Ex Parte Kim

Board of Patent Appeals and Interferences

Jun 28, 2002

08768715 (B.P.A.I. Jun. 28, 2002)

1 An amendment (Paper No. 10, filed October 8, 1998) submitted
subsequent to the final rejection has been entered by the examiner (Paper No.
12, mailed October 22, 1998).
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUNG-HYUN KIM
____________
Appeal No. 2000-1520
Application No. 08/768,715
____________
ON BRIEF
____________
Before HAIRSTON, DIXON, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection1 of claims 1-15, which are all of the
claims pending in this application.
BACKGROUND
Appellant's invention relates to a method of detecting a
caller identification (ID) provided with a ring signal, and
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Application No. 08/768,715
Page 2
automatically registering a detected caller ID in a memory of a
telephone system according to a last in first out rule. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced as follows:
1. A dialing method for a telephone system using a caller
identification, comprising steps of:
receiving, in response to an incoming call, a telephone
number of a party calling said telephone system as a caller
identification from said incoming call interposed between ring
signals;
automatically registering said caller identification, while
said ring signals indicative of said incoming call are being
received, in a memory of said telephone system according to a
last in first out rule;
after said ring signals are terminated, and said caller
identification is registered in said memory, searching said
memory for said caller identification in response to input of a
search key from an operational panel of said telephone system;
and then
after said caller identification is searched, automatically
dialing said telephone number corresponding to said caller
identification in response to input of a start key from said
operational panel of said telephone system.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Figa et al. (Figa) 4,924,496 May 8, 1990
Takahata 5,303,301 Apr. 12, 1994
Hirai 5,446,785 Aug. 29, 1995
Claims 1 and 8 stand rejected under 35 U.S.C. § 103(a) as
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Application No. 08/768,715
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being unpatentable over Hirai in view of Figa.
Claims 2-7 and 9-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hirai in view of Figa and further in
view of Takahata.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 17, mailed
February 1, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellant's brief (Paper No.
15, filed January 11, 1999) and reply brief (Paper No. 18, filed
March 31, 1999) for appellant's arguments thereagainst. Only
those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered. See 37
CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
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Application No. 08/768,715
Page 4
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
We affirm-in-part.
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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
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burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We consider first the rejection of claims 1 and 8 based on
the teachings of Hirai and Figa. We begin with claim 1.
The examiner's position (answer, pages 3 and 7) is that
Hirai teaches a first in first out (FIFO) feature, but does not
teach the step of automatically registering the caller ID in the
memory according to a last in first out rule (LIFO). To make up
for this deficiency in Hirai, the examiner turns to Figa. The
examiner points out that Figa teaches both LIFO and FIFO, and
asserts (answer, page 7) that:
Since Figa presents the advantage of using both
features (last in/first out and first in/first out), it
would have been obvious to one of ordinary skill in the
art at the time the invention was made to adapt the
teachings of Figa et al. in order to easily, quickly
identify and obtain the caller ID of the most recent
caller in the shortest time.
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Appellant asserts (brief, page 8 and reply brief, page 2)
that merely because Figa teaches LIFO and FIFO does not result in
the conclusion that it would be obvious to substitute the LIFO
arrangement of Figa for the FIFO arrangement of Hirai.
Appellant further asserts that there is no teaching or suggestion
in the references to support the combination, and that the
specific arrangement proposed by the examiner appears to be
solely for the purpose of meeting the claim limitations.
Appellant further asserts that Hirai "teaches away from the
substitution of the figure of Figa et al. '496." Appellant does
not present any specific arguments as to why appellant believes
that Hirai teaches away from the substitution of LIFO for FIFO by
the examiner. Nor does appellant provide any specific arguments
to support appellant's position that there is no teaching or
suggestion to combine the teachings of Hirai and Figa as advanced
by the examiner.
From our review of Hirai, we find that Hirai stores
information in memory 18, including the telephone number, (figure
5) in the order that the call was received i.e., (col. 13, lines
34-38). As shown in figure 6A, when the subscriber pushes down
the displaying switch 25, telephone numbers Nt are read out from
memory circuit 18 in the order of incoming calls, under the
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control of control circuit 35 (col. 13, lines 43-51). We find
from these teachings of Hirai that incoming calls are registered
in the memory according to a FIFO rule.
