Ex Parte Kim

Board of Patent Appeals and Interferences

Nov 30, 2009

09734852 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HYUN-JEONG KIM
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Appeal 2009-006240
Application 09/734,852
Technology Center 2600
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Decided: December 1, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 16-27. Claims 1-15 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). Oral argument was held on November
17, 2009.
We AFFIRM-IN-PART.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under 35 U.S.C. § 103.
Appellant’s invention relates to:
a method of notifying a caller of confirmation of a voice or text
message in a wireless communication system. A calling mobile
station transmits a voice or text message to a called mobile
station. If the called mobile station senses confirmation of the
received voice or text message, it notifies a calling mobile
station of the message confirmation via a confirmation
message. Upon receipt of the confirmation message, the calling
mobile station alerts a caller to receipt of the confirmation
message.
Abstract. The Examiner relies on the following prior art references to show
unpatentability:
DeGiorgio US 3,866,206 Feb. 11, 1975
Itoh US 5,280,521 Jan. 18, 1994
John US 6,216,106 B1 Apr. 10, 2001
(filed Dec. 15, 1998)
Choksi US 6,477,243 B1 Nov. 5, 2002
(filed Apr. 29, 1998)
Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as obvious over
John in view of Itoh.
Claim 16-19 and 27 stand rejected under 35 U.S.C. § 103(a) as
obvious over John in view of Itoh and Choksi.
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Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
John in view of Itoh, Choksi, and DeGiorgio.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious over
John in view of Itoh and DeGiorgio.

PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073 (Fed. Cir. 1988). If the Examiner’s burden is met, the burden
then shifts to Appellant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

CLAIMS 21-26
Representative claim 211 reads as follows:
21. A method of communicating a confirmation message, comprising the
steps of:
determining, when a voice call is not normally established between a
called mobile station and a calling mobile station, if a called party of the

1 Appellant argues claims 16-20 together as one group and claims 21-27
together as a second group. See App. Br. 2. For the reasons set forth below,
we select independent claim 16 as representative of claims 16-20; we select
independent claims 21 as representative of claims 21-26, as rejected; and we
address claim 27 separately. See 37 C.F.R. § 41.37(c)(1)(vii).
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called mobile station has confirmed a message created and transmitted by
the calling mobile station;
generating, by the called mobile station, a confirmation message
indicating the confirmation by the called party; and
transmitting, from the called mobile station, the confirmation message
to the calling mobile station.
Arguments and Issue
The Examiner concludes that John discloses the following steps: (1)
determining, when a voice call is not normally established between a called
mobile station (MS) and a calling MS, if a called party of the called MS has
confirmed a message created and transmitted by the calling MS; (2)
generating a confirmation message indicating the confirmation; and (3)
transmitting the confirmation message to the calling MS. Ans. 3-4.2 The
Examiner further concludes that Itoh teaches the missing claim requirements
of such a confirmation message being generated by the called party and
being transmitted from the called MS to the calling MS. Ans. 4.
Appellant contends, inter alia, that the combination of John and Itoh
does not teach the claimed “step of generating and transmitting, by the
called mobile station, a confirmation message indicating the confirmation
by the called party.” App. Br. 7.
More specifically, Itoh, [sic] discloses that if a called
terminal receives a message from a calling terminal, the called
terminal transmits an answering signal without regard to if a

2 Rather than repeat the arguments of Appellant or the Examiner, we refer to
the Appeal Brief (filed May 24, 2007); the Examiner’s Answer (filed Sep.
13, 2007); and the Reply Brief (filed Nov. 13, 2007) for their respective
details. In this decision, we have considered only those arguments actually
made by Appellant. Arguments which Appellant could have made but did
not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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called party confirms a message or not to enable the calling
terminal to check if the called terminal correctly received the
message. That is, the calling terminal cannot check if the
called party has confirmed the message, but can only check
that the message is received in the called terminal.
Id.
The issue before us, then, is: Has Appellant shown that the Examiner
erred in finding that Itoh discloses a called mobile station generating and
sending a confirmation message indicating a confirmation by the called
party?
Finding of Fact
The record supports the following Finding of Fact (FF) by a
preponderance of the evidence:
1. Itoh discloses:
A message to a mobile station is sent to a base station via a
digital exchange of a fixed communication network and is
transmitted as a packet from the base station. The called mobile
station verifies that it has received the message correctly, and
then sends an answer signal to the calling party via the base
station, and the calling party verifies that the message has
reached the called mobile station. The mobile station stores the
message and indicates its reception to the calling party. The
called party reads out the stored message.
Col. 4, l. 67 – col. 5, l. 8.
Analysis
The Examiner acknowledges that John does not disclose a called party
confirming receipt of a message, but rather relies upon Itoh for this teaching.
Ans. 4, 8-10. However, the sole passage of Itoh upon which the Examiner
relies for this teaching (id.) does not teach that the called party confirms
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receipt of the message. Rather, Itoh merely teaches a called MS sends
confirmation that a message has been received. See FF 1.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of representative claim 21. Accordingly,
we will not sustain the Examiner’s rejection of that claim or the Examiner’s
rejection of claims 22-25, which depend therefrom.
With respect to the remaining rejection of dependent claim 26,
DeGiorgio does not cure the deficiency of the obviousness rejection
explained above. Accordingly, we do not sustain the Examiner’s rejection
of claim 26.

