Ex Parte Hirsch

Board of Patent Appeals and Interferences

Nov 28, 2003

08765258 (B.P.A.I. Nov. 28, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LUCIAN HIRSCH
_____________
Appeal No. 2003-0415
Application No. 08/765,258
______________
HEARD: NOVEMBER 18, 2003
_______________
Before HAIRSTON, BARRETT, and GROSS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 18.
The disclosed invention relates to a method of establishing
a voice link from a personal computer to a telephone terminal via
a facsimile terminal.
Appeal No. 2003-0415
Application No. 08/765,258
2
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method of controlling a communication between a
personal computer and a facsimile terminal, the facsimile
terminal connected to the personal computer via an interface
and having an integrated communication device and a
connected telephone terminal, comprising the steps of:
operating, using a main memory of the personal
computer, a link to the facsimile terminal;
entering commands into the personal computer for the
telephone terminal;
converting the commands, at a user control unit which
is assigned to the personal computer, into first control
commands for the facsimile terminal, into special control
commands; and
establishing an outgoing voice link of the connected
telephone terminal using the special control commands.
The references relied on by the examiner are:
Wong et al. (Wong) 5,631,745 May 20, 1997
(filed Nov. 7, 1994)
Saulsbury 5,801,757 Sep. 1, 1998
(filed May 16, 1994)
Claims 1 through 8 and 10 through 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Saulsbury.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saulsbury in view of Wong.
Reference is made to the brief (paper number 22) and the
answer (paper number 23) for the respective positions of the
Appeal No. 2003-0415
Application No. 08/765,258
3
appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 1 through
18.
Saulsbury discloses a circuit Board (Figure 1) that is
connected to a host computer via host interface 5. A telephone
is connected to the Board via switches, handset and line
interface circuit 6, and Saulsbury discloses (column 12, lines
1 through 7) that the computer can initiate a call to the
telephone by use of a certain key combination on the keyboard of
the computer. A facsimile machine may be connected to the Board
via modem 4 (column 9, lines 13 through 18; column 10, lines
48 through 51; column 11, lines 37 through 40).
Appellant argues (brief, page 10) that:
Claim 1 requires more than mere connectedness of
the computer-fax-telephone--it requires operating these
devices connected together in a specific manner. When
the device of Saulsbury is operating by communicating
using the facsimile protocol, it is not operating to
provide control commands to establish an outgoing voice
link of the connected telephone terminal--rather it is
simply acting to communicate information to a remote
facsimile machine. This functional difference is
significant for the claim.
We agree with appellant’s arguments. As indicated supra,
Appeal No. 2003-0415
Application No. 08/765,258
4
the telephone is not connected to the facsimile machine in
Saulsbury, and it can be placed in direct communication with the
computer. Saulsbury is silent as to a telephone connected to the
facsimile machine. Thus, the obviousness rejection of claims
1 through 8 and 10 through 17 is reversed because Saulsbury
neither teaches nor would have suggested to one of ordinary skill
in the art the establishment of a voice link from the computer to
the telephone via the facsimile machine. The obviousness
rejection of claims 9 and 18 is reversed because the teachings of
Wong do not cure the noted shortcoming in the teachings of
Saulsbury.
Appeal No. 2003-0415
Application No. 08/765,258
5
DECISION
The decision of the examiner rejecting claims 1 through
18 under 35 U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
KWH/hh
Appeal No. 2003-0415
Application No. 08/765,258
6
BELL, BOYD & LLOYD, LLC
P.O. BOX 1135
CHICAGO, IL 60690-1135