Ex Parte Kies

Patent Trial and Appeal Board

Sep 25, 2012

10924481 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JONATHAN K. KIES
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Appeal 2010-005302
Application 10/924,481
Technology Center 2600
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Before, MAHSHID D. SAADAT, DAVID M. KOHUT, and
JOHN G. NEW, Administrative Patent Judges.

KOHUT, 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 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

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Application 10/924,481

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INVENTION
The invention is directed to a method, computer-readable medium,
apparatus, and system for transmitting an alert tone from a wireless device to
a server and then onto intended receiving wireless devices in a push-to-talk
communication system. Spec. 2-4. Claim 7 is representative of the
invention and is reproduced below:
7. A method for transmitting alert tone information in a remote
wireless telecommunication device received from a server in a
push-to-talk system, comprising the steps of:
receiving at the server a request for a push-to-talk session;
receiving at the server an alert tone code corresponding to an
alert tone, the alert tone code identifying an alert tone
associated with a sender of the request, the alert tone code
received from the wireless telecommunication device through a
push-to-talk communication channel;
determining a group of intended receiving wireless
telecommunication devices for the push-to-talk session;
sending an indication of the push-to-talk session to each
intended receiving wireless telecommunication device in the
group; and
sending the alert tone code through the push-to-talk
communication channel to each intended receiving wireless
telecommunication device in the group.

REFERENCES
Kim US 5,940,775 Aug. 17, 1999

Harris US 6,314,306 B1 Nov. 6, 2001

Yamada US 2004/0092295 A1 May 13, 2004

Paakkonen US 2004/0121818 A1 June 24, 2004

Balasuriya US 2005/0124365 A1 June 9, 2005
(filed Dec. 5, 2003)
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Nowlan US 7,013,154 B2 Mar. 14, 2006
(filed June 27, 2002)

REJECTIONS AT ISSUE
Claims 1-4, 7, 8, 10-15, 18, 19, 21, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Balasuriya,
Nowlan, and Harris. Ans. 3-22.
Claims 9, 20, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balasuriya, Nowlan, Harris, and
Paakkonen. Ans. 22-23.
Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Balasuriya, Nowlan, Harris, and
Yamada. Ans. 24.
Claims 6 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Balasuriya, Nowlan, Harris, and Kim.
Ans. 24-25.
ISSUE
Did the Examiner err in finding that a person of ordinary skill in the
contemporaneous art would have found it obvious to combine Balasuriya,
Nowlan, and Harris to arrive at the claimed invention?
ANALYSIS
Claims 1-4, 7, 8, 10-15, 18, 19, 21, and 24
Appellant selects claim 1 as representative of the group comprising
claims 1-4, 7, 8, 10-15, 18, 19, 21, and 24. App. Br. 13. Claim 1 requires
selecting an alert tone on a wireless device and sending the alert tone from
the wireless device to a server during a push-to-talk communication. The
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Examiner finds that the combination of Balasuriya, Nowlan, and Harris
discloses this limitation. Ans. 4-5. Appellant argues that it would not be
obvious to combine the references because: (1) Nowlan only sets an alert
tone for incoming messages and not an alert tone for a message that is being
sent; (2) the combination of Nowlan with Harris would render Nowlan
unsatisfactory for its intended purpose and vice versa; and (3) the
combination is based upon improper hindsight. App. Br. 11-13; Reply Br.
2-4. We disagree.
Regarding argument (1), while it is true that Nowlan sets alert tones
for incoming messages, the Examiner uses this reference only to show that it
was known in the art to select a tone and code from a predefined set of alert
tones and codes. Ans. 26. The Examiner finds that Harris teaches sending
an alert tone to another wireless device. Ans. 26. Thus, the Examiner finds
that the combination of Nowlan and Harris teaches selecting an alert tone
and sending it to another wireless device. Ans. 26. We agree with the
Examiner.
Regarding argument (2), we disagree that the combination would
render either reference unsatisfactory for its intended purpose. We agree
with the Examiner that Appellant must determine what the combined
teachings of the references would have suggested to those of ordinary skill
in the art (Ans. 27) and we note that attacking the references individually is
insufficient to overcome the obvious rejection. See In re Keller, 642 F.2d
413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986).
For the reasons noted above, the combination of Nowlan and Harris does not
change the principle operation of any of the references. In fact, the
combination increases the effectiveness of the system to allow local
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selection of ringtone to be used as a signature when sending a message to
another device. Ans. 5 and col. 2, ll. 2-6 of Harris.
Regarding argument (3), we disagree that the Examiner relied upon
impermissible hindsight to combine the references. We disagree and add the
following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is based only on knowledge which was within the level of
ordinary skill at the time of the Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 4-25. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
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grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 4-25. Thus, we agree with the
Examiner’s findings and conclusions.
Appellant also argues that the motivation cited by the Examiner only
benefits Harris and there is no objective reason to combine the references.
App. Br. 12-13. We disagree.
The Supreme Court stated that an explicitly stated motivation to
combine the references is seen as “helpful insight,” KSR, 550 U.S. at 418,
but that the combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. Id.
at 416. All of the cited references (Balasuriya, Nowlan, and Harris) deal
with communication systems and the transfer of information between
devices. Therefore, we consider using Harris’ method of sending an alert
tone and code to a wireless device with Nowlan’s method of selecting a
particular alert tone with Balasuriya’s push-to-talk system as nothing more
than using known methods to perform their known function of
communicating particular information with another user. As such, we find
that the combination of Balasuriya, Nowlan, and Harris yields the
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predictable result of sending a selected tone through a push-to-talk system to
another user.
Thus, we are not persuaded by Appellant’s arguments and we sustain
the Examiner’s rejection of claim 1 and claims 2-4, 7, 8, 10-15, 18, 19, 21,
and 24 that were grouped with claim 1.

Claims 5, 6, 9, 16, 17, 20, 22, and 23
Regarding claims 5, 6, 9, 16, 17, 20, 22, and 23, Appellant makes the
same arguments with respect to claim 1. App. Br. 14. Therefore, we sustain
the Examiner’s rejection of the claims 5, 6, 9, 16, 17, 20, 22, and 23 for the
same reasons discussed supra with respect to claim 1.

CONCLUSION
The Examiner did not err in finding that a person of ordinary skill in
the contemporaneous art would have found it obvious to combine
Balasuriya, Nowlan, and Harris to arrive at the claimed invention.
SUMMARY
The Examiner’s decision to reject claims 1-24 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

EDL