Ex Parte Nishide

Patent Trial and Appeal Board

May 17, 2017

12056953 (P.T.A.B. May. 17, 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.
12/056,953 03/27/2008 Nobuo NISHIDE Q107379 1443
23373 7590 05/19/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
PREVAL, LIONEL
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUO NISHIDE
Appeal 2016-007711
Application 12/056,9531
Technology Center 2400
Before CAROLYN D. THOMAS, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant’s Brief (“App. Br.”) identifies the real party in interest as NEC
Platforms, Ltd.
Appeal 2016-007711
Application 12/056,953
CLAIMED SUBJECT MATTER
Appellant’s claims are directed to computer telephony integration
(“CTI”) systems. Spec. Abstract. Appellant discloses a CTI system in
which a computer terminal is associated with a wireless terminal, which
together provide telephone functionality. Spec. 5. The computer terminal is
connected via a local area network to a key telephone main unit (e.g., a
PBX), and the wireless terminal connects wirelessly to the key telephone
main unit. Spec. 5—6. Requests to dial an outside line are made via the
computer terminal. Spec. 6.
When a dialing request is made, the key telephone main unit (e.g., the
PBX) calls the wireless terminal, and includes information in the call signal
that indicates the call is based on the transmission request made by the
computer terminal. Spec. 6—7. Because the call is an outbound call, there is
no reason to require the user to answer the phone, and instead the wireless
terminal detects the information in the call signal and automatically answers
the phone to connect the outbound call. Spec. 7—8. However, if there is no
call signal information indicating that the transmission request was made by
the computer terminal (i.e., the call is a normal inbound telephone call), the
automatic answering feature does not operate, and the wireless terminal must
be answered manually. Spec. 8.
Claims 1 and 4 are at issue, and are reproduced below with disputed
limitations in italics:
1. A Computer Telephony Integration (CTI) system
comprising a key telephone main unit accommodating an
extension line and an external line and connected to a computer
network, an antenna connected to the key telephone main unit, a
wireless terminal used as an extension telephone set and
configured to be wirelessly connected to the antenna so that the
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key telephone main unit exchanges directly with the wireless
terminal, and a computer terminal connected to the computer
network and associated with the wireless terminal, the key
telephone main unit calling the wireless terminal associated with
the computer terminal in response to a transmission request from
the computer terminal, wherein:
the key telephone main unit comprises an identification
information adding part for adding, upon calling the wireless
terminal in response to the transmission request from the
computer terminal, to a call signal identification information
indicating that a call is based on the transmission request from
the computer terminal;
the wireless terminal comprising a judging part for
judging whether or not the identification information is added to
the call signal and an automatic answering part for
automatically answering the call if the identification information
is added to the call signal, said automatic answering part does
not automatically answer the call if the identification
information is not added to the call signal,
the wireless terminal comprising a sound volume control
part for increasing a volume of a receiving sound to a first
predetermined sound volume when the call is automatically
answered;
the sound volume control part having a motion detecting
portion for detecting a motion of the wireless terminal so as to
decrease the volume of the receiving sound to a second
predetermined sound volume when the motion of the wireless
terminal is detected.
4. A Computer Telephony Integration (CTI) control
method for use in a CTI system comprising a key telephone main
unit accommodating an extension line and an external line and
connected to a computer network, an antenna connected to the
key telephone main unit, a wireless terminal used as an extension
telephone set and configured to be wirelessly connected to the
antenna so that the key telephone main unit exchanges directly
with the wireless terminal, and a computer terminal connected to
the computer network and associated with the wireless terminal,
the key telephone main unit forming a speech path between the
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wireless terminal associated with the computer terminal and a
destination telephone set in response to a transmission request
from the computer terminal, wherein:
the key telephone main unit sends, upon calling the
wireless terminal in response to the transmission request from the
computer terminal, a code indicating that a call is based on the
transmission request from the computer terminal,
the wireless terminal automatically answering the call in
case where the call includes the code, the wireless terminal does
not automatically answer the call in case where the call does not
include the code;
the wireless terminal increasing a volume of a receiving
sound to a first predetermined sound volume when the call is
automatically answered;
when the wireless terminal detects a motion of itself, the
wireless terminal decreasing the volume of a receiving sound to
a second predetermined sound volume.
App. Br. 12—14 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoglander, Rosado, and Roskind. Final Act. 4.
Has the Examiner erred in finding the cited combination of
Hoglander, Rosado, and Roskind teaches or suggests
Roskind
Hoglander
Rosado
US 2004/0127197 A1 July 1,2004
US 2005/0048967 A1 Mar. 3, 2005
US 2006/0116121 A1 June 1, 2006
REJECTION
ISSUE
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the wireless terminal comprising a judging part for judging
whether or not the identification information is added to the call
signal and an automatic answering part for automatically answer
the call if the identification information is added to the call
signal, said automatic answering part does notautomatically
answer the call if the identification information is not added to
the call signal,
as recited in claim 1?
ANALYSIS
The Examiner s Findings and Conclusions
The Examiner rejects claim 1 as obvious, finding Hoglander teaches a
wireless terminal “comprising a judging part forjudging whether or not the
identification information is added to the call signal.” Final Act. 5 (citing
Hoglander | 88). The Examiner further finds Hoglander teaches “an
automatic answering part for automatically answering the call if the
