Ex Parte Chang et al

Patent Trial and Appeal Board

Feb 3, 2015

11751445 (P.T.A.B. Feb. 3, 2015)

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.
11/751,445 05/21/2007 Hisao Chang 20103/2006-1475 2001
83417 7590 02/04/2015
AT&T Legal Department - HFZ
ATTN. Patent Docketing
One AT&T Way
Room 2A-207
Bedminstor, NJ 07921
EXAMINER
PHUNG, LUAT
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
02/04/2015 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 HISAO CHANG, MARK HUBSCHER, and
CARLTON LIGAR BROWN
____________
Appeal 2012-008857
Application 11/751,4451
Technology Center 2400
____________

Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 6–20 and 35–43. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The real party in interest is AT&T Intellectual Property I, LP. (App. Br.
2).

Appeal 2012-008857
Application 11/751,445

2
STATEMENT OF THE CASE
Appellants’ invention relates to methods and apparatus for
communicating through a multi-fidelity gateway. Spec., Abstract, 24.
Claim 6 is exemplary of the matter on appeal:
6. A method comprising:
identifying audio fidelity information associated with a
source of a voice communication received at a multi-fidelity
audio gateway of a media system; and
selecting, at the multi-fidelity audio gateway, an audio
presentation device from a plurality of audio presentation
devices of the media system to present the voice
communication to a user based on the identified fidelity
information associated with the source of the voice
communication.
App. Br., Appendix A, 23.
THE REJECTIONS
Claims 40–43 stand rejected under 35 U.S.C. § 101.
Claims 6–20 and 35–43 stand rejected under 35 U.S.C. § 103(a) over
Benditovich (U.S. Publication No. 2007/0025338 A1) in view of Kawano
(U.S. Patent 6,201,490 B1).
ANALYSIS
The 35 U.S.C. § 101 rejection of claims 40–43
We are persuaded of error by the Examiner by Appellants’ argument
that the phrase “tangible article of manufacture . . .” does not claim a
transitory signal and is statutory subject matter. We agree with the
Examiner that a transitory media does not fall within one of the four
categories of invention. Ans. 5–6. A key reason why transitory media are
Appeal 2012-008857
Application 11/751,445

3
non-statutory is they are not articles of manufacture. See In re Nuijten, 500
F. 3d 1346, 1356–57 (Fed. Cir. 2007). However, the claims expressly recite
and are thereby limited to “[an] article of manufacture.” Because the
claimed invention is directed to an article of manufacture, the claimed
invention does not encompass transitory media. Therefore, we agree with
Appellants that the Examiner does not persuasively show that the claims are
unpatentable as being directed to non-statutory subject matter. App. Br. 9,
Reply 2–3.
Therefore, we do not sustain the rejection of claims 40–43 under 35
U.S.C. § 101.
The 35 U.S.C. § 103(a) rejection of claim 6
The Examiner finds that Benditovich, at paragraphs 53–57, teaches or
suggests the limitation “identifying . . .” but is silent as to using the call
fidelity in deciding the device to which the communication is forwarded.
The Examiner cites Kawano, column 2, ll. 32–34, as teaching or suggesting
selecting data streams based on the signal quality of the input data. The
Examiner concludes it would have been obvious to combine the quality-
based selector of Kawano with the Benditovich gateway in order to take
advantage of the higher quality communication by ensuring it is heard
through high-end speakers. Ans. 6–7.
We are not persuaded of Examiner error by Appellants’ argument that
the combination of Benditovich and Kawano does not teach selecting an
audio presentation device based on fidelity information associated with a
source of a voice communication. According to Appellants, Kawano
Appeal 2012-008857
Application 11/751,445

