Ex Parte Brandt

Board of Patent Appeals and Interferences

Feb 16, 2012

11603264 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/603,264 11/21/2006 Jeffrey L. Brandt BLL0673USC2 8282
36192 7590 02/17/2012
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
WOO, STELLA L
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
02/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY L. BRANDT
__________

Appeal 2010-002261
Application 11/603,264
Technology Center 2100
__________

Before KARL D. EASTHOM, STEPHEN C. SIU, and ROBERT C.
CLARKE, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 3-11, and 13-20. Claims 2 and 12 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
The disclosed invention relates generally to an indication of a busy
condition to a calling party in a telecommunication system (Spec. 2).
Independent claim 1 is illustrative:
Appeal 2010-002261
Application 11/603,264

2
1. A method for providing an indication of a busy condition
to a user on a communications system, wherein the communication
system includes a called line, the method comprising:
determining if the called line is busy;
if the called line is busy, sending both a text message and a
voice message to the user to indicate to the user that the called line is
busy.
(App. Br. 5, Claims Appendix).

The Examiner relies upon the following references as evidence in
support of the rejections:
Kasday US 5,680,443 Oct. 21, 1997
Silverman US 6,035,031 Mar. 7, 2000
Engelke US 6,603,835 B2 Aug. 5, 2003

Claims 1, 3-5, 8-11, 13-15, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kasday and Engelke and claims 6, 7, 16,
and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kasday, Engelke, and Silverman.1

1 The Examiner rejects claims 7 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Kasday and Engelke but rejects claims 6 and 16, from
which claims 7 and 17 depend, respectively, under 35 U.S.C. § 103(a) as
being unpatentable over Kasday, Engelke, and Silverman. Since the
Examiner rejects claims 6 and 16 as being obvious over Kasday, Engelke ,
and Silverman, we assume that the Examiner also rejects dependent claims 7
and 17 as being obvious over Kasday, Engelke, and Silverman rather than
over Kasday and Engelke alone.

Appeal 2010-002261
Application 11/603,264

3
ISSUE

Did the Examiner err in rejecting claims 1, 3-11, and 13-20 as being
obvious over the cited prior art references?

FINDINGS OF FACT
1. The Specification discloses a known service “such as Prompted
Automatic Callback (PAC), [that] provides users with a voice
message informing the user that the line they are calling is busy”
(Spec. 1).
2. Engelke discloses a system “to take the digital signals and create a
visual display of the text information for the assisted user” (col. 9, ll.
18-20) , “providing a visually readable transcription of the text of the
telephone conversation so that the assisted user can read any words
that he or she cannot hear properly” (col. 9, ll. 22-25), and that “the
two functions can be combined . . . [to] provide conventional
telephone service and also include a display which can be used to
provide captioning for an assisted user” (col. 9, ll. 28-32).
3. Kasday discloses a “relay center platform” in a calling center that can
“detect . . . a busy signal” (col. 6, ll. 63-64) and, in response, the
“platform 42 automatically sends the message ‘BUSY, SHALL I
TRY AGAIN Q GA’ to the caller” (col. 7, ll. 19-21).

Appeal 2010-002261
Application 11/603,264

4
PRINCIPLE OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s finding that claims 1, 3-5, 8-11, 13-15,
and 18-20 would have been obvious to one of ordinary skill in the art over
Kasday and Engelke and that claims 6, 7, 16, and 17 would have been
obvious to one of ordinary skill in the art over Kasday, Engelke, and
Silverman for at least the reasons set forth by the Examiner (Ans. 5-6).
For example, we agree with the Examiner that combining the known
element of sending a message (such as a text message) to indicate a busy
condition of a communication line (FF 3 – Kasday) with the known element
of sending both voice and text messages to a user (FF 2 – Engelke) with no
change in their respective functions would have yielded no more than
predictable results – e.g., sending notifications to a user (by voice and text –
FF 2) that a communication line is busy. “The combination of familiar
Appeal 2010-002261
Application 11/603,264

5
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007).
Appellant argues that Kasday does not suggest “that both a text
message and a voice message are sent when the line is busy” (App. Br. 3)
and that Engelke also “does not disclose or suggest sending ‘both a text
message and a voice message to the user to indicate to the user that a called
line is busy’” (id.). However, the Examiner relies on the combination of
Kasday and Engelke rather than on either Kasday or Engelke individually.
“One cannot show nonobviousness by attacking references individually
where the rejections are based on combination of references. In re Merck &
Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986).
Appellant argues that Kasday or Engelke cannot be combined because
“the translator of Engelke et al. would not work with Kasday et al.” (App.
Br. 4) but does not further elaborate as to how the “translator of Engelke”
would not work in the Kasday system. Engelke discloses a “personal
interpreter translator” (col. 5, l. 61), which presumably is the “translator” to
which Appellant refers. Engelke discloses that the “personal interpreter” is
used as input into the system at the “telephone of a hearing person” (col. 5, l.
59). Likewise, Kasday discloses a system containing a “second voice
telephone” for a hearing or “unimpaired” person (see, e.g., col. 3, ll. 35-36).
Appellant has not sufficiently demonstrated how the “telephone of a hearing
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Application 11/603,264

6
person” of Elgelke would not work as the “second voice telephone” (i.e., a
telephone for a hearing person) in Kasday.
Claim 11 recites similar features as claim 1. Appellant provides no
additional arguments in support of claims 3, 4, 5, 8-10, 13-15, or 18-20 or in
support of claims 6, 7, 16, or 17 over the combination of Kasday, Engelke,
and Silverman.

CONCLUSION OF LAW
We conclude that the Examiner did not err in rejecting claims 1, 3-11,
and 13-20 as being obvious over the cited prior art references.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-11, and 13-20
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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