We additionally find that Figa discloses scan key 29 and
reverse key 31 which are search keys used to search directory 16
or logging module 22. Scan key 29 initiates a search starting
with the most recent entry stored in either the directory or the
logging module and proceeds chronologically backward to the
oldest entry stored each time that key is pressed i.e., LIFO
(col. 4, lines 52-60). Figa further discloses that reverse key
31 chronologically proceeds with the search in the opposite
direction, i.e., FIFO (col. col. 4, lines 60-62). As shown in
figure 2, a user can choose between displaying the stored numbers
according to LIFO and/or FIFO.
From these teachings of Figa that LIFO and FIFO can both be
used to quickly search for the telephone number of a caller, we
find that an artisan would have been taught to substitute the
LIFO of Figa for the FIFO of Hirai to enable the user to look
first at the most recent call received before looking at other
calls, as advanced by the examiner. We additionally find that in
view of the teachings of Figa, a skilled artisan would have been
taught to add the LIFO of Figa to the FIFO of Hirai to provide
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Hirai with the ability to store telephone numbers in a registry
for display either as LIFO and/or FIFO in view of the teachings
of Figa. Thus, from our review of Hirai and Figa, we find no
support for appellant's general assertions that Hirai teaches
away from the combination, or that there is no teaching or
suggestion to combine the teachings of Hirai and Figa.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) is
affirmed.
We turn next to claim 8. Appellant asserts (brief, page 9)
that claim 8 teaches the step of receiving caller ID between ring
signals during an incoming call to the telephone system, and that
the portion of Hirai relied upon by the examiner (col.4, lines
45-56) does not teach this feature. In response, the examiner
(answer, page 7) points to (col. 11, lines 35-64) of Hirai for a
teaching that when a call is received, ring signals are
intermittently provided, and that "a piece of telephone number
data subsequent to a first ring signal among the ring signals is
provided to the telephone terminal equipment 31 . . . a piece of
telephone number data subsequent to the first ring signal is
detected in the telephone number detection circuit."
We find that in addition to the passage referred to by the
examiner, that Figa teaches (col. 3, lines 47-53) that the
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present invention utilizes a special service called Automatic
Number Identification, in which a caller's telephone number is
transmitted by the telephone company to the customer in the
silent period between rings. From these teachings in the prior
art, we find ample teaching that the telephone number of a caller
is transmitted between rings. In the reply brief, appellant now
argues that the language "when said caller ID does not correspond
to any existing caller IDs registered in said memory" of claim 8,
is not taught or suggested by Hirai. We find that in figure 3 of
Hirai (col. 11, lines 56-62), after the telephone number is
decoded by control circuit 35, the telephone number is stored in
memory circuit 18 in step 103. Thus, we find that in Hirai,
incoming telephone numbers are stored in memory, irrespective of
whether the caller has called before and their telephone number
is already stored in memory, or the call is from a first-time
caller. To the extent that the claim could be construed to
broadly require that a determination be made that the caller ID
does not correspond to any existing caller ID in the memory
before the caller ID is stored, we note that in Figa (col. 3,
line 67 through col. 4, line 7), the detected incoming caller ID
is compared with telephone numbers stored in directory 16 by
comparator 18. If the caller ID matches a number in the
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directory the number and the party is displayed. If there is no
match, the number still appears, but the name line 32 will
display "** Call in progress **," indicating that there was no
corresponding number found in the user's directory (col. 4, lines
26-30). Display updates are made by the user (col. 6, lines 4-
6). An add routine permits a new directory entry to be entered
(col. 9, lines 29-32). Any phone number already in the log can
be automatically transferred from the log to the directory by
adding the new name and pressing add key 35. The user may
accomplish this function at any time (col. 9, lines 48-57).
We find from these teachings of Figa that if a call arrives
and the user is notified that the caller ID is not in the user's
directory, the user can enter the information into the user's
directory using the add routine. In view of the teaching of
Hirai of storing all of the incoming calls in a log (memory
circuit 18), and Figa's teaching of providing a user's directory
in addition to the call log, we find that an artisan would have
considered it obvious to provide Hirai with the user directory of
Figa, in order to allow the user of Hirai to have a user defined
directory, and to search for a caller according to the caller's
name or number, as taught by Figa (col. 1, lines 59-61, and col.