CLAIMS 16-20
Representative claim 16 is reproduced below with emphasis added to
the relevant language:
16. A method of communicating a confirmation message, comprising the
steps of:
informing a called mobile station of receipt of a message from a
calling mobile station;
determining, if the received message is a text message, if a called
party of the called mobile station has confirmed the received message, which
is stored in the called mobile station; and
transmitting, from the called mobile station, a confirmation message
to be delivered to the calling mobile station, wherein the confirmation
message is generated by the called mobile station when the called mobile
station has confirmed the received message and the confirmation message
includes a telephone number of the calling mobile station.
Arguments and Issue
Independent claim 16 differs from independent claim 21 in various
aspects, including the following two. First, claim 16 is directed towards a
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method of a called party confirming receipt of a text—as opposed to a
voice—message. Second, claim 16 further requires that “the confirmation
message includes a telephone number of the calling mobile station.”
Similar to the position set forth in the rejection of claim 21, the
Examiner relies upon John for disclosing the steps of (1) determining
whether a called party has received a text message; and (2) transmitting
confirmation to the calling party that the text message has been received by
the called party. Ans. 5. The Examiner again finds that Itoh teaches the
missing claim requirements of such a confirmation message being generated
by the called party and being transmitted from the called MS to the calling
MS. Id. The Examiner further finds that Choksi teaches the additional
requirement that the confirmation message includes a telephone number of
the calling MS. Ans. 6.
Appellant makes arguments for claim 16 that are similar to those
noted above: the combination of John and Itoh does not teach the claimed
“step of generating and transmitting, by the called mobile station, a
confirmation message indicating the confirmation by the called party.”
App. Br. 5. But rather, Itoh merely discloses sending confirmation of receipt
of a message. Id. Appellant further contends that Choksi does not cure the
deficiency because it “deals with a receipt notification containing a
telephone number, and not if a calling terminal can check if the called party
has confirmed the message.” Id.
Appellant additionally argues that even if the cited references were to
be combined, they would not produce a system wherein “a confirmation
message is directly transmitted to the calling party,” without the need “to
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store the confirmation message in a separate server.” App. Br. 6 (emphasis
added). Rather:
when a called terminal confirms a message [in the cited prior
art], a confirmation message is generated and stored in a server,
not directly transmitted to a calling terminal. . . . [T]he calling
terminal must then transmit a request for message confirmation
in order to receive the message confirmation of the called
terminal from the server.
App. Br. 5-6.
The second issue before us, then, is: Has Appellant shown that the
Examiner erred in finding that John, Itoh, and Choksi collectively teach a
method of communicating a confirmation message wherein, when a called
party confirms the receipt of a message, the called mobile station generates a
confirmation message to be delivered to the calling mobile station?
Additional Findings of Fact
Choksi
2. Integration of telecommunication message services and
other communication services is achieved by notifying a user of
a communication system of successful receipt of a message
(e.g., a facsimile message) by sending a confirmation message
to the user, e.g., using e-mail, facsimile, voice and/or data
communications. The user may be identified by a unique
identifier, e.g., a telephone number. . . . The information may
allow the user to view the message (e.g., as marked up by the
intended recipient thereof), and/or it may indicate whether the
intended recipient has read, reviewed, down-loaded to a hard
copy or other device or otherwise accessed the message.
Abstract.
3. Upon transmission of the notification message, the user
(i.e., associated with the transmitting facsimile machine 14)
may receive a confirmation message indicating that facsimile
message 12 was successfully received by computer 18 and that
the intended recipient of the message has been notified thereof.
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Alternatively, or in addition, the user may receive such a
confirmation message after the intended recipient has actually
read, reviewed or otherwise accessed or received the facsimile
message (e.g., by accessing a web site at which the message is
available for review as described in the above-identified co-
pending application). In still further embodiments, the intended
recipient of the facsimile message may choose to have a
confirmation message transmitted to the user. For example, if
after the intended recipient has accessed the facsimile message
by visiting a web page as discussed above, the user may notify
computer 18 (or another server where the web page is stored) of
successful reception of the facsimile message and request that a
confirmation message be transmitted to the user. This may be
accomplished by specifying a communication address (e.g., an
e-mail, pager, telephone, etc. address or number) that the
confirmation address should be transmitted to, for example, by
submitting a web form including the communication address, or
in some embodiments by simply having the intended recipient
transmit an electronic message (e.g., by clicking on a “send
confirmation” button displayed on the web page, instructing
computer 18 to send the confirmation message.
Col. 6, ll. 1-28.
4. [A]n automated facsimile message system has been described.
Although the present invention has been discussed with
reference to specific illustrated embodiments thereof, the
generality of the present invention should in no way be limited
thereby. For example, in addition to the above-described
embodiments, a subscriber-based telecommunications message
(e.g., voice or data) system configured in accordance with the
present invention may include a message reception station
configured to receive voice and/or data messages for a number
of subscribers and to notify each sender thereof of the
successful receipt and or [sic] review of a message. The system
may also include an interface for coupling the message
reception station to a computer network, e.g., the internet. In
general, the message reception station may include a mapping
function (e.g., as embodied in a look-up table) configured to
provide a communication address for one of the system users in
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response to a[n] indication that a message transmitted by that
user has been received and/or reviewed. Such indication may
be provided by an unique identifier associated with the user.
The unique identifier may be received automatically (e.g., as an
ANI) or as additional user input and, preferably, comprises a
series of digits such as a telephone number associated with the
message source.
Col. 9, ll. 30-53.
5. “[T]he confirmation message may be down-loaded as a voice message
(e.g., a computer-synthesized voice message) to telephone/cellular telephone
29.” Col. 6, ll. 48-51.
Analysis
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We therefore first address the meaning and scope of the limitation of
claim 16 (emphasis added): “transmitting, from the called mobile station, a
confirmation message to be delivered to the calling mobile station . . . .”
We find that the scope of claim 16 is broader than if the claim had
omitted the language “to be delivered” and alternatively recited
“transmitting a confirmation message to the calling mobile station.” By
reciting “to be delivered,” claim 16 sets forth the intended purpose of
transmitting a confirmation message from a called MS, but it does not
actually require the delivery of the confirmation to the calling MS. That is,
claim 16 merely requires that a confirmation message be transmitted from
the called MS to any destination and that the message be of a form that is
capable of being subsequently delivered to the calling MS.
Moreover, even if the claim language “to be delivered” is ignored and
the limitation is alternatively interpreted as reciting “transmitting a
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confirmation message to the calling mobile station,” the claim would still
read on a method of communicating a confirmation message from a called
MS to a calling MS where the message is first transmitted to, and
temporarily stored on, a separate server. By not narrowing the language to
specifically recite, “transmitting a confirmation message directly to the
calling mobile station,” the limitation is broad enough to also read on
transmitting a confirmation message indirectly to the calling MS. During
examination, the claims must be interpreted as broadly as their terms
reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369
(Fed. Cir. 2004).
We recognize that Appellant’s Specification only discloses a
communication method wherein a confirmation message from a called MS is
transmitted directly to the calling MS. See Spec. 4-12. However, it is well-
settled that although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Accordingly, Appellant’s
argument that claim 16 requires that a message be transmitted directly from
the called MS to the calling MS (App. Br. 5-6) is not persuasive.
Turning to the cited prior art, Choksi discloses a method of
communicating confirmation of receipt of a message to a calling party. FF
2. A confirmation message may be sent to the originator of the message
“after the intended recipient has actually read, reviewed or otherwise
accessed or received the . . . message.” FF 3. Alternatively, the intended
recipient of the message may choose whether to transmit a confirmation
message to the originator of the message. Id. Moreover, while Choksi is
primarily directed towards sending a confirmation in response to receipt of
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fax messages (see, e.g., id.), Choksi’s method also applies to a recipient
sending confirmation messages in response to receipt of voice and data (or
text) messages. FF 4. The confirmation message may include a telephone
number of the message source, or calling phone. Id. The confirmation
message may be downloaded to a cellular telephone. FF 5.
Restated, Choksi alone discloses each and every limitation of claim
16. As such, Appellant has not shown that the Examiner erred in finding
that John, Itoh, and Choksi collectively teach a method of communicating a
confirmation message wherein, when a called party confirms the receipt of a
message, the called MS generates a confirmation message to be delivered to
the calling MS. See In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting
that obviousness rejections can be based on references that happen to
anticipate the claimed subject matter). Accordingly, we will sustain the
Examiner’s rejection of claim 16 and dependent claims 17-20, which fall
with claim 16.

