Ex Parte Bluvband et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613551734 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 13/551,734 07/18/2012 Zigmund Bluvband 5109-MS YN-0002-C 9250 27571 7590 Ascenda Law Group, PC 333 W San Carlos St. Suite 200 San Jose, CA 95110 12/30/2016 EXAMINER WASHINGTON, ERIKA ALISE ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): patents @ ascendalaw.com tarek.fahmi@ascendalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZIGMUND BLUVBAND and MAX BLUVBAND Appeal 2016-001000 Application 13/551,734 Technology Center 2600 Before ERIC S. FRAHM, JOHN P. PINKERTON, and STEVEN M. AMUNDSON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—7 and 13—16, which constitute all of the claims pending in this application. Claims 8—12 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Silent Communication Ltd. as the real party in interest. App. Br. 2. Appeal 2016-001000 Application 13/551,734 STATEMENT OF THE CASE Introduction Appellants’ disclosed and claimed invention is generally directed to allowing a calling party to make a called party aware of its intention to establish a call session with it in one or more ways. Spec. 12.2 Claims 1 and 13 are representative and reproduced below (with the disputed limitations emphasized)'. 1. A method of initiating communication with a user of a first cellular phone from a second phone, comprising: initiating a voice communication between the first cellular phone and the second phone, from the second phone receiving, by the second phone, a status update sent to the second phone by the first cellular phone, including an indication that an operating mode of the first cellular phone is switched off, directly invoking by the second phone a function of the first cellular phone, which function causes the first cellular phone to switch on; and automatically reinitiating the voice communication upon the first cellular phone switching on. 2 Our Decision refers to the Final Office Action mailed Nov. 17, 2014 (“Final Act.”); Appellants’ Appeal Brief filed May 17, 2015 (“App. Br.”) and Reply Brief filed Oct. 19, 2015 (“Reply Br.”); the Examiner’s Answer mailed Aug. 19, 2015 (“Ans.”); and the original Specification filed July 18, 2012 (“Spec.”). 2 Appeal 2016-001000 Application 13/551,734 13. A method of initiating communication between a first cellular phone and a second phone, comprising: initiating a voice communication between the first cellular phone and the second phone, from the second phone; upon failing to establish a voice session with the first cellular phone, contacting the first cellular phone via a non-cellular communication link, which non-cellular communication link is local to the first cellular phone; receiving from the first cellular phone, via the non- cellular communication link a status update sent to the second phone by the first cellular phone. Rejections on Appeal Claims 13—16 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 2—3. Claims 1—3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bishop et al. (US 2006/0003758 Al; published Jan. 5, 2006) (“Bishop”) and Bach et al. (US 6,377,795 Bl; Apr. 23, 2002) (“Bach”). Final Act. 3^1. Claims 4—7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Serafat et al. (US 2005/0287994 Al; published Dec. 29, 2005) (“Serafat”) and Bach. Final Act. 4—6. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Buti et al. (US 2007/0207839 Al; published Sept. 6, 2007) (“Buti”) and Bach. 3 Appeal 2016-001000 Application 13/551,734 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Briefs and are not persuaded the Examiner has erred. Unless otherwise indicated, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2—7) and in the Examiner’s Answer (Ans. 8—13), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claim 1 under § 103(a) Appellants argue Bach does not teach or suggest the limitation “receiving, by the second phone, a status update sent to the second phone by the first cellular phone, including an indication that an operating mode of the first cellular phone is switched off,” as recited in claim 1. In particular, Appellants argue Bach relates only to a Special mode of operation, selected by a user, which includes automatic interaction with callers according to a specific protocol, and “do[es] not relate to indicating to a caller that the cellular phone is switched off, as recited in pending claims 1—3.” App. Br. 16—17. Appellants also argue that, when the cellular phone in Bach is in the Special mode, the phone “actually answers the incoming call and informs the caller of the special mode,” which is “clearly distinct from the indications recited in the pending claims.” Id. at 18—20. According to Appellants, Bach “teaches methods which involve answering the call, thereby being unrelated to situations in which the call is not answered, as recited in the pending claims.” Id. at 20. Appellants further argue that Bishop does not teach the limitation “directly invoking by the second phone a function of the first cellular phone, which function causes the first cellular 4 Appeal 2016-001000 Application 13/551,734 phone to switch on,” as recited in claim 1. Id. at 15, 20. According to Appellants, the phone in Bishop communicates with a network component and requests the network component to perform an activation of the called device, so “[i]t is the[] network component that invokes the function and not the calling phone directly, as recited in claims 1—3.” Id. at 20—21. We are not persuaded by Appellants’ arguments that the Examiner erred. Regarding the “receiving” limitation of claim 1, the Examiner finds, and we agree, that Bach teaches “sending a signal