3, lines 5 and 6). This would allow the user of Hirai to search
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Application No. 08/768,715
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by caller name and number, in addition to searching by LIFO
and/or FIFO, all of which are taught by Figa. From all of the
above, the rejection of claim 8 under 35 U.S.C. § 103(a) is
affirmed.
We turn next to the rejection of claims 2-7 and 9-15 under
35 U.S.C. § 103 as unpatentable over Hirai considered with Figa
and Takahata. We begin with claims 2 and 3. Appellant asserts
(brief, page 10) that Takahata does not teach the LIFO rule
recited in claims 2 and 3. Appellant further asserts (id., and
reply brief, page 10) that deleting the earlier existing caller
ID from memory is not equivalent to storing only partial data of
caller IDs previously stored.
The examiner's position (answer, page 4) is that Hirai in
view of Figa do not teach the limitations of claims 2 and 3. The
examiner relies upon the teachings of Takahata for these
features. With regard to claim 3, the examiner acknowledges that
Takahata does not teach the step of deleting from memory the
caller ID that is identical to an incoming caller ID. The
examiner takes the position that this limitation would be obvious
in view of Takahata's teaching of storing only the frequency of
arrival of a telephone number when the incoming number is
identical to a number stored in memory.
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Page 12
We note at the outset that notwithstanding the statement by
the examiner that Figa does not teach any of the limitations of
claims 2 and 3, we find that some of the limitations of claims 2
and 3 are taught by Figa. We find from the disclosure in Figa
(col. 3, line 65 through col. 4, line 18) that the display system
includes a number detector 12 that detects the number of a
caller. The detected number is compared with the telephone
numbers stored in directory 16 by comparator 18. We find that
the telephone number will inherently be temporarily stored during
the time that the comparator is comparing the telephone number
with the numbers in the directory 16. In any event, we agree
with the examiner and appellant that Hirai considered with Figa
does not suggest claims 2 or 3 because if the user decides to
store the incoming number in the directory, the number is not
transferred to storage from its inherent temporary storage during
the comparison step, but rather is stored from a log entry or
inputted by the user.
From our review of Takahata, we agree with the examiner, for
the reasons set forth in the answer (page 4) that Takahata
considered with Hirai and Figa suggests the limitations of claim
2. Takahata teaches (col. 5, lines 6-31) that the microprocessor
10 reads the detected telephone number from the detection circuit
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4 and starts the timer 10e. The microprocessor 10 compares the
detected telephone number with all of the telephone numbers
stored in memory 10a successively. If the telephone number does
not agree with a stored number, the detected number is stored in
memory 10a. From these teachings of Takahata, we agree with the
examiner that an artisan would have considered it obvious to have
stored the telephone number in the memory of Hirai so as to save
memory space by not saving the same number twice.
With regard to claim 2, we are not persuaded by appellant's
assertion that Takahata does not teach the LIFO rule, because the
incoming number stored will be stored according to LIFO in view
of the combined teaching of Hirai and Figa. In addition,
appellant's arguments regarding the deletion step is not
pertinent to claim 2 as this limitation is not present therein.
Accordingly, the rejection of claim 2 under 35 U.S.C. § 103(a) is
affirmed.
With respect to claim 3, we are in agreement with appellant
that Takahata does not suggest deletion of a stored number in
memory upon receipt of an incoming call by the same telephone
number. We find that the combined steps of registering the
incoming number according to LIFO and deletion of the number in
memory does more than save memory, but rather also reorders the
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incoming number from its position in memory so as to change the
display sequence of the telephone number when the numbers are
read out from memory using LIFO and/or FIFO. We find no teaching
in Takahata for deletion of the number already stored in memory,
and no convincing line of reasoning has been provided by the
examiner. Accordingly, the rejection of claim 3 under 35 U.S.C.
§ 103(a) is reversed. We observe that claims 5, 7, and 10 depend
from claim 3. Accordingly, the rejection of claims 5, 7, and 10
under 35 U.S.C. § 103(a) is reversed.
