Ex Parte Heidloff et al

Board of Patent Appeals and Interferences

Mar 24, 2011

10989037 (B.P.A.I. Mar. 24, 2011)

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.
10/989,037 11/15/2004 Niklas Heidloff LOT920040051 (055) 1868
46321 7590 03/24/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
CAI, WAYNE HUU
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
03/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIKLAS HEIDLOFF, OLIVER KIESELBACH,
GREGORY R. KLOUDA, and MICHAEL R. O’BRIEN
____________

Appeal 2009-006870
Application 10/989,037
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, ALLEN R. MACDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.1

RUGGIERO, Administrative Patent Judge.

ON REQUEST FOR REHEARING2

1 APJs MacDonald and Nappi have replaced APJs Martin and Hairston who
were part of the original Panel in the decision of December 16, 2010.

2 The two-month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited
in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronics delivery mode) shown
on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006870
Application 10/989,037

2
Appellants request that we reconsider the Panel’s Decision of
December 16, 2010, wherein the Examiner’s 35 U.S.C. § 103(a) rejections
of appealed claims 4, 9, 14, and 19 were sustained. We have reconsidered
the Panel’s Decision of December 16, 2010, in light of Appellants’
arguments in the Request for Rehearing, and we find no error therein. We,
therefore, decline to make any changes in the prior Decision for the reasons
which follow.
Appellants’ arguments in the Request for Rehearing focus on the
contention that the Board erred in finding that the absence of a stored “hold”
indication in the Beletic reference will result in the delivery of all message
notifications as set forth in independent claim 4. According to Appellants,
the literal teaching of Beletic is only that, in the presence of a manual “hold”
setting, messages are held “until further notice.” (Beletic, col. 15, ll. 59-65).
In Appellants’ view (Request 2-3), the Board mistakenly relied on the theory
of inherency in finding that, in the absence of a manual “hold” setting,
notification will be provided for all messages as claimed.
We do not find Appellants’ arguments to be convincing of any
error in the Panel’s original Decision. Contrary to Appellants’
contention, the Panel’s original Decision did not rely on the theory of
inherency in finding that the Examiner did not error in determining
the obviousness of the claimed invention. Rather, it is what is
explicitly disclosed by Beletic, as well as the inferences that an
ordinarily skilled artisan would draw from such disclosure, that
formed the basis for the prior Decision. A patentability analysis “can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex
Appeal 2009-006870
Application 10/989,037

3
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
As described by Beletic, the subscriber device 28 can instruct the
remote messaging system 30 to perform various message notification
operations such as “save,” “reply,” “redirect,” and “hold.” (Beletic, col. 3,
ll. 28-32). Further, it is apparent that these exemplary operations are
performed without any other delivery conditions, since Beletic explicitly
provides an option for configuring the messaging system to provide
conditions to restrict delivery (“or to configure restricted delivery of
messages,” col. 3, ll. 32-33).
Accordingly, we find no error in the original Decision which
found that an ordinarily skilled artisan would have recognized and
appreciated from the disclosure of Beletic that message notifications
can be controlled solely in accordance with the presence or absence of
a stored “hold” condition. As such, the absence of a “hold” indication
would result in the delivery of all messages as claimed.

CONCLUSION
Based on the foregoing, we have granted Appellants’ request to the
extent that we have reconsidered the Panel’s decision of December 16, 2010,
but we deny the request with respect to making any changes therein.
Appeal 2009-006870
Application 10/989,037

4
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).

REHEARING DENIED

kis

CAREY, RODRIGUEZ, GREENBERG & PAUL, L.L.P.
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487