Ex parte Hamley

Board of Patent Appeals and Interferences

Aug 31, 2000

08406668 (B.P.A.I. Aug. 31, 2000)

Application for patent filed March 20, 1995. 1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today is
not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES P. HAMLEY
____________
Appeal No. 1997-3822
Application No. 08/406,6681
____________
ON BRIEF
____________
Before MARTIN, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
2,
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Application No. 08/406,668
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5-9, and 11-33 under 35 U.S.C. § 103. Claim 10 stands
objected to for depending from a rejected claim. We reverse.
A. The invention
The invention is a telephone system which can be used to
(a) make or receive a normal telephone call and (b) send or
receive a voice-mail message.
B. The claims
The independent claims are claims 1, 5, 14, and 24, of
which claim 14, one of the broader claims, reads as follows:
14. A telephone control system permitting a caller to
selectively transmit either a standard telephone transmission
or a voice-mail message to a called party at the called
party’s single address, the system comprising:
selector means for permitting a caller to select either a
standard telephone transmission or a voice-mail message;
processing means for storing a caller’s voice-mail
message in the event the caller selects a voice-mail message;
and
transmission means for placing a call to said called
party at said called party’s single address and, in the event
the caller has selected a voice-mail message, transmitting to
the called party said stored voice-mail message, otherwise,
processing said call as a standard telephone transmission.
C. The references and rejections
The examiner's rejections are based on the following
prior art:
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Application No. 08/406,668
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Nagata et al. (Nagata) 4,677,657 Jun. 30, 1987
Perelman 5,274,696 Dec. 28, 1993
Claims 1, 2, 5-9, 11, 14-21, and 24-31 stand rejected
under § 103 for obviousness over Nagata.
Claims 12, 13, 22, 23, 32, and 33 stand rejected under §
103 for obviousness over Nagata in view of Perelman. Because
none of these claims are separately argued, it is not
necessary for us to consider Perelman.
D. The merits of the rejection based on Nagata alone
Nagata's Figure 6 shows a communication system which
employs transmitting and receiving apparatuses 3 and 3' having
respective slots 31 for receiving cards 1 and 1', each of
which cards includes a memory 22 (Fig. 3) for storing voice-
mail messages and other circuitry for writing messages into
and reading messages out of the memory. Transmitting and
receiving apparatus 3 (Fig. 6) includes a handset 32 and
keypad 33, permitting it to be used as an ordinary push-button
telephone (col. 7, lines 5-7). If the capability of handling
ordinary telephone calls is not desired, the handset and
keypad can be omitted, resulting in the transmitting and
receiving apparatus identified as 3' in Figure 6 (col. 7,
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Application No. 08/406,668
In view of this suggestion, the examiner need not2
have argued (Answer at 4) that it would have been obvious to
replace device 3' with a device like device 3.
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lines 31-36). Apparently based on Nagata's suggestion that
the telephone device at the receiving end can take the form of
a device 3 or a device 3' (col. 8, lines 57-65), the examiner2
contends (Answer at 4) that it would have been obvious to
replace transmitting device 3' of Figure 6 with a device like
device 3, which includes a handset, keypad, and indicator lamp
and thus is capable of being used to receive ordinary
telephone calls. Hereinafter, the device that replaced device
3' will be referred to as "the receiving telephone device" and
the other device as "the transmitting telephone device."
However, the card at the receiving end will continue to be
identified as 1'.
Each of the telephone devices 3 also includes an
indicator lamp 34 which "serves to indicate the operation
state of the transmitting and receiving apparatus 3. For
example, the indication lamp 34 blinks during the transmission
or reception of the message or it is turned on when the
transmission or reception by the card is completed." (Col. 7,
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lines 17-21.) Nagata does not explain how the transmitting
and receiving apparatus 3 determines that a message is being
or has been transmitted or received.
The information stored in memory 22 of card 1 for
transmission to card 1' includes: (a) the calling party's
"registered number," which may be his telephone number (col.
7, lines 65-67); (b) the telephone number of the other party
(col. 8, line 11); and (c) the message (col. 8, line 14). The
information can be transmitted in digital form (Fig. 3; col.
6, lines 17-21) or analog form (Fig. 5; col. 6, lines 21-30).
In order to transmit the message previously recorded on
card 1, the operator inserts the card into slot 31 of the
transmitting telephone device, which in a first embodiment
transmits the message from memory 22 of the card to memory 41
(Fig. 4) in exchanger 4, where it is held until the intended
recipient inserts his card 1' into slot 31 of the receiving
telephone device, at which time the message is forwarded from
memory 41 in exchanger 4 to the memory 22 of card 1' (col. 7,
lines 4-16 and 22-31). Nagata also describes a second
embodiment, on which the examiner relies, wherein "[i]nstead
of the exchanger 4, a telephone 3 or 3' of the one's own
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residence may be used to store the content of a message. A
memory device of a transmitting and receiving apparatus 3 or
3' provided for that purpose is indicated as a memory 35 or
35'." (Col. 7, lines 37-41.) Appellant does not dispute the
examiner's position that this passage calls for transmitting
the message from the transmitting telephone device to the
memory 35 in the receiving telephone device (Answer at 4). We
