Ex Parte Frank et al

Patent Trial and Appeal Board

Oct 29, 2014

11747613 (P.T.A.B. Oct. 29, 2014)

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.
11/747,613 05/11/2007 Scott Frank 070206; 190257-1050 4837
38823 7590 10/30/2014
AT&T Legal Department - TKHR
Attn: Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
HTUN, SAN A
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
10/30/2014 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 SCOTT FRANK, ROBERT STARR, JOHN RUCKART,
STEVEN TISCHER, and SAMUEL ZELLNER

Appeal 2012-005068
Application 11/747,613
Technology Center 2600
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a method and system of using
location information to transmit alerting information to a communications
device. The method comprising receiving location information regarding a
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Application 11/747,613

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communications device; selecting alerting information based on the location
of the communications device; and

transmitting to the communications device information pertaining to the
alerting information. See Abstract.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. A method of using location information to customize a
communications device comprising:
receiving at a server computer residing in a network the
location information regarding the communications device, the
location information identifying a current physical location of
the communications device;
selecting an alerting tone from a database of alerting tones
residing in the network based on the current physical location
of the communications device;
transmitting the alerting tone to the communications device
from the server computer, the server computer not residing in
the communications device; and
implementing signaling of an incoming call from non-priority
contacts using the alerting tone while the communications
device is at the current physical location, wherein signaling of
an incoming call from priority contacts does not use the alerting
tone and a contact list of the communications device classifies a
plurality of contacts as either priority contacts or non-priority
contacts.

The Examiner relies on the following as evidence of unpatentability:
Byers US 2003/0054866 A1 Mar. 20, 2003
Nagesh US 2006/0291640 A1 Dec. 28, 2006
Achuthan US 2002/0077102 A1 June 20, 2002
Brown US 2006/0174323 A1 Aug. 3, 2006
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Application 11/747,613

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Heie US 2002/0198004 A1 Dec. 26, 2002

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18,
and 19 under 35 U.S.C. §103(a) as unpatentable over Byers,
Nagesh and Achuthan. Ans. 4–14.1
2. The Examiner rejected claims 3, 10, and 17 under 35 U.S.C.
§103(a) as unpatentable over Byers, Nagesh, Achuthan, and
Brown.
3. The Examiner rejected claims 6, 7, 13, 14, and 20 under 35 U.S.C.
§103(a) as unpatentable over Byers, Nagesh, Achuthan, and Heie.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 7–21) and the Reply Brief (Reply
Br. 2–6) that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Rej. 2–15),
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 4–21). We highlight and
amplify certain teachings and suggestions of the references as follows.
Appellants present substantially similar arguments with respect to
independent claims 1, 8, and 15, arguing that the Examiner erred in rejecting

1 Throughout this opinion, we refer to the Appeal Brief filed October 19,
2011; the Examiner’s Answer mailed November 23, 2011; and the Reply
Brief filed January 20, 2012.
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Application 11/747,613