CLAIMS 21 AND 27
Claim 27 depends from independent claim 21 and further recites
“wherein the confirmation message includes a telephone number of the
calling mobile station.” As noted above, we do not sustain the Examiner’s
rejection of claim 21 based upon only John and Itoh. However, like claims
16-20, the Examiner rejected dependent claim 27 based upon further
combining Choksi with John and Itoh. We will therefore sustain the
Examiner’s rejection of dependent claim 27.
Claim 27, based upon its dependence from claim 21, requires
“transmitting, from the called mobile station, the confirmation message to
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the calling mobile station.” Just as in the case of claim 16, though, claim 27
does not require transmitting the confirmation message from the called MS
directly to the calling MS. Rather, claim 27 is broad enough to read on
transmitting the message indirectly to the calling MS. For the reasons set
forth in relation to claims 16-20, then, we also find that Choksi alone
discloses each and every limitation of claim 27. As such, Appellant has not
shown that the Examiner erred in finding that John, Itoh, and Choksi
collectively teach a method of communicating a confirmation message after
determining a called party has confirmed receipt of a voice message, as
required by dependent claim 27. See Meyer, 599 F.2d at 1031 (noting that
obviousness rejections can be based on references that happen to anticipate
the claimed subject matter).
Independent claim 21 does not include the additional limitation
recited in dependent claim 27 and is therefore broader than claim 27.
Pursuant to our authority under 37 C.F.R. § 41.50(b), then, we enter a new
ground of rejection for claim 21 under 35 U.S.C. § 103(a) as obvious over
John in view of Itoh and Choksi. See Ormco Corp. v. Align Tech., Inc., 498
F.3d 1307, 1319 (Fed. Cir. 2007) (holding that where dependent claims
“were found to have been obvious, the broader [independent claims] must
also have been obvious”).

