Ex Parte Elliot

Board of Patent Appeals and Interferences

Sep 11, 2009

10840280 (B.P.A.I. Sep. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARVEY ALEXANDER ELLIOT
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Appeal 2009-002115
Application 10/840,280
Technology Center 2600
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Decided: September 11, 2009
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Before MAHSHID D. SAADAT, MARC S. HOFF, and CARLA M.
KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13 and 15-22.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claim 14 has been cancelled.
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Application 10/840,280

Appellant’s invention relates to an apparatus and method for
monitoring a telephone line and detecting when an alarm system is
attempting to dial out (Spec. 1).
Claims 1 and 8 are exemplary of the claims on appeal:
1. An apparatus for redirecting alarm calls from a premises to an alarm
company, the apparatus comprising:
first means for connecting to an alarm system to receive outgoing
alarm system calls;
second means for connecting to premises telephone equipment for
receiving outgoing premises telephone equipment calls;
third means, coupled to the first means, for connecting to a telephone
system and sending outgoing alarm system calls and outgoing premises
telephone equipment calls to the telephone system; and
monitoring means, for detecting when a call is attempted to the
telephone system is an outgoing alarm call or an outgoing premises
telephone equipment call, and selectively redirecting a call if it is determined
to be an alarm call by redialing the outgoing alarm call to a redirected
number,
wherein the monitoring means monitors current passing from the
second means to determine whether the call made to the telephone system is
a outgoing premises telephone equipment call if current is passing from the
second means and determining that the call is an outgoing alarm call if no
current passes from the second means.

8. An apparatus for redirecting telephone calls, comprising:
first connection for connecting to a first device for receiving calls
from the first device;
second connection, for connecting to a second device for receiving
calls from the second device;
third connection, coupled to the first connection, for connecting to a
telephone system for selectively sending calls from the first device and the
second device; and
monitoring means, for determining whether a call made on the
telephone system is from the first device or the second device, and seizing a
phone line from the second device and selectively redirecting a call if it is
determined to be from the first device.

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The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Wulforst US 6,272,212 B1 Aug. 7, 2001
Petricoin, Jr. US 6,493,435 B1 Dec. 10, 2002
Giacopelli US 2003/0128115 A1 Jul. 10, 2003
Jensen US 6,603,845 B2 Aug. 5, 2003
Claim 8 stands rejected under 35 U.S.C. § 102(e) as being anticipated
by Wulforst.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wulforst in view of Petricoin.
Claims 2-7, 13, and 19-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wulforst in view of Petricoin and Giacopelli.
Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wulforst in view of Giacopelli.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wulforst in view of Jensen.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wulforst in view of Jensen and Petricoin.
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed August 8, 2007) and the Examiner’s Answer (“Ans.,” mailed
November 9, 2007) for their respective details.

ISSUES
Appellant argues that Wulforst does not anticipate the subject matter
of claim 8 because the event monitors of Wulforst do not determine whether
a call is from a first or second device, nor do they seize a phone line from
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premises telephone equipment and selectively redirect a call if the call is
determined to be from alarm equipment (Br. 15).
Appellant argues that Petricoin fails to teach monitoring means that
monitors current passing from premises telephone equipment to determine
whether the call made to the telephone system is an outgoing premises
telephone equipment call (if current is passing) or an outgoing alarm call (if
current is not passing) (Br. 19).
With respect to claims 2-6, 9-13, and 19-22, Appellant argues that
Gilbert2 fails to teach RJ31X plug connectivity (Br. 24).
With respect to claims 15-18, Appellant argues that Jensen fails to
teach the use of an RJ31X jack and plug arrangement for plugging into an
alarm system, and that Jensen teaches only a “phone simulator” usable to
create fake phone calls (Br. 25).
Appellant’s contentions present us with the following issues:
1. Has Appellant shown that the Examiner erred in finding that
Wulforst teaches monitoring means, for determining whether a call made on
the telephone system is from the first device or the second device, and
seizing a phone line from the second device and selectively redirecting a call
if it is determined to be from the first device?
2. Has Appellant shown that the Examiner erred in finding that
Petricoin teaches monitoring current passing from the second means to
determine whether the call made to the telephone system is an outgoing
premises telephone equipment call if current is passing from the second

2 Claims 2-6, 13, and 19-22 stand rejected over Wulforst in view of Petricoin
and Giacopelli. Claims 9-12 stand rejected over Wulforst in view of
Giacopelli. Gilbert is not used in the rejection of any of these claims.
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means, and determining that the call is an outgoing alarm call if no current
passes from the second means?
3. Has Appellant shown that the Examiner erred in finding that
Gilbert3 teaches an RJ31X jack and plug arrangement as part of an alarm
system?
4. Has appellant shown that the Examiner erred in finding that
Jensen teaches an RJ31X jack and plug arrangement properly combinable
with Wulforst to achieve the invention of claim 15?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns an apparatus
and method for monitoring current on a telephone line and detecting when
an alarm system is attempting to dial out (¶ 0002). A telephone redialer may
intercept calls from an alarm system and redirect such calls to a middleware
processing center (¶ 0044).
Wulforst
2. Wulforst teaches a telephone intercept device 100 that can
determine whether a call made is from a first device (e.g., alarm system) or a
second device (premises telephone equipment), and seize the phone line
from the premises equipment if the call is determined to be from the alarm
system. For example, patient monitoring hardware 12 can dial out even