to the caller that the phone is in the special mode.” Ans. 11 (citing Bach 3:46—60); Final Act. 4 (citing Bach 2:66—3:14, 3:46—60). Considering the broadest reasonable interpretation of the term “status update,” as discussed by the Examiner (see Ans. 10—11), we agree with the Examiner that Bach’s teaching of the caller receiving the signal that the called phone is in the “special mode” teaches “receiving, by the second phone [i.e., the caller], a status update [i.e., special mode] sent to the second phone by the first cellular phone.” In regard to Appellants’ argument that Bach does not teach that “the cellular phone is switched off,” we are not persuaded of Examiner error because claim 1 does not recite such a limitation.3 Instead, claim 1 recites a status update “including an indication that an operating mode of the first cellular phone is switched off.” In that regard, we find that Bach’s teaching that the first cellular phone sends a signal that it is in the Special mode teaches or at least suggests that the normal communication or operating mode of the first cellular phone is switched off. We are also not persuaded by Appellants’ 3 In regard to Appellants’ argument that the called phone sends a status update to the calling phone that the phone is switched off, we note the Examiner finds “it is not clear how a phone that is off can send such an update as this is not adequately described in the specification.” Ans. 12. 5 Appeal 2016-001000 Application 13/551,734 argument that the phone in Bach “actually answers the incoming call and informs the caller of the special mode” and is, therefore, “distinct from the indications recited in claims 1—3” (see App. Br. 18—20) because, as the Examiner finds, sending a notification from a non-answering cellular device in not recited in claim 1. Ans. 11. Thus, we agree with the Examiner’s findings that Bach teaches or suggests “receiving, by the second phone, a status update sent to the second phone by the first cellular phone, including an indication that an operating mode of the first cellular phone is switched off,” as recited in claim 1. Regarding the claim 1 limitation of “directly invoking by the second phone a function of the first cellular phone, which function causes the first cellular phone to switch on” (the “directly invoking” limitation), we are not persuaded by Appellants’ argument that Bishop does not teach the second phone “directly” invoking a function of the first phone. First, the Examiner finds, and we agree, that Bishop teaches “the calling party can send a signal to power-on the wireless unit. Hence, an authorized calling party can directly invoke a function of the first cellular phone[],” which causes it to switch on. Ans. 12; see also Final Act. 4 (citing Bishop 10, 25, 28, 30, 37). Second, we are not persuaded by Appellants’ argument that “[i]t is the[] network component [of Bishop] that invokes the function and not the calling phone directly, as recited in claims 1—3” (see App. Br. 20-21), because the argument is unsupported by any evidence or citation to the record. Mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re 6 Appeal 2016-001000 Application 13/551,734 Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, for the reasons stated, we are not persuaded by Appellants’ arguments that the Examiner erred in (1) finding that Bach teaches the “receiving” limitation of claim 1, (2) finding that Bishop teaches the “directly invoking” limitation of claim 1, and (3) concluding that the combination of Bishop and Bach renders the subject matter of claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of claim 1, as well as claims 2 and 3, which are not separately argued. Rejection of Claim 4 under § 103(a) Appellants contend that Bach fails to teach or suggest “receiving from the first cellular phone, via a cellular network, a status update sent to the second phone by the first cellular phone, including an indication that an operating mode of the first cellular phone is a silent mode or a meeting mode,” as recited in claim 4. App. Br. 15—17. In particular, Appellants argue Bach’s teaching of a “special” operating mode does “not relate to indicating to a caller that the cellular phone is in meeting mode or silent mode, as recited in claims 4—7.” Id. at 17. We are not persuaded by Appellants’ arguments. For the reasons discussed supra regarding claim 1, we agree with the Examiner that Bach’s teaching of the caller receiving the signal that the called phone is in the “special mode” teaches “receiving from the first cellular phone [i.e., the called phone] a status update [i.e., special mode] sent to the second phone [i.e., calling phone] by the first cellular phone.” See Final Act. 5 (citing Bach 2:66—3:14, 3:46—60). We also agree with the Examiner that Bach teaches or suggests that the status update 7 Appeal 2016-001000 Application 13/551,734 includes “an indication that an operating mode of the first cellular phone is a silent mode or a meeting mode” because Bach teaches, when the called phone is in the Special mode, the phone sends a signal of an audible recording previously made by the user stating, for example, “This is XYZ. My phone is in the SPECIAL mode since I’m in a meeting.” Bach 3:46—51. Thus, for the reasons stated, we are not persuaded by Appellants’ arguments that the Examiner erred in (1) finding that Bach teaches the “receiving” limitation of claim 4 and (2) concluding that the combination of Serafat and Bach renders the subject matter of claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of claim 4, as well as claims 5—7, which are not separately argued. Rejection of Claim 13 under § 112, first paragraph