Ex Parte Rijn

Board of Patent Appeals and Interferences

Aug 11, 2011

11145503 (B.P.A.I. Aug. 11, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/145,503 06/02/2005 Percy van Rijn PA3291REI 2927
22830 7590 08/11/2011
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
08/11/2011 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 PERCY VAN RIJN
____________

Appeal 2011-008733
Application 11/145,503
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 25-33, 37-40. Claims 34-36 have been cancelled. (Answer 4).
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for electronically transmitting a
greeting message. (Specification 1).
Claim 25, reproduced below, is representative of the subject matter on
appeal.
25. A wireless device comprising:
a module stored in memory and executable by a processor, the module
executable to control generation of audio and video data;
a camera coupled to the module and configured to generate video
data; a microphone coupled to the module and configured to generate
audio data; a user input interface coupled to the module and
configured to provide instructions to the module, the instructions
comprising an address of a recipient of the audio and video data,
wherein the module is further executable to activate the camera and
the microphone upon receiving a user selection corresponding to
generation of audio and video data via the user input interface;
a database coupled to the module and storing audio and visual
messages, wherein the module is further executable to return to pre-
recorded audio and visual messages when the user selection is not
received within a specified time period; and
a network interface configured to establish a connection to a network
and transmit the audio and video data over the network, the audio and
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video data transmitted to a recipient via a plurality of networks,
wherein at least one network of the plurality of networks is a wireless
network.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Buckley US 5,61,604 Oct. 1, 1996
Ludwig US 5,689,641 Nov.18, 1997

The following rejection is before us for review.
The Examiner rejected claims 25-33 and 37-40 under 35 U.S.C. § 103(a)
over Ludwig in view of Buckley.

ISSUE
The issue of obviousness turns on whether a person with ordinary skill in the
art would understand, given that Buckley discloses sound and graphics are
inextricably connected with one another in its system, that an invitation message to
use the system generated by the system would, by inference, have both visual and
audio components?
Another issue turns on whether Ludwig discloses audio and video data being
transmitted to a recipient via a plurality of networks, wherein at least one network
of the plurality of networks is a wireless network when he discloses that the field
office to which the laptop connects would inherently use a hard wired or fiber
cable system land based network in contrast to the wireless connection used
between the laptop and the field office?

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
We adopt the Examiner’s findings as set forth in the Answer on pages 5-24.

ANALYSIS
We affirm the rejections of claims 25-33 and 37-40.
Concerning independent claims 37 and 39, Appellant argues that “[a]s noted
by the Examiner, Ludwig does not disclose a "wireless network" as required by
each of claims 37 and 39. Instead, the Examiner argues that it would have been
obvious to modify Ludwig to include a wireless network.” (Appeal Br. 21).
We disagree with Appellant.
First, Appellant has the Examiner findings wrong. What the Examiner
found with respect to Ludwig was that “…Ludwig does not explicitly teach that at
least one network from the plurality of networks is a wireless network,” (Answer
6), and not that Ludwig “fails to disclose a ‘wireless network’”. In fact, the
Examiner found that Ludwig discloses a caller using a “laptop with two wireless
modems permitting dial-up access to two data connections in the nearest field
office (through which his calls were routed).” (Answer 6)
We thus find that Ludwig discloses the claim requirement of the audio and
video data transmitted to a recipient via a plurality of networks, wherein at least
one network of the plurality of networks is a wireless network. That is, the field
office to which the laptop connects would inherently use a hard wired or fiber
cable system land based network in contrast to the wireless connection used
between the laptop and the field office. Thus, Appellant’s argument as to any
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deficiency in motivation used by the Examiner to arrive at the claim requirement
from the teachings of Ludwig is moot given the explicit disclosure thereof.1
Concerning independent claims 25, 27, 29, 31, 32 and 33, Appellant argues
that “… Buckley does not disclose that the graphics display includes an audio
message. Therefore, Buckley does not disclose returning to or accessing "pre-
recorded audio and visual messages when the user selection is not received within
a specified time period" as required by each of claims 25, 27, 29, 31, 32 and 33.
(Appeal Br. 23).
We disagree with Appellant.
The Examiner found that Buckley discloses returning “to pre-recorded audio
and visual messages when the user selection is not received within a specified time
period" at column 11, lines 19 and 20. (Answer 8). Here, Buckley discloses “[i]f
he or she does not do so [(decide to purchase)] after a certain time interval the
operation reverts to the start condition.” We further find that Buckley discloses at
column 11, lines 13 and 14, “upon touching the screen 11 an explanatory video is
generated with associated sound ….” We read the explanatory video of Buckley as
the start condition, and hence find that the claim limitation is met by Buckley
returning to the start condition playing the explanatory video.
Even if we were to read the invitation message in Buckley as the start
condition which invites the customer to touch the screen to obtain more
information as to the operation of the machine (col.11, ll. 9-10), the Examiner has
made a number of findings (Answer 21-23) showing that sound and graphics are
inextricably connected with one another in the Buckley system such that the
invitation message alone by inference would have both visual and audio

1 Even assuming such an explicit disclosure was not found in Ludwig, the Examiner nevertheless made a
sufficient finding for motivation in Ludwig to make his prima facie case (Answer 7)
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components. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In
making the obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
Appellant next argues that “the Examiner has not provided a reasonable
basis to conclude that the person of ordinary skill would combine the references
relied upon in the Office Action.” (Appeal Br. 24).
We disagree with Appellant.
First, to the extent Appellant seeks an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s recent
holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).
Also, the Examiner found that both Ludwig and Buckley “references belong
to the same field of endeavor and employ same elements.” (Answer 24). In
addition, the Examiner found that “each reference disclose a system comprising a
processor, a display and a memory configured to enable a customer to generate a
personalized messages/products. The only difference is the type of software
employed for certain operations.” (Answer 24).
Appellant does not challenge these findings.
Thus, left unchallenged, these findings alone support our finding that the
references used in the combination under 35 U.S.C. § 103(a) are analogous art.
The analogous-art test requires that the Board show that a reference is either in the
field of the applicant's endeavor or is reasonably pertinent to the problem with
which the inventor was concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
As such, we find rationale support in the record for the combination under
35 U.S.C. § 103(a) because the Examiner reasoned that because the references
share the same field of endeavors, it would be reasonable to combine them. Id.
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(“[I]t is necessary to consider ‘the reality of the circumstances,’ -in other words,
common sense-in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the inventor.”
Id. (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979))). In re Kahn, 441
F.3d 977, 986-87 (Fed. Cir. 2006).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 25-33 and 37-40.

DECISION
The decision of the Examiner to reject claims 25-33 and 37-40 is
AFFIRMED.

AFFIRMED

MP