Ex Parte Jagadeesan et al

Patent Trial and Appeal Board

Jan 14, 2015

10988793 (P.T.A.B. Jan. 14, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAMANATHAN T. JAGADEESAN and
CHRISTOPHER E. PEARCE
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Appeal 2012-009711
Application 10/988,793
Technology Center 2600
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Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
DANIEL N. FISHMAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–11 and 23–44
under 35 U.S.C. § 134(a). Appeal Brief 13. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We reverse.
Introduction
The invention is directed to a “handoff of communication sessions
between cellular and desktop telephones.” Appeal Brief 1.

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Application 10/988,793

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Representative Claim (disputed limitations emphasized)
1. A method comprising:
anchoring a communication session, which involves a
remote device and a cellular telephone, in an enterprise network
such that signaling for the communication session passes
through an element of the enterprise network;
receiving an indication to handoff the communication
session from the cellular telephone to a desktop telephone
coupled to the enterprise network;
placing the remote device in a holding state in response
to the indication; and
handing off the communication session, which is
anchored in the enterprise network, to resume the
communication session between the desktop telephone and the
remote device.

Rejection on Appeal
Claims 1–11 and 23–44 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Mohammad (US Patent Application Publication Number
2003/0119548 A1; published June 26, 2003) and Segal (US Patent Number
7,366,513 B2; issued April 29, 2008). Answer 4–17.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 8, 2012), the Answer (mailed April
16, 2012), and the Reply Brief (filed June 18, 2012) for the respective
details. We have considered in this decision only those arguments
Appellants actually raised in the Briefs.
Appellants contend “Segal merely discloses placing an active call on-
hold responsive to a signal to provide an on-hold call and fails to disclose
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placing an active call on-hold in response to an indication to handoff the
call.” Appeal Brief 14. Appellants further contend, “[I]n Segal, the remote
device is not placed in a holding state in response to an indication to handoff
the communication session (as required by Appellants’ Claim 1), since the
active calls are placed on hold before it is determined that a handoff is
desired” and “Mohammed does not cure this deficiency, and the Final Office
Action does not allege that it does.” Id. at 14–15.
The Examiner finds Segal discloses “placing the remote device in a
holding state.” Answer 6 (citing Segal Figure 5, column 14, lines 40–44).
The Examiner concludes that it would have been obvious to modify
Mohammed by incorporating Segal’s disclosure to “provide a method and/or
system with ability of placing a remote device in a holding state.” Id.
However, we find Appellants’ arguments persuasive because Segal
discloses “PLACE ONE OR MORE ACTIVE CALLS ON-HOLD” and then
“DETERMINE THAT HANDOUT FROM NETWORK IS DESIRED” in
the flowchart of Figure 5. Accordingly, one of ordinary skill in the art
would not have modified Mohammed by placing the remote device in a
holding state in response to an indication of a handoff as recited in claim 1
because Segal discloses determining a handoff after the call has been placed
on hold. Segal Abstract.
Therefore, we do not sustain the Examiner obviousness rejection of
independent claims 1, 23, and 34 as well as, dependent claims 2–11, 24–33,
and 35–44.1

1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review claims 23–33 for
(Footnote continued on the next page.)
Appeal 2012-009711
Application 10/988,793

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DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1–11 and 23–
44 are reversed.

REVERSED

msc

compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.