Ex parte FERRY et al.

Board of Patent Appeals and Interferences

Sep 29, 1997

07911471 (B.P.A.I. Sep. 29, 1997)

Applicants waived the hearing. (Paper 20.)1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion was not written for publication
and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS FERRY and JANN WILSON
____________
Appeal No. 95-1292
Application 07/911,471
____________
ON BRIEF1
____________
Before KRASS, JERRY SMITH, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
We have reviewed the record in its entirety in light of the
arguments of Applicants and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the following fact findings.
A. The nature of the case
A This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1, 2, 4-9, and 11-21, which are all of
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Application 07/911,471
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the pending claims. Claims 3 and 10 have been canceled.
(Paper 11 at 1.)
B The application on appeal was filed on 10 July 1992. It
purports to be a continuation-in-part of U.S. patent
application 07/728,341, filed 11 July 1991, which is
expressly incorporated by reference into the present
application. (Paper 1 at 1.)
C The title of the invention is "Apparatus for facilitating
the display of information relating to the origin of a third
source caller". (Paper 10 at 1.)
D Applicants address the problem of displaying Caller ID
information relating to a third-party caller during an on-
going telephone conversation between a first party and a
second party. Their invention displays third-party caller
information from a Caller ID service on a conventional
television set or similar video device. (Paper 1 at 4-5.)
They acknowledge that products for displaying Caller ID
information on a computer monitor already exist, but they
indicate that such products do not appeal to non-business
consumers. (Paper 1 at 1-3.)
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Application 07/911,471
The examiner also cited, but did not apply, the2
following references (Paper 16 at 3):
Doughty 4,582,956 15 Apr. 1986
Dittakavi et al. 4,852,151 25 July 1989
Goldman et al. 4,995,074 19 Feb. 1991
Callele et al. 5,117,452 26 May 1992
We do not consider these additional references to be part of the
examiner's rejection of the claims. In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). We may, however,
consider such references to the extent that they explain rather
than expand the references on which the rejection is based. In
re Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1284
(Fed. Cir. 1991). Applicants waived their opportunity to respond
to these additional references when they waived their hearing.
(Paper 20.)
Our understanding of this reference is based on a3
translation in the record provided by the Patent and Trademark
Office.
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B. The rejections
E The examiner relied on the following prior art references in
rejecting the claims (Paper 11 at 2-7):2
Griffith 4,805,210 14 Feb. 1989
Ueno 5,061,992 29 Oct. 1991
(filed 23 Jan. 1990)
Krisbergh et al. 5,138,649 11 Aug. 1992
(filed 16 Nov. 1990)
Takabayashi (JP) 3-29456 published 7 Feb. 19913
F The examiner rejected all of the claims on appeal under
35 U.S.C. § 103. He rejected claims 1, 2, 4, 6-9, 11,
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and 13-21 in view of Takabayashi and Ueno (Paper 11 at 2);
claims 5 and 12 in view of Takabayashi, Ueno, and Griffith
(Paper 11 at 4); claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20
in view of Krisbergh and Ueno (Paper 11 at 5); claims 17,
19, and 21 in view of Krisbergh, Ueno, and Takabayashi
(Paper 11 at 7); claims 5 and 12 in view of Krisbergh, Ueno,
and Griffith (Paper 11 at 7).
Fact findings 7 through 11 would have been known to a person
having ordinary skill in the art at the time of the invention.
G The Takabayashi reference teaches a caller ID system in
which the name of the caller is displayed on a conventional
television screen. (Abstract; p. 1.) Takabayashi notes
that displaying the caller's name is an improvement over the
prior art, which only displayed the caller's telephone
number. (p. 1-2.) He does not disclose the display of a
third-party's information when the telephone is already in
use.
H The Ueno reference is directed to displaying a third-party
caller ("C") using a "TV phone" to one of two callers ("A"
and "B") already in conversation using a TV phone system.