3 We note that Gilbert forms no part of the rejection of claims 2-6, 9-13, and
19-22.
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though the patient already has premises telephone 11 off-hook, because
intercept device 100 can mimic an “on-hook” condition and seize the line to
phone appropriate authorities (col. 7, ll. 38-52; see Fig. 3). Wulforst further
discloses that this functionality is useful where a home alarm system event
occurs unbeknownst to a consumer while they are talking on the premises
telephone (col. 7, ll. 52-55).
Petricoin
3. Petricoin teaches current detector 72, which is triggered when
premises telephone equipment is off-hook (col. 5, ll. 9-10; Fig. 9).
Giacopelli
4. Giacopelli teaches a signaling system for use with a wired,
alarm control-panel system which, upon the existence of an alarm condition
and subsequent seizure of the telephone line, signals such seizure to the
occupant or client (¶ 0004).
Jensen
5. Jensen recognizes that RJ31X jacks are useful in alarm systems
because they “allow the alarm systems to always gain access to the incoming
phone lines, instead of having to compete with other phone devices that may
be in the midst of phone calls on the incoming phone lines” (col. 5, ll. 55-
65).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
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Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
ANALYSIS
CLAIM 8
Appellant argues that the event monitors relied upon by the Examiner
as corresponding to the “monitoring means” recited in claim 8 are not
capable of determining whether a call made on a telephone system is from
the first device (the alarm system) or the second device (the premises
telephone equipment), seizing a phone line from the second device, and
selectively redirecting a call if it is determined to be from the first device
(Br. 15).
We agree with Appellant that, were one to consider only the event
monitors of Wulforst per se (e.g., gas gauge, temperature gauge, smoke
detector, carbon monoxide detector), those elements per se cannot determine
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whether a call originates from a first or second device, nor can they seize a
telephone line (see col. 6, ll. 31-38). Wulforst, however, teaches a telephone
intercept device 100 that can determine whether a call made is from a first
device (e.g., alarm system) or a second device (premises telephone
equipment), and seize the phone line from the premises equipment if the call
is determined to be from the alarm system. For example, patient monitoring
hardware 12 can dial out even though the patient already has premises
telephone 11 off-hook, because intercept device 100 can mimic an “on-
hook” condition and seize the line to phone appropriate authorities (FF 2).
Wulforst further discloses that this functionality is useful where a home
alarm system event occurs unbeknownst to a consumer while they are
talking on the premises telephone (FF 2).
Appellant further argues that Wulforst is disadvantageous because
Wulforst requires monitoring every outgoing call for a specific DTMF
string, and that the string to be monitored-for needs to be programmed into
the device (Br. 14). This argument, however, is not considered germane to
the invention recited in claim 8, because claim 8 contains no language that
would preclude such monitoring or programming.
We therefore find that Wulforst teaches all of the elements of claim 8.
Thus, we will sustain the rejection of claim 8 under 35 U.S.C. § 102(b) as
being anticipated by Wulforst.
CLAIM 1
Appellant argues that the Examiner has not set forth a prima facie case
of obviousness with respect to claim 1, because Petricoin does not teach or
suggest selectively connecting signals from an alarm system or a telephone
system in response to current measurement, but rather only teaches engaging
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a filter [that removes special characters associated with DSL signals] (Br.
19). Accordingly, Appellant argues, since Petricoin is not directed toward
alarm system re-dialing, Petricoin does not detect DTMP (sic, DTMF) or
pulse dialing codes on the line in order to determine whether a call is being
made, and thus, Petricoin requires that two current sensors be used (Br. 19).
We do not consider Appellant’s arguments persuasive to establish
Examiner error. The Examiner cited Petricoin to teach the portion of claim 1
admittedly lacking from Wulforst, i.e., monitoring means that monitors
current passing from the second means (premises telephone equipment) to
determine whether the call made is an outgoing premises telephone
equipment call (if current is passing from the second means), or whether the
call is an outgoing alarm call (if no current passes from the second means).
The Examiner relies upon Wulforst, rather than Petricoin, to teach
selectively redirecting a call if it is determined to be an alarm call (Ans. 4).
The Examiner finds, and we concur, that Petricoin teaches current detector
72, which is triggered when premises telephone equipment is off-hook (FF
3). The Examiner concludes, and we agree, that it would have been obvious
to modify Wulforst to include the current detection means of Petricoin in
order to discriminate the use of the telephone line by telephone or alarm
panel and provide required signal processing (Ans. 22-23).
Appellant’s argument that Petricoin does not detect DTMF codes is
not relevant to the obviousness rejection of claim 1 because Wulforst, not
Petricoin, is relied upon to teach call redirection. Appellant’s argument that
Petricoin teaches two current detectors rather than one is also irrelevant,
