’s system “includes an
answering system for automatically answering an incoming call
from another terminal through a telephone line.” (Appeal Br.
at 3.) Moreover a, call monitoring feature of the reference
allows a user at a handset unit to listen to a message
received over telephone line 2 as it is being recorded by an
automatic recording circuit 14 within the base unit. Col. 6,
ll. 33-36, 62-66.
Patsiokas teaches a caller-ID feature that, the appellant
admits, “provides called subscribers with the identity of
calling subscribers.” (Appeal Br. at 4.) When a caller 106
Appeal No. 1998-1393 Page 11
Application No. 08/498,306
wants to speak with a subscriber 106', the caller 106
transmits a call request 112 to a central station. The call
request includes data identifying the caller, i.e., caller-ID
data. The central station transfers the caller-ID data to the
subscriber. The reference permits a “called subscriber [to]
decide whether to answer a call received during a meeting,
interview, conference or the like, or during periods when the
called party would rather not be interrupted.” Col. 1, ll.
32-36. In short, Patsiokas teaches the desirability of
providing caller-ID data to the portable units of a
communications system.
The combined teachings of Hasegawa and Patsiokas
(collectively Hasegawa-Patsiokas) would have suggested
providing Patsiokas’s caller-ID data to Hasegawa’s handset.
The motivation to do so would have been to permits a user to
decide whether to answer a call.
The appellant also admits, “Fujioka teaches the pre-
registering of subscribers' telephone numbers so that when any
one of the registered subscribers' number coincides with the
Appeal No. 1998-1393 Page 12
Application No. 08/498,306
originating subscriber's number, the termination subscriber
can know the originating party from the audible indication
before answering the call.” (Appeal Br. at 4.) The appellant
further admits, “Fujioka employs a caller-ID device for use in
identifying a caller for audibly announcing that caller via a
speaker ....” (Id.) Specifically, the reference provides a
voice message containing “ID information such as the
originating subscriber’s name.” Col. 4, ll. 38-39.
Fujioka teaches that the caller-ID feature generally “can
be used to eliminate the necessity of answering unwanted
harassing calls or frequent sales calls ....” Col. 6, ll. 7-
9. The reference’s use of the voice message to provide
caller-ID information specifically, enables a user to identify
a caller when the user is away from his telephone. Col. 1,
ll. 25-29.
The combined teachings of Hasegawa-Patsiokas and Fujioka
would have suggested providing Fujioka’s caller-ID voice
message to Hasegawa’s handset. The motivation to do so would
have been to permit a called subscriber to decide whether to
Appeal No. 1998-1393 Page 13
Application No. 08/498,306
answer a call when he is too far from the handset to read a
visual indication of caller-ID data.
In summary, the combined teachings of the references
would have suggested storing a voice message in memory in a
base unit of a cordless telephone and then transmitting the
message to a handset unit, also in the cordless telephone,
where the voice message is generated in a loudspeaker in the
handset unit. For the foregoing reasons, the examiner has
established a prima facie case of obviousness. Therefore, we
affirm the rejection of claims 4 and 11.
We end our consideration of the obviousness of the claims
by noting that the aforementioned affirmance is based only on
the arguments made in the brief. Arguments not raised in the
brief are not before us, are not at issue, and are thus
considered waived.
CONCLUSION
To summarize, the examiner’s rejection of claims 4 and 11
under 35 U.S.C. § 103 is affirmed.
Appeal No. 1998-1393 Page 14
Application No. 08/498,306
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1393 Page 15
Application No. 08/498,306
LLB/kis
BIRCH, STEWART, KOLASCH & BIRCH
P. O. Box 747
Falls Church, VA 22040-0747