Ex parte Desblancs et al.

Board of Patent Appeals and Interferences

Jul 26, 2001

08204441 (B.P.A.I. Jul. 26, 2001)

The two rejections in the final rejection on two1
separate combinations of the references were replaced in the
Examiner's answer by a single rejection based on a combination
of the references used in the final rejection. Appellants
have had an opportunity to respond, and have responded, to
this rejection. Therefore, for the purpose of this appeal the
rejection based on the combination of Rasmussen, Endo and
Nokia is considered.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERIC DESBLANCS and BRIGITTE COZ
____________
Appeal No. 1999-0877
Application No. 08/204,441
____________
HEARD: July 10, 2001
____________
Before KRASS, LALL, and BLANKENSHIP, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1 to 3, and 5 to 10. 1
Claim 4 has been canceled.
Appeal No. 1999-0877
Application No. 08/204,441
2
The claimed invention relates to the field of telephone
systems and telephone handsets, wherein a subscriber of the
system is issued a smart card which allows the subscriber to
use any handset which is configured for use in the system.
The subscriber carries the smart card with him, and merely
inserts the card in the handset to gain access to the system;
however, such a system also requires the subscriber to key in
the subscriber's own telephone number for verification. Often
the subscriber may have forgotten his assigned telephone
number, and for security reasons it is undesirable to label
even the subscriber's own handset with the telephone number in
printed form. Thus, the method and telephone set of the
claimed invention provides for delivering (and displaying) the
subscriber's own telephone number to the subscriber upon the
subscriber's request to do so. When the telephone is switched
on to activate the power supply the user must initially
insert the smart card into the reader and then use the keypad
to insert his PIN. When the subscriber keys in a request for
the subscriber's own telephone number, his telephone number is
delivered to the subscriber by being displayed on the display
Appeal No. 1999-0877
Application No. 08/204,441
A reply brief was filed as Paper No. 28 and the Examiner2
noted its entry without any further response. See Paper No.
29.
3
screen. Further understanding of the invention can be
obtained by the following claim.
1. A method of delivering a telephone number associated
with a telephone subscription to the user of a telephone set,
use of said set requiring the user to provide subscription
identification data stored in a data medium held by the owner
of said subscription and co-operating with said telephone set,
wherein the telephone number is stored in the data medium,
wherein the data medium is removably coupled to said telephone
set, and wherein the telephone number only then is transferred
from the coupled data medium into the telephone set at the
request of the user, to be delivered to the user of said set,
and wherein, after the telephone number has been transferred
into the telephone set, it is displayed on display means
provided in said telephone set.
The Examiner relies on the following references:
Rasmussen 5,134,717 July 28,
1992
Endo et al. (Endo) 5,467,389 Nov. 14, 1995
Nokia LX11C/LX11T Brochure, May 1990, pages 1-4
Claims 1 to 3 and 5 to 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Rasmussen, Endo and Nokia.
Rather than repeat the arguments of Appellants and the
Examiner, we make reference to the briefs and the answer for2
their respective details thereof.
Appeal No. 1999-0877
Application No. 08/204,441
4
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellants’ arguments set forth in the briefs.
We reverse.
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined
on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). We are further guided by the
precedent of our reviewing court that the limitations from the
Appeal No. 1999-0877
Application No. 08/204,441
The pages in the Examiner's answer have been serially3
renumbered.
5
disclosure are not to be imported into the claims. In re
Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986). We also
note that the arguments not made separately for any individual
claim or claims are considered waived. See 37 CFR § 1.192(a)
and (c). In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of
that court to examine the claims in greater detail than argued
by an appellant, looking for nonobviousness distinctions over
the prior art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ
247, 254 (CCPA 1967)(“This court has uniformly followed the
sound rule that an issue raised below which is not argued in
that court, even if it has been properly brought here by
reason of appeal is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”).
The Examiner gives a detailed explanation of the
rejection on pages 4 to 7 of the Examiner's answer . The3
Examiner concludes, answer at page 3, that "it would have been
Appeal No. 1999-0877
Application No. 08/204,441
6
obvious ... to include subscriber information [in Ramussen]
and include a way to display the phone number, in order to
prevent fraudulent use by identifying each subscriber within
the network and in order to verify the telephone number that
the user is allocated, respectively [in view of such teachings
of Endo and Nokia]."
Appellants argue, reply brief at page 3, that "when
considering Rasmussen disclosure in its entirety, the type of
'other information' to which the concept taught by Rasmussen
may be applied, is only the information that is automatically
dialed when accessed. In contrast, Applicant's (sic) claimed
invention
involves displaying a user's own telephone number. It is only
common sense that the user will not try to dial his own
telephone number from his own telephone set." Appellents
further argue, reply brief at page 5, that "[s]ince the PSI is
secret, the PID is not to be published, and cannot be
considered as equivalent
to the telephone number within the meaning of Applicant's
invention." Appellants further argue, reply brief at page 5,
Appeal No. 1999-0877
Application No. 08/204,441
7
that "with respect to Nokia, ... the feature of 'own number
display' has nothing to do with Applicant's claimed
invention." We agree with the Appellants' position. In
none of the references there is any need for displaying a
user's own telephone number with the use of a smart card.
Rasmussen is designed to make it easy for the user to
telephone a desired party by the use of a smart card which
carries in its memory telephone numbers assigned to other
parties. Endo merely enables a user access to a telephone
network exchange by the use of a smart card and by putting in
the access code, see Fig. 5. Nokia only displays the
telephone number of the owner of the hand set corresponding to
the owner's registration code, rather than trying to display
the telephone number on request. It is
to be noted that the applied references are not designed to
meet the requirement or a need which is encountered in the
European telephone system, where there is a need for the
subscriber-user to display his own telephone number on the
display of a public exchange set, assuming that the user
forgot his telephone number. In the United States, a smart
card is not used to learn the telephone number of the smart
Appeal No. 1999-0877
Application No. 08/204,441
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card owner. As the applied prior art shows, the telephone
number of the user is presumed to be known to the user. In
Rasmussen it is the telephone number of the desired party
being called that is automatically dialed.
In Endo too, there is no provision where the display of the
telephone number of the user is shown, only access to a
telephone exchange is granted by the use of the smart card and
by punching of a secret code at keypad, see Fig. 5. In Nokia,
as soon as the telephone is turned on, its display will
automatically show the telephone number of the owner of that
telephone set. It is not responsive to the insertion of a
smart card and the request of the user. The telephone number
simply is coded to be in the name of the owner and that
owner's telephone number name is displayed when the telephone
is turned on.
Therefore, we agree with Appellants that the suggested
combination of Rasmussen, Endo and Nokia does not render
obvious the claimed invention.
Appeal No. 1999-0877
Application No. 08/204,441
9
The decision of the Examiner rejecting claims 1 to 3,
and 5 to 10 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
jg
Appeal No. 1999-0877
Application No. 08/204,441
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