given that claim 1 recites “an apparatus for redirecting alarm calls
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comprising … monitoring means monitor[ing] current passing from the
second means” and Petricoin teaches such a monitoring means.
We find, as a result, that Appellant has not established error in the
Examiner’s prima facie case of obviousness for claim 1. We will sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103 over Wulforst in
view of Petricoin.
CLAIMS 2-5 AND 9-12
Appellant argues that claims 2-5 and 9-12 are patentable because
Gilbert does not teach an RJ31X plug as claimed (Br. 24). Gilbert, however,
forms no part of the Examiner’s obviousness rejections. Therefore,
Appellant has presented no arguments germane to the rejection of claims 2-5
as unpatentable over Wulforst in view of Petricoin and Giacopelli, nor to the
rejection of claims 9-12 as unpatentable over Wulforst in view of Giacopelli.
We therefore affirm pro forma the rejection of claims 2-5 and 9-12 under 35
U.S.C. § 103.
CLAIM 7
Appellant’s discussion of claim 7 (which depends from claim 1) fails
to set forth any alleged error in the Examiner’s rejection. We will therefore
affirm the § 103 rejection of claim 7, for the same reasons expressed with
respect to claim 1, supra.
CLAIMS 6, 13, AND 19-22
Appellant’s only argument concerning these claims is that his
“previous comments concerning Gilbert apply here as well” (Br. 25). As
noted supra with respect to claims 2-5 and 9-12, the Examiner does not rely
on Gilbert in the rejection of any pending claim. Therefore, Appellant has
presented no arguments germane to the rejection of claims 6, 13, and 19-22
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as unpatentable over Wulforst in view of Petricoin and Giacopelli. We
therefore affirm pro forma the rejection of claims 6, 13, and 19-22 under 35
U.S.C. § 103.
CLAIMS 15 AND 16
We select claim 15 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the Examiner has not established a prima facie
case of obviousness, because Jensen fails to show the use of an RJ31X jack
and plug arrangement for plugging into an alarm system (Br. 25). According
to Appellant, Jensen teaches only the “very limited application” of “a ‘phone
simulator’ which can be used to create fake phone calls, apparently for the
purpose of allowing a user to enter Caller ID information into an existing
phone” (Br. 25), and does not teach or suggest anything to do with alarm
systems, other than to employ the alarm system RJ31X jack (id.).
Appellant’s arguments are not persuasive of Examiner error. Wulforst,
rather than Jensen, is relied upon to teach redirection of alarm system
telephone calls generally, and means for determining whether a call
originates from an alarm system or consumer provided equipment (Ans. 14).
The Examiner relies upon Jensen for the claimed details of RJ31X jack and
plug connection (Ans. 15-16). Jensen, while not directed to alarm systems
per se, does recognize that RJ31X jacks are useful in alarm systems because
they “allow the alarm systems to always gain access to the incoming phone
lines, instead of having to compete with other phone devices that may be in
the midst of phone calls on the incoming phone lines” (FF 5).
Because of Jensen’s recognition of the utility of RJ31X hardware in
the context of alarm systems, we regard Jensen’s teachings as reasonably
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pertinent to the problem faced by Appellant. We therefore find the
combination of Wulforst’s telephone call redirection with the details of
RJ31X connection taught by Jensen to be nothing more than the combination
of familiar elements according to known methods, yielding predictable
results. KSR, 550 U.S. at 416. Appellant has thus failed to establish error in
the Examiner’s rejection of claims 15 and 16 under § 103 and we affirm the
rejection.
CLAIMS 17 AND 18
Appellant presents no separate argument for the patentability of these
claims, relying instead on his previous comments concerning Wulforst,
Jensen, and Petricoin and the motivation to combine them. Because we
affirm the rejection of parent claim 15, then, we will affirm the rejection of
dependent claims 17 and 18 under § 103 for the same reasons expressed with
respect to claims 15 and 16, supra.

CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in finding that
Wulforst teaches monitoring means, for determining whether a call made on
the telephone system is from the first device or the second device, and
seizing a phone line from the second device and selectively redirecting a call
if it is determined to be from the first device.
2. Appellant has not shown that the Examiner erred in finding that
Petricoin teaches monitoring current passing from the second means to
determine whether the call made to the telephone system is an outgoing
premises telephone equipment call if current is passing from the second
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means and determining that the call is an outgoing alarm call if no current
passes from the second means.
3. Appellant has not shown that the Examiner erred in finding that
Gilbert teaches an RJ31X jack and plug arrangement as part of an alarm
system.
4. Appellant has not shown that the Examiner erred in finding that
Jensen teaches an RJ31X jack and plug arrangement properly combinable
with Wulforst to achieve the invention of claim 15.
ORDER
The Examiner’s rejection of claims 1-13 and 15-22 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

ELD

ROBERT PLATT BELL
REGISTERED PATENT ATTORNEY
P.O. BOX 13165
JEKYLL ISLAND, GA 31527
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