DEPENDENT CLAIMS 22-26
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have rejected independent
claim 21 under 37 C.F.R. § 41.50(b). However, we have not reviewed the
remaining claims 22-26 to the extent necessary to determine whether these
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claims are also unpatentable under 35 U.S.C. § 103. We leave it to the
Examiner to determine the appropriateness of any further rejections based
thereon.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in finding that Itoh
discloses a called MS generating and sending a confirmation message
indicating a confirmation by the called party. As such, Appellant has shown
that the Examiner erred in rejecting claims 21-26 under 35 U.S.C. § 103.
Appellant has not shown that the Examiner erred in finding that John,
Itoh, and Choksi collectively teach a method of communicating a
confirmation message wherein, when a called party confirms the receipt of a
message, the called MS generates a confirmation message to be delivered to
the calling MS. As such, Appellant has not shown that the Examiner erred
in rejecting claims 16-20 and 27 under 35 U.S.C. § 103.
We further conclude that John in view of Itoh and Choksi renders
claim 21 obvious under 35 U.S.C. § 103.

DECISION
We do not sustain the Examiner’s rejections with respect to appealed
claims 21-26. Therefore, the Examiner’s decision rejecting claims 21-26 is
reversed.
We sustain the Examiner’s rejections with respect to appealed claims
16-20 and 27. Therefore, the Examiner’s decision rejecting claims 16-20
and 27 is affirmed.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 21 under 35 U.S.C. § 103(a) as obvious over
John in view of Itoh and Choksi.

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
that “Appellant may file a single request for rehearing within two months of
the date of the original decision of the Board.”
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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