According to Ueno, the prior art only permitted a kind of
Call Waiting function, where if C called B, B would have to
put A on hold to learn the identity of C. As Ueno notes, if
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the conversation with A has greater priority than a
conversation with C, then placing A on hold to identify C is
at least inconvenient. (1:10-40.) Ueno solves this problem
by displaying C on a split screen to B without interrupting
the A-B conversation. (1:43-63.) B is never placed on hold
because Ueno uses two separate interface circuits 202 & 203
to handle the two callers. Since Ueno shows C's image, he
does not address displaying C's name or number. Ueno does
not disclose the effect of having more than one TV phone in
operation at B's location when C's call arrives.
I The Krisbergh reference, among other things, displays
incoming and outgoing telephone numbers on a television
display. (2:66-3:10 and 5:35-54.) Krisbergh does not
display names. The reference does not address the display
of telephone numbers for third-party callers. Krisbergh
does not disclose the effect of having more than one
telephone off the hook when a third-party calls.
J The Griffith reference teaches a lock-out circuit for
locking out all other telephones on a circuit when one
telephone on the circuit is in use. (2:17-56.)
K We take official notice of the fact that the Federal
Communications Commission had adopted the National
Television System Committee signal standard as the standard
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for color television signals in the United States. See
e.g., Re-Examination of Technical Regulations, 48 Fed. Reg.
14399 n.7 (1983) ("The National Television Systems Committee
(NTSC) of the Electronics Industries Association (EIA)
prepared the standard specifications approved by the FCC,
December, 1953, for commercial color television
broadcasting."); see also "National Television System
Committee", McGraw-Hill Electronics Dictionary 356 (5th ed.
1994) (attached). On this basis, we find that a person
having ordinary skill in the art would have found it
necessary at the time of the invention to use an NTSC signal
for a television-based invention to have wide commercial
appeal in the United States (or Canada, Mexico, or Japan).
If anything, it would have been unusual not to have used the
standard.
L The level of skill in the art and secondary considerations
supporting patentability are not contested issues in the
present appeal.
CONCLUSIONS OF LAW
A. Claim interpretation
A All of the claims on appeal are written in either means-
plus-function (claims 1, 2, 4-7, and 15-19) or step-plus-
function (claims 8, 9, 11-14, 20, and 21) format.
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B We must give claims their broadest reasonable
interpretation. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). Although means-plus-function
and step-plus-function claims are inherently narrow because
they are limited to structures and acts found in the
specification or their equivalents, 35 U.S.C. § 112, we
remain obliged to give them the broadest construction
possible within the law. In particular, we may not read
into a claim limitations that are expressly added in a
dependent claim. Transmatic Inc. v. Gulton Indus., 53 F.3d
1270, 1277, 35 USPQ2d 1035, 1041 (Fed. Cir. 1995) (applying
the doctrine of claim differentiation in the context of
dependent claims).
B. Claim grouping
C Although Applicants state that the claims on appeal do not
stand or fall together (Paper 14 at 7-8), we are guided by
what Applicants actually argue. In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). We note
that Applicants argue related apparatus and method claims
together, so we will treat them as standing or falling
together.
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C. Obviousness
D Obviousness cannot be rebutted by attacking references
individually where the rejection is based upon the teachings
of a combination of references. A reference must be read,
not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. In re Merck &
Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986). On the other hand, the examiner may not use the
claimed invention as a template to piece together the
teachings of the prior art to render the claimed invention
obvious. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
E Takabayashi and Ueno, viewed as a whole, would have rendered
the subject matter of claims 1, 2, 8, 9, and 15-21 obvious
at the time of the invention. Both references display
caller information on a television screen. In the case of
Takabayashi, the caller information is the caller's name;
for Ueno, the information is the caller's image. To display
the caller information, both references must detect an
incoming telecommunication, and must decode and transfer
that information to the television display. Ueno provides
the means for establishing a communication path between two
callers with the capacity to detect a third caller and pass
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the third caller's connection request onto one of the
original callers. Takabayashi teaches that caller
information may be either a telephone number or a name, both
of which are alphanumeric.
F The claims do not expressly limit the nature of the
telephone communication path or the nature of the
television. Although Applicants argue that Takabayashi uses
an integrated services digital network (ISDN) line
(incidently Ueno also uses an ISDN line) and that Ueno uses
a "special" television, we note that these are either within
the scope of the claims or, at least, structurally
equivalent. Moreover, Applicants provide no evidence that
Ueno's television is any different from a conventional
television.
G Applicants note that Takabayashi does not teach all of the
limitations of claims 1 and 8. (Paper 14 at 11.) We note,
however, that Takabayashi is applied in combination with
Ueno, which provides the stated missing elements.
Applicants also urge that Ueno does not teach detection and
decoding of the third caller's video image. We disagree.
Detection of incoming calls is inherent in any telephone
system. Detection of third-party callers is called Call
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Waiting. Ueno expressly teaches an image decoding
circuit 210 for the video signal. (Fig. 2; 3:51-56.)
H Applicants argue that Takabayashi and Ueno are directed to
different problems and contain no suggestion to combine
their teachings. The teaching value of a reference,
however, is not limited to its stated purpose. In re Heck,
699 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir. 1983).
Moreover, the "references need not explicitly suggest
combining teachings". In re Nilssen, 851 F.2d 1401, 1403,
7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Ueno shows a Caller
ID/Call Waiting arrangement in a very complex
telecommunications system. The problem Ueno solves is not
unique to TV phones. Takabayashi shows a simple and
inexpensive Caller ID system using existing televisions.
One seeking to implement a low-cost version of Ueno's
invention would be naturally motivated to apply
Takabayashi's technology to the problem.
I Ueno provides the additional elements of claims 2 and 9.
Ueno teaches a communication path between two callers that
recognizes a request from a third caller.
J Claim 15 provides for the transmission of third-caller
information to the television as a television signal while
the communication path between the first two callers is
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preserved. Claim 16 requires the signal to be an NTSC
signal. Both Takabayashi and Ueno transmit caller
information to a television. Ueno further teaches
transmitting third-party caller information to the
television while the first communication path is preserved.
As we noted earlier, anyone implementing the
Takabayashi/Ueno system on a standard television in the
United States (or Japan for that matter) would have used an
NTSC signal because the NTSC set the standard for television
signals.
K Claims 17-21 require displaying the caller information in an
alphanumeric format, including at least either a telephone
number or a name. Takabayashi teaches displaying the name
as an improvement over the existing practice of displaying
the number. One skilled in the art would have been
motivated to choose at least one or the other for display on
a conventional television set. Although a name is easier to
comprehend, the number is more convenient for returning the
call later. One skilled in the art would likely provide
both since the same character generator can easily produce
both. In any case, the choice between these two known
options (each with advantages and not mutually exclusive)
does not present a patentable distinction.
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L Since we sustain the rejection of claims 17-21 under
section 103 in view of Takabayashi and Ueno, it follows that
we would also sustain the rejection of claims 17, 19, and 21
under section 103 in view of Takabayashi, Ueno, and
Krisbergh. Krisbergh does not detract from the teachings
and suggestions of Takabayashi and Ueno. Instead, Krisbergh
offers a second example of a television being used as a
Caller ID display device.
M Claims 4 and 11, and their dependent claims 6, 7, 13,
and 14, present a different problem. These claims require
structures or acts to implement a temporary hold function.
We agree with the examiner that the hold function is well
known in telephony. Ueno, however, uses a different
approach to implement Call Waiting/Caller ID. He uses two
parallel interfaces: one for the original call and one for
the third-party call. Takabayashi does not cure the
deficiency. Certainly a hold function would be expedient in
this context, but the cited references do not suggest this
expedient. Absent a motivation, expressed or implied, from
the references, we cannot modify the references as the
examiner proposes without using hindsight. Thus, we cannot
sustain this rejection of these claims.
