Ex Parte Lewis et al

Board of Patent Appeals and Interferences

Apr 1, 2011

10224208 (B.P.A.I. Apr. 1, 2011)

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.
10/224,208 08/20/2002 Ronald E. Lewis 1918 1686
28005 7590 04/04/2011
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
NEURAUTER, GEORGE C
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
04/04/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RONALD E. LEWIS, CHARLES WOODSON,
BAOQUAN ZHANG, ARUN SANTHARAM,
DAREN R. FURNESS and VON K. MCCONNELL
_____________

Appeal 2009-008330
Application 10/224,208
Technology Center 2400
______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008330
Application 10/224,208
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 20.
We reverse.
INVENTION
The invention is directed to a method of notifying a mobile station of
an incoming call. See pages 4 of Appellants’ Specification. Claim 1 is
representative of the invention and is reproduced below:
1. A method of incoming call notification for a
mobile station, said mobile station being connected to at least
one call over an air interface, said method comprising:
detecting a request to connect an incoming call to said
mobile station;
making a determination that said mobile station is fully
engaged such that said mobile station cannot be connected to
said incoming call without being disconnected from at least one
of said at least one call; and
in response to said determination, transmitting an
incoming call notification to said mobile station.

REFERENCE
Cannell US 2002/0181674 A1 Dec. 5, 2002

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 8 and 10 through 16
under 35 U.S.C. § 102(e) as being anticipated by Cannell. The Examiner’s
rejection is on pages 3 through 5 of the Answer.1

1 Throughout this decision we refer to the Examiner’s Answer mailed
November 17, 2008.
Appeal 2009-008330
Application 10/224,208
3

The Examiner has rejected claims 9 and 17 through 20 under 35
U.S.C. § 103(a) as being unpatentable over Cannell. The Examiner’s
rejection is on pages 6 through 9 of the Answer.

ISSUE
Appellants argue on pages 2 through 4 of the Brief, and 1 through 4 of
the Reply Brief2, that the Examiner’s rejection of claims 1 through 8 and 10
through 16 under 35 U.S.C. § 102(e) is in error. Appellants’ arguments
present us with the following issue: did the Examiner err in finding that
Cannell teaches making a determination that the mobile station is fully
engaged?

ANALYSIS
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection. Independent claim 1 recites “making a determination that said
mobile station is fully engaged such that said mobile station cannot be
connected to said incoming call without being disconnected from at least one
of said at least one call.” On pages 11 through 12 of the Answer, the
Examiner cites to several passages in Cannell which discusses a call in
active communication. However, in the cited portions Cannell discusses
placing an active call on hold to connect to another call, which is different
from the claimed condition of being “fully engaged” in which a call can not
be connected without disconnecting an existing call. Thus, we find that
Cannell does not teach determining that the call is fully engaged.

2 Throughout this decision we refer to the Brief filed October 27, 2008,
Reply Brief January 15, 2009.
Appeal 2009-008330
Application 10/224,208
4

Accordingly, we will not sustain the Examiner’s anticipation rejection of
independent claim 1 and dependent claims 2 through 8 and 10 through 16.
The Examiner’s obviousness rejection of dependent claims 9 and 17
through 20 similarly relies upon this teaching of Cannell to teach the
limitations of independent claim 1. Accordingly, we similarly will not
sustain the Examiner’s rejection of claims 9 and 17 through 20.

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s decision
to reject claims 1 through 20.

ORDER
The decision of the Examiner to reject claims 1 through 20 is
reversed.

REVERSED

kis