12378707 (P.T.A.B. Dec. 12, 2014)

Ex Parte Suzuki

Patent Trial and Appeal BoardDec 12, 2014

12378707 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIDEAKI SUZUKI ____________ Appeal 2012-009284 Application 12/378,707 Technology Center 2600 ____________ Before JOHNNY A. KUMAR, DANIEL N. FISHMAN, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, and 4. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellant’s arguments. We concur with Appellant’s conclusion that the Examiner erred Appeal 2012-009284 Application 12/378,707 2 in finding Sychta (US 7,308,289 B2, issued Dec. 11, 2007) teaches “a control section configured to . . . perform . . . a notice of an identical phone interruption incoming call, when determining that the first cellular phone in the calling state is receiving the incoming call,” and “the control section being further configured to: . . . when the user performs the response operation to the identical phone interruption incoming call, (a) issue an interruption incoming call response request signal to the first cellular phone that is in the calling state,” as recited in independent claim 1 (emphases added).1 See Reply Br. 2–3. The Examiner cites Sychta’s column 7, lines 15-28 for teaching both the “notice” and “interruption incoming call response request signal” claim elements. See Ans. 6, 12. We agree with the Examiner that Sychta’s column 7 teaches the required “notice” claim element, which is associated with conventional call waiting processes. See Ans. 9-10, 12. However, it is unclear what constitutes the “interruption incoming call response request signal” under the Examiner’s mapping. Indeed, the Examiner does not adequately explain, and we do not see, how the cited Sychta portion also teaches the “interruption incoming call response request signal” claim element. Accordingly, we are constrained by the record to not sustain the Examiner’s rejection of claim 1, and claims 2 and 4 for similar reasons. 1 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not need to address the additional arguments. Appeal 2012-009284 Application 12/378,707 3 DECISION The Examiner’s decision rejecting claims 1, 2, and 4 is reversed. REVERSED ELD