Ex Parte Schroderus

Patent Trial and Appeal Board

Jun 24, 2013

10160272 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OSMO SCHRODERUS

Appeal 2011-000,889
1

Application 10/160,272
Technology Center 2400
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Before JEAN R. HOMERE, MARC S. HOFF, and JUSTIN BUSCH,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Nokia Corp. (App. Br. 1.)
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 5-8, 11, 13-19, 21, 26, 28-31, 33, 34, 36-38,
40, 41, 45, and 47-56. Claims 2, 4, 12, 20, 22-25, 27, 32, 35, 39, 42, and 43
have been canceled. Claims 44 and 46 have been allowed. Claims 9 and10
have been indicated as being directed to allowable subject matter. (App. Br.
1-2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system establishing real-time audio
communication between private mobile radio (PMR) users, each PMR being
equipped with a push-to-talk feature. (Spec. [0001], [0006].) In particular,
upon receiving from a sender real-time audio data along with an
acknowledgment report request, each receiving unit provides an individual
acknowledgment report after having received the end of the real time audio
packet. (Spec. [0010].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method comprising:
sending, by utilizing internet protocol communication, a
real-time audio data item from a terminal of a sending party to a
terminal of at least one receiving party over a communication
system, said real-time audio data item comprising a plurality of
real-time audio data packets;
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sending, in association with the sending of the real-time
audio data item, to the least one receiving party, a request to
send an acknowledgment report; and
sending, responsive to the request, by utilizing internet
protocol communication, an item acknowledgement report from
the terminal of each of the at least one receiving party after the
end of the real-time audio data item.

Prior Art Relied Upon
Bushmitch US 6,275,471 B1 Aug. 14, 2001
Maurille US 6,484,196 B1 Nov. 19, 2002
Raphaeli US 2003/0103521 A1 Jun. 5, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 3, 5-8, 14, 15, 18, 19, 21, 26, 28-31, 33, 34, 36-38, 40,
41, 45-55 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bushmitch and Raphaeli.
2. Claims 11, 13, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bushmitch,
Raphaeli, and Maurille.

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 11-16, and the Reply Brief, pages 2-5.

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Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Bushmitch and Raphaeli teaches or suggests
responsive to a request from a sending party, each receiving party sending
an acknowledgment report after the end of the real time audio data item, as
recited in claim 1?
Appellant argues that the proffered combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 12-16, Reply
Br. 2-5.) In particular, Appellant argues that while Bushmitch discloses
sending a NAK message for a missing packet after reception of the last
packet, Bushmitch’s disclosure teaches away from the invention because the
NAK message is responsive to a data packet not being successfully received
as opposed to a report acknowledging receipt of an audio item. (Reply Br.
4-5.) Further, Appellant argues that Raphaeli does not cure the noted
deficiencies of Bushmitch. (App. Br. 13-15.) In response, the Examiner
finds that Bushmitch’s disclosure of a receiver sending a NAK message to a
sender (after some time has elapsed) that only 499 out of 500 packets have
been received teaches the disputed limitation. (Ans. 37-39.)
Based upon our review of the record before us, we find no error with
the Examiner’s conclusion of obviousness regarding claim 1. We note at the
outset that albeit in the corpus of the final rejection, reproduced at page 6 of
the Answer, the Examiner initially relied upon Raphaeli’s disclosure to teach
the disputed claim limitations, in the response to arguments section of the
Answer, the Examiner made a new finding that Bushmitch teaches the
limitation in question. (Ans. 37-39.) We further note that Appellant has
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failed to seasonably object to this new finding, and has availed himself of
the opportunity to fully address the Examiner’s new finding in the Reply
Brief. (Reply Br. 4-5). Consequently, Appellant has waived the issue of
whether the Examiner’s new finding constitutes a new ground of rejection.
2

Accordingly, the pivotal issue before us turns on whether the cited
disclosure of Bushmitch teaches the disputed limitation. We answer this
inquiry in the affirmative.
We note that while Appellant’s Specification has not provided a
definition for “item acknowledgment report,” the Specification nonetheless
instructs that the report can serve to indicate both successful receipt and
unsuccessful receipt of the audio item. ([0010], [0072].) Thus, upon giving
“item acknowledgment report” its broadest reasonable interpretation
consistent with Appellant’s Specification, we construe the cited expression
as being a report that encompasses both successful and unsuccessful receipt
of an audio item. Therefore, Appellant’s argument that “item

2
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”). See also
In re Guess, 2009 WL 1598475 at *1 (Fed. Cir. June 9, 2009) (“Appellants
failed to argue that any limitations unique to [the claims] survive [the
rejection]. Appellants have therefore waived any such arguments on
appeal.”) (citing In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004)). We
deem such failure to be tantamount to a waiver of any arguments that
Appellant could have raised in this appeal to traverse this rejection. See 37
C.F.R. § 41.37(c)(1)(vii). In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004).
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acknowledgment report” is limited to the successful receipt of the data item
(Reply Br. 4) is not commensurate in scope with the disputed claim
limitations. Bushmitch discloses, after receiving the 499
th

out of 500 audio
packets, and a predetermined amount of time has elapsed, a receiving party
dispatches to a sending party a NAK message indicating that the audio
message was not successfully received in its entirety. (Col. 6, ll. 2-3.)
Consistent with our claim construction above, we find the disclosed NAK
message indicating an unsuccessful receipt of the audio item teaches the
item acknowledgment report. Therefore, we find unavailing Appellant’s
argument that Bushmitch’s NAK message teaches away from the claimed
invention. We are therefore satisfied that Bushmitch’s disclosure of the
receiving party sending such a report to the sending party after the end of the
499
th
audio packet data has been received and a predetermined time has
elapsed teaches the disputed limitations. It follows that Appellant has not
shown error in the Examiner’s rejection of claim 1.
Because Appellant has not presented separate patentability arguments
for claims 3, 5-8, 11, 13-19, 21, 26, 28-31, 33, 34, 36- 38, 40, 41, 45, and
47-56,they fall together with claim 1. See 37 C.F.R. § 1.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s rejections of claims 1, 3, 5-8, 11, 13-19, 21,
26, 28-31, 33, 34, 36- 38, 40, 41, 45, and 47-56, as set forth above.
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

ELD