Ex Parte Butterworth

Patent Trial and Appeal Board

Sep 25, 2012

09858174 (P.T.A.B. Sep. 25, 2012)

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.
09/858,174 05/15/2001 Martyn Ian Butterworth 40369.001 1570
75398 7590 09/26/2012
Musick Peeler & Garrett, LLP
One Wilshire Boulevard
Suite 2000
Los Angeles, CA 90017
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
09/26/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTYN IAN BUTTERWORTH
____________

Appeal 2011-005074
Application 09/858,174
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005074
Application 09/858,174

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 4 to 8, and 18 to 25. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A method for transmitting pre-recorded images using
telecom networks, the method comprising the steps of:
detecting when a telecommunications apparatus is used by a
caller to send a message to a recipient, establishing a
connection with a telecommunications apparatus of the
recipient, thereafter, displaying a supplementary image at the
telecommunications apparatus of the caller in addition to, or to
replace, conventional connection messages, if the recipient does
not answer during a predetermined time period, then replacing
the supplementary image by connection message text, and if,
during transmission of the supplementary image to the caller, a
connection is established between the caller and the recipient,
transmission of the supplementary image is terminated.

Appellant appeals the following rejections:
1. Claims 1, 4 to 8, 18, and 21 to 25 under 35 U.S.C. § 102(b) as anticipated
by Gregorek (US 5,428,670, iss. Jun. 27, 1995).
2. Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Gregorek in view of Gabbard (US 6,205,432 B1, iss. Mar. 20, 2001).

Appeal 2011-005074
Application 09/858,174

3
ANALYSIS
Anticipation
The Appellant argues that Gregorek does not disclose: “if the recipient
does not answer during a predetermined time period, then replacing the
supplemental image by connection message text” as required by claim 1.
The Examiner relies on column 5, lines 35 to 65 for teaching this subject
matter.
We find that Gregorek discloses at column 5, lines 35 to 65 that if a
second telephone is idle when a calling party has placed a call, the system
produces an audible ring back signal or plays a prerecorded announcement
to the calling party. If the telephone is busy, the system activates either a
busy signal or plays a series of pre-recorded announcements to the calling
party for a predetermined period of time while periodically checking to
determine if the second telephone is still busy. Gregorek does not disclose
that if the call continues to be busy, the recorded announcement is replaced
by a connection message. Gregorek only discloses that the system continues
to check to see if the second telephone is still busy but does not disclose any
replacement of the message if the second telephone continues to be busy for
a predetermined time.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and claims 4 to 8 dependent thereon.
Claim 18 also includes the recitation of a means for responding to the
detecting a signal by conveying a supplemental image and if the recipient
does not answer during a predetermined time period replacing the
Appeal 2011-005074
Application 09/858,174

4
supplementary image by a connection message. We will also not sustain this
rejection as it is directed to claim 18 and claims 21 to 25 dependent thereon
for the same reasons.

Obviousness
In this rejection the Examiner relies on Gregorek for teaching the
subject matter we found lacking in the anticipation rejection. As such, we
will not sustain this rejection of claims 19 and 20 for the same reasons given
above for the anticipation rejection.

DECISION
We REVERSE the Examiner’s § 102(b) and § 103(a) rejections.

REVERSED

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