note that in describing such an arrangement, Nagata further
specifies that "[i]n this case, if a transmitting and
receiving apparatus provided with a handset 32 is used, it is
made possible to confirm only the message by taking up the
handset" (col. 7, lines 41-44). However, Nagata does not
disclose any details about the circuitry which controls either
recording of the message in memory 35 of the receiving
telephone device or playback of the recorded message through
the handset.
Turning now to the claims, we note that appellant and the
examiner specifically argue the limitations of only claim 1,
which is narrower than the other independent claims, i.e.,
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The Brief (at 17-20) recites the limitations of3
claims 5, 14, and 24 and argues that those claims are
patentable over Nagata for the reasons given with respect to
claim 1.
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claims 5, 14, and 24. However, as will appear, we are3
reversing the rejection of all of these claims for failure to
demonstrate the prima facie obviousness of the "single
address" requirement common to all of the independent claims,
which requirement the examiner and appellant apparently agree
refers to the ability to transmit standard telephone calls and
voice-mail messages to a party using a single telephone number
for that party. The examiner argues that when voice-mail
messages are sent to memory 35 in the receiving telephone
device instead of to memory 41 in exchanger 4, the calling
party is able to use the same telephone number to reach the
receiving telephone device whether making a standard telephone
call or sending a voice-mail message to memory 35 (id.).
Appellant offers the following reasons why it would not have
been obvious to use the same telephone number for both types
of communication:
In Nagata, a casual reference is made to the fact
that the receiving device 3' could be a standard
telephone. Note, however, that there is no teaching
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whatsoever in Nagata as to how a calling party could opt
to either [sic] transmit, at the calling party's option,
either a voice-mail message or a standard telephone
transmission to the called party at a single address for
the called party.
For example, looking at Nagata, and applying the
Examiner's argument, if a called [sic, calling] party
wishes to transmit the digital signal from a stored
message to the receiving party, the Examiner suggests
that the transmitting party would transmit the digital
signal right off of the card, sending it to the receiving
party at one address for the receiving party. Now, the
receiving party's telephone would ring and the receiving
party would have no idea as to whether or not the
incoming call was a digital transmission or the calling
party with a standard telephone transmission. Thus, the
receiving party might answer the phone and be greeted
with a series of digital impulses. This, of course,
would not be an acceptable situation.
Similarly, at the receiving site, when the phone
rings, the receiving party might think it is receiving a
digital transmission, not answer the phone, and thereby
miss a standard telephone transmission.
[Brief at 14-15.]
In our view, the foregoing problem, which was not addressed in
the Answer, must be resolved by the examiner in order to
satisfy his burden to make out a prima facie case for
obviousness. A related question, not raised by appellant, is
how the receiving telephone device would recognize voice-mail
messages in order to cause them to be recorded in memory 35.
In other words, what is it that corresponds to the claimed
identifier tag and means for detecting the identifier tag of
Appeal No. 1997-3822
Application No. 08/406,668
We note that while claims 14 and 24 call for4
"storing a caller's voice-mail message in the event the caller
selects a voice-mail message," they do not require that this
storage operation occur at the site of the called party and
thus do not preclude the storage operation from being read
onto Nagata's technique of storing the voice-mail messages in
memory 41 of exchanger 4. However, in order to read these
claims onto this technique, the examiner would still have to
explain how the same telephone number can be used for both
types of transmissions, including how the exchanger
distinguishes between voice-mail messages (which are to be
stored) and standard telephone calls (which are to be
transmitted).
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claim 6? In the absence of satisfactory answers to these
questions, we are unable to sustain the rejections as to of
any of the appealed claims. 4
We have, however, found several of appellant's other
arguments unpersuasive. The first is that "Nagata is
addressed to a problem quite different and distinct from that
addressed by applicant's invention" in that "[i]n Nagata, a
means is provided for a user to store a message on a card that
he or she carries" (Brief at 10). Be that as it may,
appellant has not cited any claim language which precludes
recording the claimed voice-mail message on a card. Likewise,
we do not agree that "there is clearly no teaching in Nagata,
nor even remote suggestion, of a voice-mail transmitter which
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includes a user command input device for requesting a voice-
mail transmission rather than a standard telephone mode
transmission" (Brief at 12), as recited in claim 1. Appellant
has not explained, and it is not apparent to us, why the
claimed user command input device cannot be read onto card 1,
as argued by the examiner (Answer at 8), which implicitly
treats the card and the transmitting telephone device as the
claimed transmitter. Nor has appellant explained why the
"selector means" of claims 5 and 14 and the step of
"permitting a caller to select" in claim 24 are not satisfied
in the same way.
REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )
JCM:tdl
Appeal No. 1997-3822
Application No. 08/406,668
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James P. Hamley
2922 Cottonwood Drive SE
Mill Creek, WA 98012