Ex Parte Janssen

Patent Trial and Appeal Board

Nov 6, 2017

14853704 (P.T.A.B. Nov. 6, 2017)

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.
14/853,704 09/14/2015 Holger Janssen 19668.0253.C2 7945
30076 7590 11/08/2017
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE NW
WASHINGTON, DC 20036
EXAMINER
ASANBAYEV, OLEG
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
11/08/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing @ steptoe. com
dpeterson@ steptoe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER JANSSEN
Appeal 2017-005586
Application 14/853,7041
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1—19. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is VTech
Telecommunications Limited (App. Br. 3).
Appeal 2017-005586
Application 14/853,704
THE CLAIMED INVENTION
The present invention generally relates to “telephone systems,” and
more particularly to “a method for automatically adjusting the level of
signals (e.g., telephone ringer, voice announce device, keypad tone, or
answering machine) associated with a telephone system in accordance with a
preset time period.” Spec. 13. Independent claims 1 and 17 are directed to
methods and independent claim 12 is directed to a telephone system. App.
Br. 22, 24—26.
Claim 1 recites
1. A method, comprising:
storing, in a first handset of a telephone system, quiet
mode settings that specify a start time and an end time for a
quiet mode signaling feature;
wirelessly transmitting, from the first handset of the
telephone system to a second handset of the telephone system,
the quiet mode settings that specify the start time and the end
time for the quiet mode signaling feature; and
updating quiet mode settings for the quiet mode signaling
feature in the second handset in response to receiving quiet
mode settings from the first handset,
wherein the first handset and the second handset of the
telephone system individually self-check the status of their
quiet mode settings.
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Application 14/853,704
REJECTIONS ON APPEAL2
Claims 1—3, 9, 10, and 17—19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cronin (US 2003/0100336 Al, published May
29, 2003), Carter (US 2005/0285934 Al, published Dec. 29, 2005), and
Aljuraid (US 2005/0075096 Al, published Apr. 7, 2005).3 Final Act. 6.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Aljuraid, and Cadiz et al. (US
2004/0235520 Al, published Nov. 25, 2004)(“Cadiz”). Final Act. 12.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Aljuraid, and Ito et al. (US 2001/0053692
Al, published Dec. 20, 2001 )(“Ito”). Final Act. 13.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Aljuraid, and Hagiwara (JP 05276108 A,
published Oct. 22, 1993). Final Act. 15.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Aljuraid, and Mother (US 5,696,497,
issued Dec. 9, 1997). Final Act. 17.
Claims 12, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cronin, Carter, Isomursu et al. (US 7,088,990 Bl,
issued Aug. 8, 2006)(“Isomursu”), Ogman (US 2003/0186676 Al, published
Oct. 2, 2003)(“0gman”), and Aljuraid. Final Act. 18.
2 The Final Action contains a rejection of claims 1—19 under 35 U.S.C. § 101
as directed towards non-statutory subject matter. Final Act. 2—5. This
rejection is withdrawn. Ans. 2.
3 The Examiner’s statement of rejection states “Claims 1, 9, 10, and 20—22”
stand rejected as being unpatentable over Cronin, Carter, and Aljuraid, but
the body of the rejection more accurately identifies this statement of
rejection as directed to claims 1—3, 9, 10 and 17—19.
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Application 14/853,704
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Isomursu, Ogman, Aljuraid, and
Archambeault (US 6,230,007 Bl, issued May 8, 2001). Final Act. 21.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cronin, Carter, Isomursu, Ogman, Aljuraid, and Cadiz.
Final. Act. 22.
ANALYSIS
“wirelessly transmitting, from the first handset of the telephone
system to a second handset of the telephone system, the quiet mode settings
that specify the start time and the end time for the quiet mode signaling
feature ”
Appellant contends Cronin does not teach or suggest a first handset of
the telephone system and a second handset of the telephone system, as
required by claim 1. App. Br. 12. Specifically, Appellant argues Cronin’s
computer “does not have its own ‘quiet mode’” and “controls the ‘quiet
mode’ operation of the cellular phone.” Id. However, claim 1 does not
recite the first handset of the telephone system having its own quiet mode,
nor does the claim preclude the first handset of the telephone system
controlling the quiet mode settings of the second handset of the telephone
system. Rather, the claim recites transmitting the quiet mode settings from
the first handset to the second handset. Thus, the scope of the claimed first
handset is broader than Appellant argues. Appellant’s contention that
Cronin’s first handset and second handset does not teach or suggest the
claimed first handset and second handset because Cronin’s first handset does
not have its own quiet mode and controls the second handset’s quiet mode is
not commensurate with the scope of claim 1. See In re Self 671 F.2d 1344,
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Application 14/853,704
1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing
in the claims”).
We agree with the Examiner’s finding that Cronin’s silence regarding
the Pocket PC 100 applying quiet settings to itself during a scheduled event
time “does not preclude the Pocket PC 100 from being a first handset.” Ans.
3. We further agree with the Examiner’s finding that “there [are] no specific
limitations in the claim that requires that the first handset implement the
quiet mode setting at a specific time or based on a user command.” Id. As
cited by the Examiner (Final Act. 6 (citing Cronin Fig. 1,19)), Cronin
discloses a first device Pocket PC 100 and a second device cellular
telephone 120, and the “occurrence of an event that detected by the first
device is the approach or arrival of the date and time of the start of an event
such as a specific meeting . .. determinable by the first device by accessing a
clock” and “a command to mute . . . the ringer of the cellular telephone is
constructed by the first device.'” Cronin 19 (emphasis added).
Appellant has not provided persuasive argument or evidence that
transmitting quiet mode settings specifying start and end time for quiet