In rejecting claims 13—16 under § 112, first paragraph, the Examiner states: Applicant has added new independent claim 13 which includes “receiving from the first cellular phone, via the non-cellular communication link a status update sent to the second phone”. This feature is not taught in the specification and is therefore new matter. In addition, dependent claim 16 states that the status update includes an indication of a current geographical location of the first cellular phone. This feature is also not described in the specification. As such, claims 13—16 will not be further examined on the merits. Final Act. 2—3. Appellants contend that Figure 4 and paragraph 12 of the Specification “clearly describe the features recited in pending claims 13 and 16.” App. Br. 10. Appellants argue paragraph 12 and Figure 4 describe the use of a local non-cellular link to reach the non-responsive phone, as in claim 13. Id. Appellants also argue that the pending claims recite a first cellular phone, a 8 Appeal 2016-001000 Application 13/551,734 second phone, and a non-cellular link, whereas these components are referred to in the specification as a third party (the “first cellular phone”), a calling party (the “second phone”), and a called party (the “non-cellular link”). Id. The Examiner finds paragraph 12 of the Specification describes a calling party, a called party, a third party, and a non-cellular link. Ans. 9. The Examiner notes that in attempting to relate these four entities to the claim language, Appellants state that the called party is the non-cellular link, but “[i]t is not clear how a communication link can be a called party.” Id. The Examiner finds that throughout the Specification the ‘“called party 16, 26’ is clearly the called first cellular phone.” Id. The Examiner further finds Appellants argue the third party is the first cellular phone, “but paragraph 007 of the specification states ‘a third party equipment may be any distant equipment being able to connect with called party . . . such as a remote GPS device’.” Id. According to the Examiner, Appellants are trying to reduce and relate the four entities described in the embodiment in paragraph 12 to the three entities in claim 13. Id. at 9—10. “[Compliance with the written description requirement is a question of fact.” Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (citing Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). ‘“Although [the applicant] does not have to describe exactly the subject matter claimed, . . . the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.’” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). 9 Appeal 2016-001000 Application 13/551,734 Sufficiency of written description requires that the original disclosure reasonably convey to a person having ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of filing. The exact level of detail required depends upon “the nature and scope of the claims and on the complexity and predictability of the relevant technology.” See AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). However, “actual ‘possession’ or reduction to practice outside of the specification is not enough. Rather ... it is the specification itself that must demonstrate possession.” Ariad, 598 F.3d at 1352; see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that § 112, first paragraph, “requires that the written description actually or inherently disclose the claim element”). “[The] requirement is ‘not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure. . . . Rather, it is a question whether the application necessarily discloses that particular device . . . .’” Id. at 1306 (quotingMartin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987)). Moreover, one shows “possession” by descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose. Id. 10 Appeal 2016-001000 Application 13/551,734 We are not persuaded by Appellants’ arguments that the Examiner erred. As the Examiner finds, the four entities described in paragraph 12 of the Specification (a calling party, a called party, a third party, and a non- cellular link) do not directly correlate to the three entities recited in claim 13 (first cellular phone, second phone, and non-cellular link). Thus, the disclosure of paragraph 12 does not literally convey to a person of ordinary skill in the art the subject matter of the “receiving” step of claim 13. Although Appellants attempt to correlate the entities described in paragraph 12 with the claimed entities in claim 13, Appellants’ explanations and arguments are not persuasive for the reasons stated by the Examiner. Ans. 9—10. Accordingly, on this record, we are not persuaded by Appellants’ arguments that a person of ordinary skill in the art would understand the references in paragraph 12 of the Specification, and the similar references in Figure 4, to (a) “third party 28” to provide support for the claimed “first cell phone,” or (b) “called party 16, 26” to provide support for the claimed “non- cellular communication link.” Thus, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s finding that claim 13 lacks written description support. Accordingly, we sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 112, first paragraph, as well as claims 14—16, which depend therefrom, and which inherit the same deficiencies as claim 13. DECISION We affirm the Examiner’s rejection of claims 1—7 under 35 U.S.C. § 103(a). 11 Appeal 2016-001000 Application 13/551,734 We affirm the Examiner’s rejection of claims 13—16 under 35 U.S.C. §112, first paragraph, for failing to comply with the written description requirement. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation