Ex Parte FinlaysonDownload PDFPatent Trial and Appeal BoardDec 21, 201614099668 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 14/099,668 12/06/2013 Piers FINLAYSON E1452.USC1W+ 2416 114581 7590 EIP US LLP 2468 Historic Decatur Road Suite 200 San Diego, CA 92106 12/23/2016 EXAMINER INTAVONG, JIRAPON ART UNIT PAPER NUMBER 2652 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): s andiego @ eip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PIERS FINLAYSON Appeal 2016-002897 Application 14/099,668 Technology Center 2600 Before KRISTEN L. DROESCH, LINZY T. MCCARTNEY, and JOHN P. PINKERTON, Administrative Patent Judges. MCCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-002897 Application 14/099,668 STATEMENT OF THE CASE Claim 1 illustrates the claimed subject matter: 1. A method for processing media data transmitted during a telephony session for a multi-service user in a telecommunications system, the multi-service user having access to a plurality of telephony services including a first telephony service and a second telephony service, the method comprising: receiving a call setup request from a calling party directed to a first telephony party identifier associated with the first telephony service; determining that the multi-service user is not available via the first telephony service; transmitting a call setup request to a telephony service destination associated with the second telephony service to establish a telephony session between the calling party and the telephony service destination associated with the second telephony service; causing media data transmitted during the telephony session to be captured using a media capture device intermediate the calling party and the telephony service destination; storing the media data captured by the intermediate media capture device or media data derived therefrom in a media data store so that the user who was not available via the first telephony service can access the media data after the end of the telephony session to determine what media data was transmitted during the telephony session; and making the stored media data or media data derived therefrom accessible by the multi-service user. REJECTIONS Claims 1—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over various combinations of Fortman (EP 1111892 A2; June 27, 2001), Deutsch et al. (US 2009/0325544 Al; Dec. 31, 2009), and Mocenigo (US 2007/0263794 Al; Nov. 15, 2007). 2 Appeal 2016-002897 Application 14/099,668 ANALYSIS Appellant argues that Fortman’s and Mocenigo’s teachings cannot be combined in the manner proposed by the Examiner. See App. Br. 10—12. According to Appellant, Fortman relates to providing IP surveillance (e.g., monitoring an IP telephone call) for law enforcement “in a manner that is not detectable by the end user.” Id. at 10 (quoting Fortman | 5). Appellant argues that modifying Fortman’s invention to make recorded media data available to the recorded user as taught by Mocenigo would render Fortman unsuitable for its intended purpose. Id. Moreover, in light Fortman’s goal of providing IP surveillance in an undetectable manner and Fortman’s disclosure that “[i]f end users are able to detect surveillance, the surveillance becomes useless for law enforcement purposes,” Appellant contends that Fortman teaches away from the proposed modification. Id. at 11 (quoting Fortman | 6). We find Appellant’s arguments persuasive. As found by the Examiner, Fortman concerns “recording call media in a law enforcement environment without notifying the user.” Final Act. 6; see also Ans. 14 (“Fortman is specifically concerned with IP surveillance ‘in a manner that is not detectable by the end user . . . .’”). Although the Examiner considered this fact “irrelevant,” id., we agree with Appellant that one of ordinary skill in the art would not be motivated to modify Fortman in a manner directly contrary to this goal. It makes little sense to covertly record a user’s communications only to then make that secret recording available to the user, particularly in the context of law enforcement. We therefore do not sustain the Examiner’s rejection of independent claims 1,21, and 23 and their respective dependent claims. 3 Appeal 2016-002897 Application 14/099,668 DECISION We reverse the rejections of claims 1—23. REVERSED 4 Copy with citationCopy as parenthetical citation