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N Claims 5 and 12, which depend from claims 4 and 11,
respectively, stand rejected in view of Takabayashi, Ueno,
and Griffith. Griffith does not cure the lack of a hold
function. Thus, we cannot sustain this rejection of these
claims either.
O The rejection of claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20
in view of Krisbergh and Ueno essentially parallels the
previous rejection in view of Takabayashi and Ueno.
Although Krisbergh is principally concerned with other
things, it does unambiguously teach the use of a television
to identify the telephone number of incoming calls. In this
respect, it parallels the teaching of Takabayashi. Thus, an
artisan seeking to implement a low-cost version of Ueno's
Caller ID/Call Waiting system would have been inspired to
use existing television equipment as an inexpensive way to
implement the Caller ID aspect of the system.
P Once again, Ueno teaches the basic concept of a Caller
ID/Call Waiting system. Krisbergh is only used to show a
relatively low-cost implementation of a Caller ID system
using an existing television. The fact that neither
reference anticipates the claimed invention does not detract
from the relevance of their teachings in combination. As
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previously noted, Ueno expressly teaches decoding a caller
information signal for the third caller.
Q As with the Takabayashi/Ueno low-cost Caller ID/Call Waiting
system, the Krisbergh/Ueno system would forward the Caller
ID information to Krisbergh's television while the third
caller is in Call Waiting mode. This meets the requirement
of claim 15. As previously noted, an artisan would
naturally use an NTSC signal in a system using a
conventional television. Thus, claim 16 presents no
patentable distinction.
R Since Krisbergh explicitly teaches displaying the caller's
telephone number, it satisfies, in combination with Ueno,
the requirement in claims 18 and 20 that the caller
information comprise a telephone number.
S Krisbergh does not teach a specific hold function. Although
the hold function is known in telephony, the cited
references do not provide a motive for implementing the hold
function. Thus, we cannot sustain this rejection under
section 103 of claims 4, 6, 7, 11, 13, and 14. Since
Griffith does not resolve this deficiency, we must also
reverse the rejection under section 103 of claims 5 and 12
in view of Krisbergh, Ueno, and Griffith.
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DECISION
We affirm the rejection of claims 1, 2, 8, 9, and 15-21 as
obvious in view of Takabayashi and Ueno. We reverse this
rejection as applied to claims 4, 6, 7, 11, 13, and 14. We also
reverse the rejection of claims 5 and 12 as obvious in view of
Takabayashi, Ueno, and Griffith.
We also affirm the rejection under section 103 of claims 1,
2, 8, 9, 15, 16, 18, and 20 in view of Krisbergh and Ueno and of
claims 17, 19, and 21 in view of Takabayashi, Ueno, and
Krisbergh. We reverse the rejection under section 103 of
claims 4, 6, 7, 11, 13, and 14 in view of Krisbergh and Ueno. We
also reverse the rejection of claims 5 and 12 as obvious in view
of Krisbergh, Ueno, and Griffith.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). See 37 CFR § 1.136(b).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-1292
Application 07/911,471
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GREENBLUM & BERNSTEIN, P.L.C.
1941 Roland Clarke Place
Reston, Virginia 22091
27 November 1998
To: Alicie Callaham
Legal Tech
From: Richard Torczon
Administrative Patent Judge
Re: Appeal No. 95-1292
Attached is the record and a draft decision for
the captioned appeal. I have also e-mailed an
electronic copy to you. Please:
1. Proofread the draft decision;
2. Verify
* quotes and
* citations (including point citations);
3. Shepardize the cited cases;®
4. Prepare the decision for circulation;
5. Return the record with the prepared
decision to me; and
6. Send me an electronic copy of the prepared
decision via e-mail.
Thank you.
Attachment