Ex Parte Carmichael

Patent Trial and Appeal Board

May 23, 2016

13529735 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/529,735 06/21/2012 Christopher Carmichael
74162 7590 05/25/2016
Law Office of Scott C Harris Inc
PO Box 1389
Rancho Santa Fe, CA 92067
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ubiquity-63CPM 1359
EXAMINER
AREVALO, JOSEPH
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
harris@schiplaw.com
uspto@schiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER CARMICHAEL
Appeal2015-000366
Application 13/529,735
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 3-18, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Harris Technology,
LLC. (Br. 2.)
Appeal2015-000366
Application 13/529,735
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to an "environment in which a user
records and/or forms information which will be provided to calling users."
(Spec. i-f 5.) Claim 3 is illustrative, and is reproduced below:
3. A telephone, comprising:
a first user interface part that operates to obtain a picture
and sound of a user speaking, and to set the picture and sound of
the user speaking as being a greeting formed of a customized
message that includes at least the picture and sound as two
different forms of media that are combined together; and
a greeting setting part, that plays the greeting that was
made by the user to another user who is contacting the user, when
the user cannot answer the contact from the another user.
Rejections on Appeal
Claims 3-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over To (US 2012/0011450 Al; pub. Jan. 12; 2012) ("To") and
Block (US 2002/0120690 Al; pub. Aug. 29, 2002) ("Block"). (See Final
Office Action (mailed July 9, 2013) ("Final Act.") 2-7.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
positions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief. (Ans. 2-5.) However, we highlight and address specific
findings and arguments for emphasis as follows.
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Claims 3-16
First Argument- Telephone Environment
Appellant contends the Examiner erred because "To teaches a virtual
greeting card, [but] says nothing about a telephone environment." (Br. 7-8.)
The Examiner responds that To teaches a telephone environment as follows:
[a first user sends electronic greeting card] to a receiver of the
plurality of users[, each] receiving device of the receiver ...
includes a display configured to display the [electronic] greeting
card and a second interact or [sic] configured to enable the
receiver to interactively communicate with the plurality of the
first users [such that] the plurality of users can view and/or
interact with the electronic greeting card at a receiving device.
(Ans. 2-3; To i-fi-15-6 and 27.) We agree with the Examiner's finding that To
teaches a telephone environment. (See also To i173 ("Further, the people in
electronic greeting card 802 can also make audio/video phone calls to each
other using electronic greeting card 802.").) In addition, we find that Block
also teaches a telephone environment (see Block Fig. 1 ).
Second Argument - Greeting
Must Consist of Picture and Sound of the User Speaking
Appellant concedes that Block teaches playing a greeting "'when the
user cannot answer the contact from the another user,"' but contends that
neither To nor Block teaches a greeting that "is a picture and sound of the
user speaking, where the user is the person being called." (Br. 8, 11-12.) In
particular, Appellant argues that "Block discloses using only the PC
microphone and sound card and hence Block is only a voicemail greeting."
(Id.) However, we agree with the Examiner's findings that To teaches that a
user may create multimedia greetings, and that the greetings can be pictures
and sound of the user. (Ans. 4; Final Act. 3; see also, i-fi-127, 30, and 60.)
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Specifically, To teaches that users "may send to each other emotional
gestures, greetings, text/audio/video messages, reminders, etc. Further, the
people in electronic greeting card 802 can also make audio/video phone calls
to each other using electronic greeting card 802." (To if 73; see also if 27
("The electronic greeting card may include at least one interactive object. ...
Examples of the at least one interactive object include ... an image, a text
message, ... a Multimedia Messaging Service (MMS) message, ... an
audio file, a video file, and so forth. The electronic greeting card may
include messages, graphics, audios, videos and/or various other
options/modes for interaction.").) Similarly, Block also teaches recording
the user's voice as a greeting. (Block if 20 ("For example, if a user records a
new greeting via a telephone 181 and later examines his or her 'greeting'
folder 191 via IMAP4 client 170, then the greeting recorded on the phone
would appear to be a message saved in the 'greeting' folder 191.").)
Third Argument- Propriety of the Combination
Appellant contends that "there is no motivation for combining [To and
Block and i]n fact, the only motivation for combining these references
comes from the teaching of the present application." (Br. 8-10.) However,
the Supreme Court has made clear that the Examiner need not identify a
teaching, suggestion, or motivation to combine that comes explicitly from
within the cited references. KSR Int 'l Co., v. Teleflex, Inc., 550 U.S. 398,
415-17 (2007). The Examiner explains that it would have been obvious to
combine the teachings of To and Block because it would result in a system
that is "more efficient and reliable." (Final Act. 3; see also Ans. 3--4.) We
are persuaded that the Examiner has set forth "'an articulated reasoning with
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Application 13/529,735
some rational underpinning to support the legal conclusion of obviousness.'"
KSR, 550 U.S. at 418 (quoting In re Kahn, 441F3d977, 988 (Fed. Cir.
2006)).
Furthermore, we find that one of ordinary skill in the art would have
reasons to replace the audio greetings in Block with picture and sound
greetings of a user generated by the system in To. KSR, 550 U.S. at 421
("When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense."). A
picture and sound greeting is simply one type of recorded greeting and a
person of ordinary skill in the art would have good reason to pursue using
the other types of greetings, including a picture and sound greeting,
disclosed in To.
Moreover, such a combination would be an obvious substitution of
one known element (audio greetings of a user) for another (picture and
sound greetings of a user) that yields a predictable result. See KSR, 550 U.S.
at 416 ("when a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.").
Claims 5 and 12
Appellant contends that "there is no disclosure of anything making
obvious sending the greenback [sic] to someone who has sent a text" as
required by claims 5 and 12. (Br. 14.) However, the Examiner finds that To
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teaches that users can interact and share with each other "text message,
photos, audio/video records, web links, etc[.]," and we again agree with the
Examiner's finding that the proposed combination would have suggested the
claimed subject matter to one of ordinary skill in the art. (Ans. 4-5; To
ii 35.)
Claims 10 and 17
Appellant contends that neither To nor Block discloses video
greetings of the user as recited in claims 10 and 17. (See Br. 14-15.) With
regard to claim 10, Appellant contends that the references do not disclose "a
computer part that obtains a video of a telephone user speaking and sets that
video as a greeting to show a caller who is calling and plays that to a calling
user." (Id.) Similarly, with regard to claim 17, Appellant contends that the
references do not disclose "obtaining a video of a telephone user speaking,
setting that video as a greeting to show to a caller that includes a customized
message of the video and sound of the telephone user speaking and playing
that as described." (Br. 15.) We agree with the Examiner's findings that
paragraphs 27 and 35 of To and paragraph 20 of Block teach these
limitations. (See Final Act. 4-7.) As discussed above, To teaches that a user
may create multimedia greetings and that the greetings can be videos of the
user. (See To i-fi-127, 30, 35, and 60.) In addition, To teaches that users "may
send to each other emotional gestures, greetings, text/ audio/video messages,
reminders, etc.," and that "the people in electronic greeting card 802 can also
make audio/video phone calls to each other using electronic greeting card
802." (To i-f 73.)
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CONCLUSION
As discussed herein, Appellant's arguments have not persuaded us
that the Examiner erred in rejecting claim 3, 5, 10, 12, and 17. The
remaining claims (4, 6-9, 11, 13-16, and 18) are not argued separately.
Therefore, we sustain the 35 U.S.C. § 103(a) rejections of claims 3-18.
DECISON
The decision of the Examiner to reject claims 3-18 is affirmed.
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
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