4
teaches a digital-to-analog converter that selects an output stream of a
converter to form an output and does not select an audio presentation device
based on fidelity information associated with a source of voice
communication. App. Br. 13–14.
In response, the Examiner finds that Benditovich teaches, at
paragraphs 53–57, selecting an attached handset of a phone on a network to
which a call is forwarded and that Kawano, at column 2, lines 32–34,
discloses selecting a data stream based on the signal quality, and this is a
fidelity-based selection. Ans. 6, 13. The Kawano teaching would have
allowed Benditovich to select handsets, which are audio presentation
devices, to forward calls based on the fidelity of a stream of the call. Ans.
6–7, 13. Further, the Examiner finds motivation to combine the teachings to
take advantage of higher quality audio by matching it with high quality
speakers with low distortion. Ans. 7, 13.
A claim in a patent application is given the broadest reasonable
interpretation consistent with the Specification, as understood by one of
ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Great care should be taken to avoid reading limitations of the Specification
into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369
(Fed. Cir. 2003).
Applying a reasonably broad interpretation, consistent with the
Specification, of the disputed limitation of claim 6, we agree with the
Examiner’s finding that the term “fidelity” includes quality of signal, as in
Kawano. See Ans. 6, 13. We also agree with the Examiner’s finding that
Benditovich selects handsets and that Kawano selects data streams based on
Appeal 2012-008857
Application 11/751,445

5
quality. See id. Therefore, the combination teaches selecting an audio
presentation device based on fidelity information associated with a source of
a voice communication.
We also are not persuaded of error by the Examiner by Appellants’
argument that the combination of Benditovich and Kawano does not teach
selecting, at a gateway, an audio presentation device of the media system to
present a voice communication to a user. App. Br. 14–16. According to
Appellants, Benditovich serves as a bridge to a call already selected by the
originating party. Id. Appellants argue Kawano does not cure the alleged
deficiency of Benditovich because selecting an output stream of a DAC is
not a selection of an audio presentation device. Id.
In response, the Examiner finds:
Benditovich disclosed an exemplary gateway ([0053]–
[0057]). In this disclosure Benditovich explicitly states that a
user may pick up the VolP call and forward it to a specified
PSTN number ([0056]). Here, it is demonstrated that the
forwarding selection is done at the bridge itself when the call is
received, rather than just following a pre-selected forwarding
address. Further, the PSTN telephone number is always
matched to an end device, such as handsets, softphones, or
speakers, which are media systems. Ergo, Benditovich
disclosed selecting at a gateway, an audio presentation device
of a media system.
Ans. 14.
We find the Examiner’s explanation to be reasonable and supported
by the cited portions of Benditovich. We therefore agree with the
Examiner’s finding that Benditovich teaches selecting, at a gateway (bridge)
of a media system (handsets, softphones, and speaker are media devices) to
Appeal 2012-008857
Application 11/751,445

6
present a voice communication to a user (forwarding call when received).
Ans. 14.
In view of the above, we sustain the rejection of claim 6, and its
dependent claims 7–11, 35, and 36 as these claims were not separately
argued.
The 35 U.S.C. § 103(a) rejection of claim 12
Claim 12 (system) is similar to claim 6 (method) and Appellants rely
on similar arguments. Therefore, for similar reasons, we sustain the
rejection of claim 12 and its dependent claims, claims 13–20, as these claims
were not separately argued.
The 35 U.S.C. § 103(a) rejection of claim 37
Independent claim 37 is similar to claims 6 and 12 and recites a
selector to select an audio presentation device from a plurality of audio
presentation devices based on fidelity information associated with a source
of voice communication. Appellants rely on similar arguments to those
presented in connection with claim 6.
Therefore, we sustain the rejection of claim 37 and its dependent
claims, claims 38–39, as these claims were not separately argued.
The 35 U.S.C. § 103(a) rejection of claim 40
Independent claim 40 is similar to claim 6 and recites a “tangible
article of manufacture having instructions stored thereon . . . .” Appellants
rely on similar arguments. Therefore, we sustain the rejection of claim 40
Appeal 2012-008857
Application 11/751,445

7
and its dependent claims, claims 41–43, as these claims were not separately
argued.
DECISION
The Examiner’s decision rejecting claims 40–43 under 35 U.S.C. §
101 is REVERSED.
The Examiner’s decision rejecting claims 6–20 and 35–43 under 35
U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

gvw