identification information is added to the call signal.” Id. The Examiner
explains that the cited paragraphs of Hoglander describe a mobile telephone
sending an answer indication to the mobile telephony network over an
ordinary signal channel (110). Id. The Examiner further finds Appellant’s
Specification admits that it was known to use a wireless terminal as an
extension telephone set and that it was known to provide an automatic
answering function for incoming telephone calls. Ans. 2 (citing Spec. 1—2).
The Examiner finds Hoglander does not teach “the automatic
answering part does not automatically answer if the identification
information is not added to the call signal,” relying instead on Rosado to
teach this limitation. Final Act. 6 (citing Rosado Tflf 80, 82). According to
the Examiner, the cited portions of Rosado teach the use of a PABX
extension mobile phone function which allows a mobile phone to receive by
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transfer any call coming from its own PABX, and which does not
automatically answer the incoming call when caller identification
information is not included in the call signal. Final Act. 6. The Examiner
also finds Rosado teaches a system which “allows any programmable mobile
phone to work as a PABX extension” and “is able to make phone calls and
have access to PABX services as any internal extension.” Ans. 3^4.
(quoting Rosado Abstract and 1184).
Appellant s Arguments
Appellant argues the Examiner’s findings with respect to both
Hoglander and Rosado are deficient. With respect to Hoglander, Appellant
contends the mobile telephone described by Hoglander does not “judge
whether or not [] identification information is added to the call signal”
because there is no discussion in Hoglander of any identification information
added to the call signaling. According to Appellant, because there is no
indication that identification information is added to the call signal,
Hoglander does not teach “judging whether or not the identification
information is added to the call signal.” Reply Br. 5—6. With respect to
Rosado, Appellant contends the cited portions of Rosado relate to the
components and operation of Rosado’s PABX, and do not relate to functions
of the mobile terminal itself. App. Br. 9. According to Appellant, because
the cited paragraphs “merely describe components and operation of the
PABX .... [accordingly, Rosado neither teaches nor suggests that the
mobile phones comprise[s] such a detection circuit, and fails to remedy this
deficiency of Hoglander.” App. Br. 9.
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Analysis
As an initial matter, we do not find the Examiner’s conclusions with
respect to Appellant’s Specification to be supported by the statements made
therein. As we noted above, the Examiner finds various statements made in
Appellant’s Specification to be admissions of what was known in the prior
art. Although the Specification can be reasonably viewed as including
admissions that certain claim elements were separately known in the art,
establishing obviousness requires more than simply showing that claim
limitations were separately known. Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere
showing that the prior art includes separate references covering each
separate limitation in a claim under examination.”) Here, the Examiner does
not provide any explanation of how or why a skilled artisan would have
selected those admitted prior art elements referenced in Appellant’s
Specification and combined them with any of Hoglander, Rosado, and
Roskind to yield the claimed invention. As a result, we do not find the
Examiner’s findings regarding Appellant’s admissions of prior art to be
sufficient to support a conclusion of obviousness.
We are also persuaded by Appellant’s arguments regarding the
deficiencies of Hoglander and Rosado. With respect to Hoglander, we agree
with Appellant that nothing in Hoglander indicates that the mobile phone
makes any judgment with respect to whether identification information is
included in the call signal. The portions of Hoglander relied upon by the
Examiner generally teach that a mobile phone can be configured to have the
same functionality as a wired PBX telephone device. See, e.g., Hoglander
1125, 57, 77—79, and 88—89. We do not discern, however, any teaching in
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Hoglander that the mobile device is specifically used “forjudging whether
identification information is added to the call signal,” nor does the Examiner
provide any explanation of how the configuration of the mobile phone
described in Hoglander could be used to allow the phone to make such a
determination. Accordingly, we are persuaded the Examiner erred in finding
Hoglander teaches “a judging part forjudging whether or not the
identification information is added to the call signal,” as recited in claim 1.
We also agree with Appellant that Rosado does not teach any wireless
terminal in which “said automatic answering part does not automatically
answer the call if the identification information is not added to the call
signal.” The Examiner finds paragraphs 80 and 82 of Rosado teach this
limitation. Final Act. 6; Advisory Act. Continuation Sheet. But Appellant
correctly points out that the operations described in those paragraphs are not
operations performed by the mobile terminal, and instead are operations
performed by the PABX system. App. Br. 9. We also are persuaded by
Appellant’s argument that the additional portions of Rosado cited in the
Examiner’s Answer (Abstract and paragraphs 175, 184) (cited at Ans. 3—4),
also do not teach this limitation. Appellant contends, and we agree, that the
additional portions of Rosado merely teach that a mobile phone can be
programmed as an extension of a PABX and can integrate into the PABX to
have access to PABX services ordinarily provided to an internal phone
extension. Reply Br. 6—7.
In sum, Appellant’s claims require the wireless terminal be able to
determine whether identifying information is included in the call signal, and,
based on that determination, automatically or not automatically answering
the call. The Examiner has not shown that the combined teachings of the
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cited references teach, suggest, or otherwise render obvious a wireless
terminal configured in this manner. Accordingly, we do not sustain the
rejection of claim 1. For the same reasons, we do not sustain the rejection of
claim 4, which, although not identical, recites limitations substantially
similar to those discussed above in connection with claim 1.
DECISION
The Examiner’s rejection of claims 1 and 4 is reversed.
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)(l)(iv).
REVERSED
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