Ex Parte Isberg

Patent Trial and Appeal Board

Jan 6, 2014

11450094 (P.T.A.B. Jan. 6, 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.
11/450,094 06/09/2006 Peter Claes Isberg 9342-376 7563
54414 7590 01/07/2014
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
OPSASNICK, MICHAEL N
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
01/07/2014 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 PETER CLAES ISBERG
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Appeal 2012-004872
Application 11/450,094
Technology Center 2600
____________

Before CARLA M. KRIVAK, ELENI MANTIS MERCADER, and
JUSTIN BUSCH, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appeal 2012-004872
Application 11/450,094

2
STATEMENT OF THE CASE
Appellant’s claimed invention is directed to “methods, electronic
devices, and computer program products for setting a feature in an electronic
device” (Spec. 1:2-3).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An electronic device, comprising:

a user characteristic module that is configured to analyze at
least one characteristic of a user of the electronic device and to
set a feature of the electronic device based on the analysis of the
at least one characteristic, the feature being a user
programmable feature of the device.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-8, 15-24, and 31-33 under 35 U.S.C.
§ 102(e) based upon the teachings of St. John (US 6,463,415 B2; Oct. 8,
2002).
The Examiner rejected claims 9-14 and 25-30 under 35 U.S.C.
§ 103(a) based upon the teachings of St. John and Kemp (US 2004/0039483
A1, pub. Feb. 26, 2004).

ANALYSIS
Rejection under 35 U.S.C. § 102
Appellant argues the Examiner is incorrect in finding St. John teaches
the limitations recited in independent claims 1, 17, and 33. That is,
Appellant contends St. John does not teach “setting a programmable feature
on a party’s communication device based on an emotion detected in the
Appeal 2012-004872
Application 11/450,094

3
party’s voice” or “an analysis of one or more characteristics of a user of the
device” (App. Br. 5). Rather, St. John teaches “monitoring a conversation
and providing feedback to a third party based on a predetermined emotion”
(emphasis omitted) (App. Br. 4-5).
The Examiner finds, and we agree, based on a broad but reasonable
interpretation of the claim language, the operator (computer and network) of
St. John is the user, and the operator sets (programs/configures) a feature of
forwarding a conversation to the operator when a customer/employee is
upset (Ans. 11).
With respect to Appellant’s assertions in the Reply Brief (Reply Br. 2-
3), it is noted these arguments could have been presented in the Principal
Brief on Appeal, but were not. In the absence of a showing of good cause,
we conclude the regulations set out in 37 C.F.R. § 41, Practice Before the
Board of Patent Appeals and Interferences, do not require the Board to
consider such belated arguments. For a full discussion of this issue, see Ex
Parte Borden, 93 USPQ2d 1473 (BPAI 2010) (Informative).
Even considering Appellant’s arguments in the Reply Brief, we are
not persuaded the Examiner erred in finding St. John anticipates claims 1, 17
and 33, argued together, and claims 2-8, 15, 16, 18-24, 31, and 32,
dependent therefrom and not separately argued.
Rejection under 35 U.S.C. § 103
Appellant provides no substantive arguments regarding claims 9-14
and 25-30, other than to state these claims are patentable for the reasons
asserted with respect to claims 1, 17, and 33. Thus, we sustain the
Examiner’s rejection of claims 9-14 and 25-30.

Appeal 2012-004872
Application 11/450,094

4
DECISION
The Examiner’s decision rejecting claims 1-8, 15-24, and 31-33 under
35 U.S.C. § 102 is affirmed.
The Examiner’s decision rejecting claims 9-14 and 25-30 under 35
U.S.C. § 103 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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