Ex Parte Fukushima

Patent Trial and Appeal Board

Jan 22, 2018

12298738 (P.T.A.B. Jan. 22, 2018)

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.
12/298,738 04/08/2009 Masaru Fukushima 005200-K00215 1432
78198 7590 01/24/2018
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive SLOMS, NICHOLAS
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
01/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASARU FUKUSHIMA
Appeal 2017-007981
Application 12/298,738
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, and 4—6. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant’s claimed invention is directed to a “group call notification
method and a mobile station that are used in a group call performed through
a server connected to a packet switching network” (Spec 11).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
Appeal 2017-007981
Application 12/298,738
1. A group call notification method comprising
the steps of:
managing, by a server, member information that
includes identifiers of first members currently
participating in a group call among initial members;
receiving, by the server, an inquiry from a second
member, wherein the inquiry inquires whether the group
call is started, and is different from a request for call, and
the second member is one of the initial members,
and is not participating in the group call, and
in response to receiving the inquiry, notifying, by
the server, the identifiers of the first members to the
second member on the basis of the managed member
information.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Matsumoto
Iyer
Jung
Takahashi
Heeschen
US 2001/0025314 A1
US 2005/0143056 A1
US 2005/0266869 A1
US 2007/0087769 A1
US 2007/0142047 A1
Sept. 27, 2001
June 30, 2005
Dec. 1, 2005
Apr. 19, 2007
June 21, 2007
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, and 4—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi, in view of Matsumoto. Final Act. 2.
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Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jung, in view of Matsumoto and Iyer. Final Act. 4.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jung, in view of Matsumoto, Iyer, and Heeschen. Final
Act. 6.
ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Takahashi and Matsumoto teaches or suggests the limitations
of
receiving, by the server, an inquiry from a second member,
wherein the inquiry inquires whether the group call is started,
and is different from a request for call,
and
in response to receiving the inquiry, notifying, by the server, the
identifiers of the first members to the second member on the
basis of the managed member information,
as recited in claim 1 and similarly recited in independent claim 2.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Action and
we add the following primarily for emphasis. We note that if Appellant
failed to present arguments on a particular rejection, we do not unilaterally
review those uncontested aspects of the rejection. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellant
failed to make for a given ground of rejection as waived).
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Appellant first argues Examiner error because “Matsumoto does not
disclose or suggest receiving, by the server, an inquiry from a second
member, wherein the inquiry inquires whether the group call is started”
(App. Br. 4, emphasis removed). Appellant contends that “the ‘presence
information’ of Matsumoto is nothing more than whether or not a user is
sitting in front of a terminal” (App. Br. 4, citing Matsumoto H 141—147; see
also Reply Br. 2).
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that “Takahashi teaches a server that manages information
about whether or not a group call is started, and further, sends this
information to the terminals” and “Matsumoto is relied upon for [its] inquiry
feature” and is “particularly relevant to Takahashi because it [Matsumoto] is
concerned with the communication and management of state information by
terminals” (Ans. 3, citing Takahashi 135; see also Matsumoto H 8—9).
Appellant’s argument concerning the nature of Matsumoto’s presence
information does not affect Matsumoto’s teaching of an inquiry regarding
the state of a network of individuals.1
Appellant next argues Examiner error because “Matsumoto similarly
does not disclose or suggest ‘in response to receiving the inquiry, notifying,
by the server, the identifiers of the first members to the second member on
the basis of the managed member information’” (App. Br. 4, emphasis
1 We further note that in contradiction to Appellant’s argument regarding the
“presence information,” Matsumoto teaches the dissemination of “line-busy
information” when the receiver’s line (and hence the receiver) is busy (and
thus present) (Matsumoto H 132—134), and thereby “makes it unnecessary
for the caller ... to execute a wasteful calling operation” (Matsumoto
1138).
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Application 12/298,738
removed). Appellant contends that “[t]he Examiner fails to provide any
rationale that would transform Matsumoto’s inquiry as to whether a person
is physically sitting before a computer, and transform it to an inquiry as to
whether a person is engaging in a group conversation” (Reply Br. 3).
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that “Takahashi teaches sending, within the sent group call
notification, identifiers of participating members” that further “identifies the
status of the respective terminals” (Ans. 4, citing Takahashi | 50 and Fig. 4).
Appellant attacks Matsumoto individually, and thus fails to address the
Examiner’s findings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant also argues Examiner error because “the Examiner’s
rationale for modifying Takahashi using the Matsumoto reference as
‘[improving] system flexibility and serviceability’ is both conclusory and
unsupported by any reference of record” (App. Br. 5).
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that Matsumoto teaches “improve[ment] [of] system
flexibility and serviceability by efficiently controlling presence information”
(Ans. 4—5, quoting Matsumoto 1 8, emphasis removed). Appellant
incorrectly asserts this motivation is “unsupported by any reference of
record” and otherwise offers nothing to disprove its validity.
Appellant also argues Examiner error because “Matsumoto teaches
away from the invention using a centralized management server because the
objective of Matsumoto is to provide a distributed management system
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among communication terminals” (Reply Br. 3—4, citing Matsumoto | 6; see
also App. Br. 6).
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that “Matsumoto teaches sending inquiries to a management
server” (Ans. 6, citing Matsumoto Tflf 76, 101, and Fig. 8 item 21), and
Appellant fails to rebut the Examiner’s finding in the Reply Brief. We
further note that the cited portion of Matsumoto does not teach away from a
use of a server, but instead acknowledges a desire to “provide flexible
control on presence information among terminals which are not registered in
the server” (Matsumoto 16). See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” Mere disclosure of alternative
embodiments is not a teaching away.). Teaching an alternative method does
not teach away from the use of a claimed method. In re Dunn, 349 F.2d
433, 438 (CCPA 1965); see also, Ex parte Shuping, No. 2008-0394, 2008
WF 336222, at *2 (BPAI 2008) (“[Tjeaching a way is not teaching away.”)
(citation omitted).
Accordingly, we sustain the Examiner’s rejection of claims 1 and 2 as
being unpatentable over the combination of Takahashi and Matsumoto. We
also sustain the Examiner’s rejection of claims 4—6 as being unpatentable
over the combination of Takahashi and Matsumoto, as claims 4—6 are not
argued separately (see App. Br. 6).
Appellant’s arguments regarding the Examiner’s rejection of claims 1
and 2 as being unpatentable over the combination of Jung, Matsumoto, and
Iyer are based on the same contentions regarding Matsumoto (see App. Br.
3—6), and we sustain the Examiner’s rejection of claims 1 and 2 for similar
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Application 12/298,738
reasons. We also sustain the Examiner’s rejection of claims 4—6 which are
not separately argued (see App. Br. 6).
CONCLUSION
The Examiner did not err in finding that the combination of Takahashi
and Matsumoto teaches or suggests the limitations of
receiving, by the server, an inquiry from a second member,
wherein the inquiry inquires whether the group call is started,
and is different from a request for call,
and
in response to receiving the inquiry, notifying, by the server, the
identifiers of the first members to the second member on the
basis of the managed member information,
as recited in claim 1 and similarly recited in claim 2.
DECISION
The Examiner’s decision rejecting claims 1, 2, and 4—6 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Takahashi
and Matsumoto is affirmed.
The Examiner’s decision rejection claims 1, 2, and 4 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Jung,
Matsumoto, and Iyer is affirmed.
The Examiner’s decision rejecting claims 5 and 6 under
35 U.S.C. § 103(a) as being unpatentable the combination of over Jung,
Matsumoto, Iyer, and Heeschen is affirmed.
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Application 12/298,738
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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