Ex Parte Petricoin

Patent Trial and Appeal Board

Sep 29, 2016

12168597 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/168,597 07/07/2008
34044 7590 10/03/2016
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Dennis Michael Petricoin JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
081276-9316-00 7773
EXAMINER
CHANG,KAIJ
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS MICHAEL PETRICOIN, JR
Appeal2015-008045
Application 12/168,597
Technology Center 2400
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
JOHN R. KENNY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-22. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-22 are rejected under 35 U.S.C. § 103(a) as obvious over
Frame (US 2006/0007915 Al; Jan. 12, 2006) and Jones (US 6,850,601 B2;
Feb. 1, 2005). Final Act. 3-25.
We affirm-in-part.
Appeal2015-008045
Application 12/168,597
STATEMENT OF THE CASE
Appellant's invention relates to "[a] system for yielding control of a
network to a device configured to operate on a PSTN." Abstract. Claim 1 is
illustrative and reproduced below:
1. A system for yielding control of a network to a device
configured to operate on a PSTN, the system comprising:
a network configured to couple one or more devices to
the PSTN;
a first device coupled to the network and configured to
operate on the PS TN;
a second device coupled to the network and configured to
operate on the PS TN;
a third device configured to provide a VoIP interface
between the network and the Internet and to provide a dial tone
to the network; and
a fourth device coupled between the network and the
third device, and configured to detect when the second device
attempts to use the network during a time when the first device
is using the network.
ANALYSIS
Claims 1-14
The Examiner finds Frame and Jones teach all limitations of claim 1.
Final Act. 3---6. The Examiner finds Frame teaches the recited network
(Frame's PSTN 115), first device (Frame's phone 125), and third device
(Frame's initializing AT A 100), and finds Jones teaches the recited second
device (Jones's server 14) and fourth device (Jones's detection unit 12).
Final Act. 3-5.
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Application 12/168,597
The Examiner reasons:
it would have been obvious to one of ordinary skill in the art,
having the teachings of Frame and Jones before him or her, to
incorporate the detection system including detecting unit and
server as taught by Jones, to improve the telecommunication
system of Frame for the motivation of providing a telephone
seizure unit for allowing a system to dial out when a telephone
is in an off-hook position (col. 2 lines 27-29 of Jones).
Final Act. 5-6.
Appellant presents the following principal argument:
"Jones does not teach or suggest [(the recited fourth device)] any
device positioned between the network and a device configured to provide a
VoIP interface between the network and the Internet and to provide a dial
tone to the network which detects when another device is attempting to use a
network." App. Br. 7.
Applicant challenges the Examiner to show how Frame and
Jones can teach the fourth device (detection unit 12) being
between the third device (ATA 100) and the network (PSTN
115). Frame and Jones teach both the third and fourth devices
(ATA 100 and detector 12) as being on the network. The only
explanation for the Examiner's randomly combining elements
of the references in a way that is not taught by the elements is
through the use of improper hindsight.
App. Br. 7; see also Reply Br. 2-3.
In response, the Examiner explains that when Frame and Jones are
combined, "the detection unit [12] of JONES is positioned in the oval area
as indicated in page 9 of the brief [(Frame's Fig. 1 is modified such that
Jones's detection unit 12 is located on POTS line 152, between initializing
ATA 100 and PSTN 115; Jones's server 14 is connected to PSTN 115)]."
Ans. 4.
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Application 12/168,597
Appellant's arguments persuade us that the Examiner erred in the
conclusion of obviousness.
Jones' s server 14 (mapped by the Examiner to the recited second
device) and Jones' s detection unit 12 (mapped by the Examiner to the
recited fourth device) are both connected to the telephone network 71, as
shown in Jones, Figure 2A. A skilled artisan modifying Frame (see Frame,
Fig. 1) to include these devices from Jones would have connected Jones's
devices to Frame's telephone network (PSTN 115), as explained by
Appellant in the Appeal Brief on pages 7-9.
The Examiner does not provide any persuasive explanation of why the
devices from Jones would be added to Frame in a different way. We find
the Examiner's explanation (Final Act. 6) of "providing a telephone seizure
unit for allowing a system to dial out when a telephone is in an off-hook
position" and the further explanation in the Answer on pages 2-5
unpersuasive because neither explanation persuasively explains why a
skilled artisan would re-arrange the various devices of Frame's and Jones's
different systems in the specific arrangement claimed by Appellant. Put
another way, POTS line 152 in Frame connects initializing AT A 100 to
PSTN 115. Simply putting Jones's detecting unit on the POTS line 152
appears to be based on improper hindsight.
We, therefore, do not sustain the Examiner's rejection of claim 1, or
of claims 2-14, which depend from claim 1.
Claims 15-18
The Examiner finds Frame and Jones teach all limitations of claim 15.
Final Act. 15-16. The Examiner finds Jones's detection unit 12 recognizing
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Application 12/168,597
a trigger condition teaches the recited (claim 15) "detecting the sequence of