We turn next to claim 4. Appellant asserts (brief, page 10)
that the claim is allowable based upon it's dependency from
claims reciting the LIFO rule. From our review of Hirai, we
agree with the examiner that Hirai teaches the steps of display
of a caller ID on a display unit (see figure 6A), and that Hirai
discloses sequentially displaying the caller ID in memory upon
successive inputs of the search key (see Ld in figure 6A, display
switch 25, and col. 13, line 65 through col. 14, line 4). In
addition, we make reference to our findings with respect to LIFO,
supra, with respect to claim 1. Accordingly, the rejection of
claim 4 under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 6. Appellant asserts (brief, pages 10
and 11) that the "step of dialing the telephone number is
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automatically performed in response to input of said start key,
while said telephone number is displayed on said display unit" is
not found in col. 14, lines 5-19, relied upon by the examiner.
Appellant provides no reasons why appellant believes that this
limitation is not met by the cited portion of Hirai other than to
assert (reply brief, page 4) that the response transmission
switch 33 of Hirai does not correspond to the start key of the
recited claims.
From our review of Hirai, we agree with the examiner that
Hirai teaches (col. 14, lines 5-19) that when the subscriber
pushes down on the response transmission switch 33, the displayed
telephone number Nt2 designated by underline Ld is called by dial
signal sending circuit 34. Accordingly, the rejection of claim 6
under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 9. Appellant asserts (brief, page 11)
that col. 4, lines 45-56 of Hirai does not teach the step of
receiving caller ID between ring signals during an incoming call
to the telephone system, as asserted by the examiner. We find
that claim 9 contains the same language as claim 8. We affirm
the rejection of claim 9 under 35 U.S.C. § 103(a) based upon our
findings with respect to claim 8, supra.
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Application No. 08/768,715
Page 16
We turn next to claims 11 and 12. Appellant asserts that
claims 11 and 12 define over the cited art for the reasons noted
above by appellant with respect to claims 1-10. The examiner
(answer, page 5) likewise has rejected claims 11 and 12 for the
reasons set forth in the rejection of claims 1-10.
We find that independent claim 11 contains language similar
to the language of claim 3 with respect to deleting from memory
caller ID that is identical to the caller ID of an incoming
telephone number, and transferring the incoming caller ID stored
in a control buffer into the memory according to LIFO.
Accordingly, we reverse the rejection under 35 U.S.C. § 103(a) of
independent claim 11, and claim 12 which depends therefrom, based
upon our findings, supra, with respect to claim 3.
We turn next to independent claim 13. Appellant asserts
(brief, page 12) that "as noted above, it would not be obvious to
combine the features of the three references in the fashion noted
by the Examiner." The examiner's position (answer, page 5) is
that Hirai does not store a caller ID according to LIFO, and
relies upon Figa for this feature. The examiner additionally
relies upon Takahata for a teaching of a control unit determining
whether the caller ID stored in the buffer of the control unit is
identical to one of the existing caller IDs stored in memory.
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We find that claim 13 contains limitations from claims 1, 2,
4, 6, and 9. We affirm the rejection of claim 13 under 35 U.S.C.
§ 103(a) based upon our finding, supra, with respect to claims 1,
2, 4, 6, and 9.
We turn next to claim 14. Appellant asserts (brief, page
12) that the cited art does not teach the deletion step of
deleting the caller ID in memory that is identical to the caller
ID stored in the buffer. We reverse the rejection of claim 14
under 35 U.S.C. § 103(a) based upon our findings, supra, with
respect to claims 3 and 11.
We turn next to claim 15. Appellant asserts (brief, pages
12 and 13) that claim 15 defines over the prior art based upon
its dependency from claim 15. We agree with the examiner
(answer, page 6) that Hirai teaches ring detecting circuit 12,
and add that the ring signals are received from a telephone
exchange (col. 1, line 42). Accordingly, we affirm the rejection
of claim 15 under 35 U.S.C. § 103(a).
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 2,
4, 6, 8, 9, 13, and 15 under 35 U.S.C. § 103(a) is affirmed.
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Application No. 08/768,715
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The decision of the examiner to reject claims 3, 5, 7, 10, 11,
12, and 14 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
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