Ex Parte Park et al

Patent Trial and Appeal Board

Dec 10, 2012

11299466 (P.T.A.B. Dec. 10, 2012)

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.
11/299,466 12/12/2005 Sung-Jin Park 678-3881 6859
66547 7590 12/10/2012
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
REGO, DOMINIC E
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
12/10/2012 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SUNG-JIN PARK, JOON-GOO PARK,
and SANG-KYUNG SUNG
________________

Appeal 2010-005827
Application 11/299,466
Technology Center 2600
________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of claims 1-14, and enter a new
ground of rejection for claim 1.

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STATEMENT OF THE CASE 1
Background
“The present invention relates to a method and system for controlling
a talk time for a [Push-to-Talk over Cellular] PoC user, capable of freely
making use of the talk time according to the priority of a talker when the
talker obtains a floor without other requesters of the floor during PoC
communication.” (Spec. p. 1, ll. 12-14 (“Field of the Invention”)).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added to contested limitations):
1. A method for controlling a talk time for a PoC user, the
method comprising the steps of:
determining whether a talk time limit of a PoC client that is
transferring a talk burst is close at hand;
when the talk time limit is close at hand, determining whether
a floor requester who makes a request for a floor is in a floor
list for storing the floor requester; and
when the floor requester is not in the floor list, extending the
floor and transferring the talk burst.

1 Throughout this Decision, we refer to the Final Office Action (FOA)
mailed Apr. 24, 2009; the Appeal Brief (App. Br.) filed Sep. 24, 2009; the
Examiner’s Answer (Ans.) mailed Dec. 18, 2009; the Reply Brief filed
Feb. 18, 2010; and the original Specification filed on Dec. 12, 2005.
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Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Noel US 2005/0032539 A1 Feb. 10, 2005
Kauppinen US 2005/0260988 A1 Nov. 24, 2005
Rejections on Appeal
The Examiner rejected claims 1-14 under 35 U.S.C § 103(a) as being
unpatentable over Kauppinen in view of Noel. (Ans. 3).

GROUPING OF CLAIMS
Based upon the Appellants’ arguments against the rejections (App. Br.
2),2 our authority under 37 C.F.R. §41.37(c)(1)(vii), and the dispositive issue
raised due to the similarity of the limitations in each of independent claims 1
and 8, we select independent claim 1 as the representative claim to decide
this appeal for all claims on appeal.
We have only considered those arguments raised by Appellants in the
Briefs. Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived.

2 Appellants indicated that claims 2-7 stand or fall together with
independent claim 1 and that claims 9-14 stand or fall together with
independent claim 8. (App. Br. 2). However, we find the same dispositive
issue to be present for each of the claims on appeal such that claims 2-14
stand or fall with claim 1.
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Application 11/299,466

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CONTENTIONS
Appellants contend that the Examiner has failed to establish that
Kauppinen in combination with Noel renders claims 1-14 unpatentable
under 35 U.S.C. § 103(a) (App. Br. 3-9).
In particular, Appellants contend that the Examiner erred in relying
upon Noel as teaching the two “when” clauses in claim 1, i.e., (1) “when the
talk time limit is close at hand, determining whether a floor requester who
makes a request for a floor is in a floor list for storing the floor requester;
and [(2)] when the floor requester is not in the floor list, extending the floor
and transferring the talk burst.”
Appellants further contend in this regard that the Examiner erred in
his fact finding because Noel instead teaches receiving a list of all
participants and allowing participants with high priority to change the queue
order, and also teaches a method for a Push-to-Talk (PTT) server that has
received a call request message to check whether a mobile device of any call
participant is registered in the network. Appellants contend that neither of
these facts teach or suggest the claim limitations at issue. (App. Br. 6-7).
In addition, Appellants contend that Noel “never determines whether a
floor requester is in a floor list for storing the floor requester, as previously
argued.” (Reply Br. 3).
ISSUE
Did the Examiner err in rejecting claims 1-14 as being unpatentable
because the cited art does not teach or suggest all the claimed limitations of
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claims 1 and 8, in particular, the limitations of “when the talk time limit is
close at hand, determining whether a floor requester who makes a request for
a floor is in a floor list for storing the floor requester; and when the floor
requester is not in the floor list, extending the floor and transferring the talk
burst,” as recited in claim 1 and similarly recited in claim 8?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with the Examiner’s
findings and reasoning only with respect to the recitation of “when the floor
requester is not in the floor list, extending the floor and transferring the talk
burst.” We find that Noel does not teach or suggest this limitation as it is
recited in independent claims 1 and 8. We are unable to readily ascertain
any teaching or suggestion of “extending the floor” in the cited portion of
Noel (Noel ¶¶ [0021] – [0023]), or elsewhere in the reference.
We agree with Appellants’ arguments in this regard, cited supra, and
therefore find that the Examiner erred in the rejection of claims 1-14.
However, we do agree with the Examiner’s findings regarding the remaining
limitations of claim 1, for example, the Examiner’s finding that the talk time
limit being “close at hand” is taught or suggested by Kauppinen, and as
similarly recited in claim 8. (Ans. 4, 10).
However, we reverse the Examiner’s rejection, pro forma, and apply a
new ground of rejection to these claims, discussed infra.
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NEW GROUND OF REJECTION
We enter a new ground of rejection for claim 1, and leave it to the
Examiner to make a further determination regarding the patentability of
claims 2-14. The following additional findings of fact are pertinent to the
new ground of rejection.
ADDITIONAL FINDINGS OF FACT
We find that Kauppinen and Noel, either alone or in combination, do
not explicitly teach “when the floor requester is not in the floor list,
extending the floor and transferring the talk burst,” as recited in independent
claim 1. As set forth by the Examiner in the Answer, and as discussed,
supra, we find that Kauppinen and Noel teach the remaining limitations of
claim 1.
We enter a new ground of rejection under 35 U.S.C. § 103(a) for
claim 1 as being unpatentable over the combination of Kauppinen and Noel.
Although not explicit, we find that Kauppinen Figs. 3 and 4 and
related disclosure suggest that, if there is no floor requester in the floor list,
the floor will be extended and the talk burst will continue to be transferred.
For example, if the user equipment (UE) does not send a release request
(Fig. 3, 3-6) for group G1, the current speaker/user will continue to be able
to transmit the talk burst until another user in the group requests to transmit.
Further to this point, if no other voice streams are present at the same time
(Fig. 4, step 4-8), the voice stream will continue to be transmitted to the UE
(step 4-9).
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Accordingly, we find that the problem acknowledged in Appellants’
Specification in extending the time for transmission was previously solved
by shutting down transmission and then re-requesting additional time,
resulting in inefficiencies (Spec. 7:4-15). However, we point out that it is
well-known in fixed-time communication sessions to extend the time
available for transmission if nobody else is in the queue or has requested
permission to transmit.
Therefore, we find that it would have been obvious to modify the
teachings of Kauppinen and Noel by the well-known fixed-time session
communication practice of extending the time available to transmit if there is
no present contention for the channel so that the method includes “when the
floor requester is not in the floor list, extending the floor and transferring the
talk burst,” as recited in independent claim 1.
CONCLUSIONS
(1) We do not sustain the Examiner’s rejection of claims 1-14
under 35 U.S.C. § 103(a).
(2) We newly reject claim 1 under 35 U.S.C. § 103(a), as discussed
above, and leave it to the Examiner to determine the patentability of claims
2-14.
DECISION
The Examiner’s rejection of claims 1-14 is reversed.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Kauppinen and
Noel in view of well-known communication practices, discussed supra.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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. . . .

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).
REVERSED
37 C.F.R. § 41.50(b)

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