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those claims under 35 U.S.C. §103(a) as unpatentable over Byers, Nagesh,
and Achuthan. Specifically, Appellants argue that the “silent status set,” as
taught by Byers, fails to suggest the “alerting tones” of independent claims
1, 8, and 15. Additionally, Appellants argue that when a “silent status” is
set, the mobile device determines the appropriate action to be taken in
response to an incoming call. App. Br. 8, 13, and 17–18.
With respect to Nagesh, Appellants argue that the ring-tone of Nagesh
“is not based on the physical location of the communications device
receiving an in-coming call.” Specifically, Appellants argue that “according
to Nagesh, a ringtone is provided to the communications device based on a
physical location of a calling party that is placing an incoming call to the
communications device.” App. Br. 9, 14, and 18–19.
Finally, with respect to Achuthan, Appellants argue that while
Achuthan does disclose identifying the priority associated with an incoming
call, Achuthan is silent with respect to the selection of an alerting tone
“based on the current physical location of the communication device.” App.
Br. 9–10, 14–15, and 19.
The Examiner finds that Byers discloses the selection of an alert status
from a database based upon the current physical location of the
communication device, citing block 212 of Figure 2 of Byers, and then
transmitting that alert status to the communications device. The Examiner
points out that the “silent status” comprises vibrating and thus does not
disclose utilizing different alerting tones based upon the current physical
location of the communications device. Ans. 5.
The Examiner cites Nagesh as disclosing the selection of alerting
tones from a database of alerting tones based upon the current physical
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location of the communications device. The Examiner notes that Nagesh
teaches the selection of ring back tones based upon the location of the called
telecommunications device, but posits that one of ordinary skill in the art
would appreciate that the different ring back tones based upon the physical
location of the communications device could replace the “silent status” or
alert type of Byers. Id. at 6.
The Examiner cites Achuthan for a teaching of an alerting mechanism
which distinguishes incoming calls from priority contacts and non-priority
contacts. Id. at 8.
In summary, the Examiner finds it would have been obvious to one of
ordinary skill in the art to modify Byer’s teaching of selecting an alert type
for a mobile device based upon the location of the mobile device with
Nagesh’s teaching of the selection of a ring tone, based upon the location of
the communications device, along with Achuthan’s teaching of
differentiation between priority calls and non-priority calls. Ans. 8.
In reply, Appellants argue that the “silent status” of Byers is not an
“alerting tone.” Further, Appellants argue that Nagesh teaches the
utilization of a ring back or ring tone transmitted to the calling party based
upon the physical location of the called party and that “according to Nagesh,
a ringtone is provided to the communications device based on a physical
location of a calling party that is placing an incoming call to the
communications device.” Reply Br. 4. Finally, Appellants argue that while
Achuthan does disclose the differentiation between priority calls and non-
priority calls, Achuthan does not disclose selection of an alerting tone based
upon the physical location of the communications device. See Id.
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We find the Examiner’s position persuasive. Appellants are arguing
the cited references individually, focusing on the perceived shortfalls within
each reference, rather than focusing on what would be suggested to one of
ordinary skill in the art by the combined teachings of those references.
“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted). “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” Id.
Here the Examiner relies upon Beyer for a teaching of determining a
particular alert type based upon the physical location of the
telecommunications device. As depicted in Figure 2 of Byers, the location
of the device is utilized to set a “silent status” alert type for that device. In
apparent recognition of Appellants’ arguments that a “silent status” is not an
“alert,” the Examiner cites Nagesh for the teaching of selecting a ringtone
from a database based upon the physical location of the telecommunications
device, relying upon Figure 5, block 510, which expressly states “storing
location keyed ring tones or ring backs or ring tones and ring backs.”
As for Appellants’ arguments that “according to Nagesh, a ringtone is
provided to the communication device based on a physical location of a
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calling party that is placing an incoming call to the communication device,”
we note that the relevant portion of paragraph 5 of Nagesh recites:
With the present invention, a user could set different
personalized ring backs or ring tones to be sent back to
a specific set of callers based on the user's location. For
example, a first tone could indicate to coworkers that
the user is at work, but would indicate that he was busy to
friends.

Finally, with respect to Achuthan, Appellants’ arguments that
Achuthan does not disclose selection of an alerting tone based upon the
physical location of the communications device are not persuasive in view of
the Examiner’s reliance upon Achuthan to demonstrate the distinction
between priority calls and non-priority calls.
In summary, we find the Examiner did not err in relying upon the
combination of Byers, Nagesh and Achuthan to find claims 1, 8, and 15
unpatentable under 35 U.S.C. §103(a). In the absence of separate arguments
with respect to claims 2–7, 9–14, and 16–20 we find no error in the
Examiner’s rejections of claims 1–20.

DECISION
The Examiner’s decision rejecting claims 1–20 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)(1)(iv).

AFFIRMED

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