signaling from a first handset to a second handset, as required by claim 1, is
not taught or otherwise suggested by Cronin’s transmitting a mute command
for the date and time of an event from the Pocket PC to the cellular
telephone.
“wherein the first handset and the second handset of the telephone
system individually self-check the status of their quiet mode settings ”
Appellant contends “[n]o handset device in Cronin ‘individually self-
check[s] the status of [its] quiet mode settings.’” App. Br. 13; see also
Reply Br. 2—3. Specifically, Appellant argues Cronin’s Pocket PC
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commanding the muting of the cell phone does not teach “that the cell phone
self-checks the status of the quiet mode setting itself, as required by claim
1Id. Appellant further contends Aljuraid’s applet controls the quiet mode
operation of a mobile device, and that Aljuraid does not teach a second
telephonic device, and thereby Aljuraid does not teach a second handset
“which self-check’s [sic] its quiet mode operation independent of the mobile
device with applet.” App. Br. 13—14. Appellant argues “Aljuraid only
discloses one cellular phone (not two) and the quiet mode is controlled by an
applet on the phone.” Reply Br. 4. Appellant also argues Carter “does not
disclose ‘the first handset and the second handset of the telephone system
individually self-check the status of their quiet mode settings.’” App. Br.
13.
Appellant’s arguments against Carter and Aljuraid separately from
Cronin do not persuasively rebut the combination made by the Examiner.
One cannot show non-obviousness by attacking references individually,
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413,425 (CCPA 1981).
Specifically, we agree with the Examiner’s finding that the “Pocket
PC 100 (i.e., claimed ‘first handset’) of Cronin performs the claimed ‘self-
check’ of ‘the status of [its] quiet mode settings.’” Ans. 4. We agree with
the Examiner’s finding that “Carter disclose a first handset of a telephone
system,” and provides “telephone functionality to the Pocket PC 100 of
Cronin.” Final Act. 7. We further agree with the Examiner’s finding that
“Aljuraid discloses a handset of a telephone system individually self-
check[s] a status of quiet mode settings.” Ans. 5.
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For example, Cronin discloses a first device Pocket PC 100 and a
second device cellular telephone 120, and the “occurrence of an event that
detected by the first device is the approach or arrival of the date and time of
the start of an event such as a specific meeting . .. determinable by the first
device by accessing a clock” and “a command to mute . . . the ringer of the
cellular telephone is constructed by the first device.'” Cronin 19 (emphasis
added). In other words, Cronin teaches the first handset Pocket PC 100 self­
checks the status of the quiet mode settings (arrival of date and time of start
of an event and subsequent need to mute the cellular telephone).
Aljuraid discloses “once the applet (102) is installed correctly in the
user’s mobile phone (100) it can perform a series of tasks by selecting a
setup option (103) offering an automatic mode (104),” where the “applet
uses the predetermined timings to set the timings in the calendar (105)” and
“controls the silent and normal sound modes” when the “calendar settings
(105) either start the silent mode (106) for a specified duration of time”
Aljuraid 120. In other words, Aljuraid teaches a first handset or a second
handset that individually self-checks the status of quiet mode settings (the
applet, on and for the mobile device on which it is installed, controls the
silent mode of the device based on timing).
Appellant does not provide persuasive evidence or argument that “the
first handset... of the telephone system individually self-check the status of
their quiet mode settings” recited in claim 1 is not taught by Cronin’s Pocket
PC checking for the arrival of the date and time of an event and sending a
mute command. Appellant does not provide persuasive evidence or
argument that “the second handset of the telephone system individually self­
check the status of their quiet mode settings ” recited in claim 1 is not taught
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by Aljuraid’s mobile device with applet installed checking calendar settings
and starting the silent mode for a duration of time based on the calendar
settings.
Combination of Cronin, Carter, and Aljuraid
Appellant contends that it is “unclear how a person of ordinary skill in
the art would arrive at the claimed invention by combining the” references.
App. Br. 14; see also Reply Br. 5—6. Specifically, Appellant argues “[n]one
of the references even disclose one handset self-checking a quiet mode
status” and that the “Examiner is using impermissible hindsight.” Id.
The Examiner has provided articulated reasoning of how the claimed
features are met by the proposed combination of the reference teachings with
some rational underpinning, specifically that it would be obvious to combine
Cronin and Aljuraid “for the purpose of setting the start and stop of the silent
mode in the cellular telephone of Cronin so that the cellular telephone can
automatically enable or disable the silent mode.” Ans. 5; see also Final Act.
8; cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellant has not
rebutted the Examiner’s findings, and therefore we are unpersuaded of
Examiner error.
Furthermore, we find Appellant’s allegation of impermissible
hindsight is unsupported in the record. Appellant provides no evidence that
combining the teachings of Cronin, Carter, and Aljuraid, as proffered by the
Examiner (Final Act. 6—8), would have been “uniquely challenging or
difficult for one of ordinary skill in the art” {Leapfrog Enters. Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor has Appellant
provided any objective evidence of secondary considerations, which our
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reviewing court guides “operates as a beneficial check on hindsight”
('Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013)).
Accordingly, we sustain the § 103 rejection of claim 1, as well as the
rejections of claims 2—19, not separately argued. See App. Br. 15—20.
DECISION
The rejections of claims 1—19 are 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)(l)(iv).
AFFIRMED
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