DTMF signals." Final Act. 15-16 (citing Jones col. 5, 11. 20-41); see also
Ans. 6-7 ("The detection unit 'detects' if the main telephone is to dial to the
server through the dial-up telephonic communication (i.e. 'detecting DTMF
signal').).
Appellant presents the following principal argument:
The detection device of Jones, which the Examiner asserts
teaches detecting a sequence of DTMF signals, includes a
modem 16 which is connected to a main telephone line 41, and
one or more sensors 18. The one or more sensors 18 (or remote
sensors 22) detect previously defined trigger events. Jones
teaches detecting trigger events that are separate from the
network and seizing control of the network based on these
separate trigger events. Jones does not teach or suggest the
modem 16, the only device connected to the network, detecting
a trigger event.
App. Br. 10; see also Reply Br. 3 (Appellant contends "[t]he Examiner
asserts that, simply because the detection unit of Jones is connected to the
network 41, Jones teaches the detection unit detecting DTMF signals. There
is absolutely nothing in Jones that would teach this functionality for the
detection unit.")
Appellant's arguments persuade us that the Examiner erred in finding
Jones's detection unit 12 recognizing a trigger condition teaches the recited
(claim 15) "detecting the sequence of DTMF signals."
Jones (col. 5, 11. 20-24) discloses: "detection unit 12 recognizes a
trigger or condition, such as the detection of a smoke alarm as described
above, or the detection of an intruder, that cause[s] it to send out radio
frequency signals 34 from a radio frequency transmitter 37 ." See also Jones
Fig. 1 (sensors 18 and remote sensors 22 for detecting trigger condition).
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Application 12/168,597
The Examiner fails to show any teaching in Jones that detection unit
12 detects a sequence of DTMF signals when detecting a triggering
condition; sensors 18 and sensors 22 are not disclosed as producing DTMF
signals. Further, we do not agree with the Examiner's findings in the
Answer on pages 6-7 that the detection unit detects DTMF signals; rather
we agree with Appellant's argument (Reply Br. 3) that there is no suggestion
of this functionality.
We, therefore, do not sustain the Examiner's rejection of claim 15, or
of claims 16-18, which depend from claim 15.
Claims 19-21
The Examiner finds Frame and Jones teach all limitations of claim 19.
Final Act. 19-21; see also Ans. 8-9. The Examiner finds Jones's detection
unit 12 teaches the recited (claim 19) "a detector configured to detect when
the security system attempts to access the network and send a signal
indicating that the security system is attempting to access the network."
Final Act. 20 (citing Jones col. 3, 11. 43-50; col. 3, 1. 64- col. 4, 1. 3).
Appellant presents the following principal argument:
Jones does not teach or suggest the detector 12 detecting
anything with respect to the network. The detector 12 of Jones
detects trigger events via sensors 18 and 22 and then causes a
telephone seizure unit 24 to disconnect other devices from the
telephone network 71 so that the detection unit 12 can
communicate over the telephone network 71.
App. Br. 11; see also Reply Br. 3.
We do not see any error in the contested finding of the Examiner.
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Application 12/168,597
Jones (col. 3, 11. 43-50; col. 3, 1. 64 - col. 4, 1. 3) discloses detection
unit 12, modem 16, telephone line 41, and remote server 14. See also Jones,
Fig. 1.
Appellant's argument does not show any error in the contested finding
of the Examiner because Jones discloses, as broadly recited, a detector
(detection unit 12) configured to detect when the security system attempts to
access the network (detection unit 12 detecting triggering events as
acknowledged by Appellant) and send a signal (detection unit 12
communicates through modem 16) indicating that the security system is
attempting to access the network. See Jones col. 3, 11. 43-50; col. 3, 1. 64-
col. 4, 1. 3.
We, therefore, sustain the Examiner's rejection of claim 19, as well as
claims 20 and 21, which depend from claim 19 and are not separately argued
with particularity.
Claim 22
The Examiner finds Frame and Jones teach all limitations of claim 22.
Final Act. 22-25; see also Ans. 9. The Examiner finds Frame's initializing
AT A 100 teaches the recited (claim 22) "an ATA and modem coupled to the
network via the access detector and configured to provide a VoIP interface
between the network and the Internet and to provide a dial tone to the
network." Final Act. 23-24 (citing Frame i-fi-120, 32).
Appellant presents the following principal argument:
"As set forth above with respect to claims 1, 15, and 19, Frame and
Jones, alone or in combination, do not teach or suggest an ATA and modem
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Application 12/168,597
coupled to the network via the access detector." App. Br. 11; see also Reply
Br. 3.
We do not see any error in the contested finding of the Examiner.
Frame's initializing ATA 100 teaches the recited (claim 22) "an ATA
and modem coupled to the network via the access detector and configured to
provide a VoIP interface between the network and the Internet and to
provide a dial tone to the network." See Frame i-fi-120, 32; Fig. 1.
We, therefore, sustain the Examiner's rejection of claim 22.
ORDER
The Examiner's decision rejecting claims 1-18 is reversed.
The Examiner's decision rejecting claims 19-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED-IN-PART
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