Ex Parte Schofield et al

Board of Patent Appeals and Interferences

Feb 5, 2008

10040172 (B.P.A.I. Feb. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT DAVID SCHOFIELD
and MAGDALENA VAN VEEN
____________

Appeal 2007-2447
Application 10/040,172
Technology Center 2600
____________

Decided: February 5, 2008
____________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 17-19, which are all of the claims pending in this application as
claims 1-16 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Appellants have invented a communication system that allows using
plain telephones while providing access to all functions of the telephone
switch (Specification 1). A web server connected to the telephone switch
provides control function to the user via an HTTP client application
connected to the web server (Spec. 1-2).
Claim 17, which is representative of the claims on appeal, reads as
follows:
17. A communication system, comprising:

a telephone;

a telephone switch operative to interact with the telephone and
provide a control function to a user of the telephone; and

a web server connected to the telephone switch and operative to
provide the control function to the user of the telephone via a web
page provided by the web server and accessible by a web browser,
wherein one of the web page and the web browser is operatively
associated with a calling number of the telephone.

The Examiner relies on the following prior art reference:
Wood US 6,091,808 Jul. 18, 2000
The rejection of the claims as presented by the Examiner is as follows:
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wood.
We make reference to the Briefs1 and the Answer for the respective
positions of Appellants and the Examiner. Only those arguments actually

1 Appeal Brief (filed Dec. 20, 2004), Reply Briefs (filed May 18, 2005 and
September 21, 2006). We mainly refer to the later filed Reply Brief as it
includes substantially same arguments presented in the earlier Reply Brief.
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made by Appellants have been considered in this decision. Arguments
which Appellants could have made but did not make in the Briefs have not
been considered (37 C.F.R. § 41.37(c)(1)(vii)).
We affirm.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103. Appellants argue that the
teachings of Wood would not have made the claimed feature of “one of the
web page and the web browser is operatively associated with a calling
number of the telephone” obvious to one of ordinary skill in the art (Br. 11-
12). Therefore, the issue turns on whether there is a legally sufficient
justification for modifying the disclosures of Wood and if so, whether the
teachings of Wood teaches or suggests the claimed subject matter.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal and are believed to be supported by a preponderance of the
evidence.
1. Wood relates to telephone call management via a computer
network (web) facility which can be remotely accessed by subscribers using
web browsers. (Abstract).
2. Wood, as depicted in Figure 1, discloses a telephone subscriber
having one telephone coupled to a telephone switch and a web browser
coupled to a network. (Col. 3, ll. 20-31).
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Application 10/040,172

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3. The web facility provides an interface to the subscriber in the
form of web pages that enable the subscriber to manage the telephone
functions for the telephone. (Col. 4, ll. 32-42).
4. Wood specifically discloses in Figure 3 that by clicking the
PERSONAL button 62 the web page manager accesses a personal directory
of the subscriber and displays the entries in a conventional scrolling
window. (Col. 6, ll. 18-27).

PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).

ANALYSIS
Based on our findings related to the teachings of Wood, we disagree
with Appellants that only the web page of Wood is operatively associated
with the subscriber (Br. 11). In our view, the interpretation used by
Appellants to define the claimed term “operatively associated” as “a
connection with another” and “in an operative manner” (Br. 14) is too
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limiting as the claim does not require any type of connection with another
device. In that regard, we agree with the Examiner (Ans. 6) that the
operative functions argued by Appellants, such as listing the number, are not
recited in the claims.
We further disagree with Appellants that the web page for a telephone
function in Wood is used based on a calling number of the telephone that is
passively, not operatively, associated with the web page via the subscriber
(Reply Br. 9). As pointed out by the Examiner (Ans. 5-6), the web manager
in Wood accesses a personal directory which contains the name and
telephone number of the subscriber, which suggests that the web page is
“operatively associated with a calling number of the telephone” (FF 3-4). In
that regard, as long as the subscriber is identified by the telephone number it
is associated with, we find that the teachings in the prior art has been
reasonably interpreted to indicate that the web page is operatively associated
with that calling number.
Appellants’ arguments in the paragraph bridging pages 9 and 10 of the
Reply Brief are aimed at distinguishing the claimed “operatively associated”
over the teachings of Wood by attributing specific features to the web
browser in connection with the telephone that are not recited in the claims.
For example, the proximity of the telephone with respect to the user, as
asserted by Appellants to be absent in Wood (id.), is not mentioned in the
claims. Therefore, we conclude that in rejecting the claims based on what
the reference teaches and suggests to one of ordinary skill in the art, the
Examiner’s reliance on the telephone system disclosed in Wood is
reasonable and supports a prima facie case of obviousness.

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CONCLUSION
In view of the analysis above, we find that the Examiner’s rationale
and reasoning presented in support of the rejection are convincing of the
obviousness of claims 17-19. Therefore, we will sustain the Examiner’s
35 U.S.C. § 103 rejection of these claims as being unpatentable over Wood.

DECISION
The decision of the Examiner rejecting claims 17-19 under 35 U.S.C.
§ 103 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)(1)(iv).

AFFIRMED

KIS

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