Ex Parte Cai et al

Patent Trial and Appeal Board

Oct 30, 2013

11833425 (P.T.A.B. Oct. 30, 2013)

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.
11/833,425 08/03/2007 Yigang Cai CAI 117-28 7856
50525 7590 10/31/2013
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
COLLINS, JOSHUA L
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
10/31/2013 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 YIGANG CAI and ALOK SHARMA
____________

Appeal 2011-004834
Application 11/833,425
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
JUSTIN BUSCH, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004834
Application 11/833,425

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention is directed to a dual mode device
wherein a subscriber server provides a voice mail notification while the dual
mode device is receiving service from another network. Spec. 8.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A subscriber server adapted to notify a user of a communication
device of a waiting voicemail message, where the communication device is
dual mode and is able to receive service from a first communication network
and a second communication network, the subscriber server comprising:
a first interface adapted to receive a voicemail waiting indicator in a
first signaling protocol indicating that a voicemail message for the user is
being stored by a voicemail server in the first communication network for a
call placed to the communication device, wherein the communication device
is receiving phone service from the second communication network that uses
a second signaling protocol that is different than the first signaling protocol
used in the first communication network;
a processing system adapted to identify the second signaling protocol
used in the second communication network that is providing phone service
to the communication device of the user, and to convert the voicemail
waiting indicator in the first signaling protocol to the second signaling
protocol; and
a second interface adapted to transmit the voicemail waiting indicator
in the second signaling protocol to the second communication network to
provide for notification of the waiting voicemail message to the user of the
communication device.

Appeal 2011-004834
Application 11/833,425

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REFERENCES and REJECTIONS
1. The Examiner rejected claims 1, 8, 9, 16, and 17 under 35 U.S.C.
§ 102(b) as being anticipated by Brilla (U.S. 6,389,276 B1, issued
May 14, 2002). Ans. 4-8
2. The Examiner rejected claims 2-7, 10-15, and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Brilla in view of Ejzak (U.S. 6,721,565
B1, issued Apr. 13, 2004) and Elliott (U.S. 6,754,181 B1, issued June
22, 2004). Ans. 8-12.

ISSUE
The issue is whether the Examiner erred in finding that Brilla teaches
the limitation of “a first interface adapted to receive a voicemail waiting
indicator in a first signaling protocol indicating that a voicemail message for
the user is being stored by a voicemail server in the first communication
network for a call placed to the communication device, wherein the
communication device is receiving phone service from the second
communication network that uses a second signaling protocol that is
different than the first signaling protocol used in the first communication
network” as recited in claim 1.

ANALYSIS
Claims 1, 8, 9, 16, and 17
Appellants argue inter alia that Brilla does not teach notifying the
user of the waiting voicemail message in the first network even though the
dual mode device is receiving service from the second network as recited in
claim 1 (App. Br. 8). Appellants explain that Brilla describes a system that
Appeal 2011-004834
Application 11/833,425

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notifies a user of a waiting voicemail for a land-line through the user’s
mobile device (App. Br. 8). Appellants further explain that Brilla does not
describe dual mode devices, or how to notify users of dual mode devices of
waiting voicemails in other networks (App. Br. 9). In Brilla, the voicemail
in the land-line network is intended for a land-line phone while the
notification is provided to a different mobile phone (App. Br. 9).
We are persuaded by Appellants’ argument. The Examiner directs us
to Brilla’s teaching of voice messages on a subscriber telephone line being
automatically paged to a mobile telephone unit (col. 5, ll. 16-22) for the
proposition that Brilla is applicable to both land-line and mobile voicemail
services (Ans. 13-14). While this may be true, this assertion does not
address whether the mobile device is a dual mode device receiving a
voicemail message in a first network and receiving service from a second
network as claimed. Even if we were to agree with the Examiner that Brilla
teaches a mobile telephone having both analog and cellular digital packet
data (CDPD) capabilities (Ans. 14), again there is no addressing of the
teaching of receiving a voice message in a first network while receiving
service from a second network by a dual mode device. Finally, we are
constrained from the record before us and we do not reach the Examiner’s
assertions regarding well known principles of roaming which are not
applicable for rejections of anticipation.
Thus, we reverse the Examiner’s rejection of claim 1 and for the same
reasons, the rejections of claims 8, 9, 16, and 17.
Claims 2-7, 10-15, and 18-20
We also reverse the Examiner’s rejections of claims 2-7, 10-15, and
18-20 for the same reasons as stated supra.
Appeal 2011-004834
Application 11/833,425

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CONCLUSION
The Examiner erred in finding that Brilla teaches the limitation of “a
first interface adapted to receive a voicemail waiting indicator in a first
signaling protocol indicating that a voicemail message for the user is being
stored by a voicemail server in the first communication network for a call
placed to the communication device, wherein the communication device is
receiving phone service from the second communication network that uses a
second signaling protocol that is different than the first signaling protocol
used in the first communication network” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

kis