Ex Parte Teague

Patent Trial and Appeal Board

May 6, 2013

11277545 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/277,545 03/27/2006 Les Teague PS05 0663US1 4969
58342 7590 05/06/2013
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
EDOUARD, PATRICK NESTOR
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
05/06/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LES TEAGUE
____________

Appeal 2010-011131
Application 11/277,545
Technology Center 2600
____________

Before ALLEN R. MacDONALD, LYNNE E. PETTIGREW, and
BARBARA A. PARVIS, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate the affirmance as a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b) (2011).
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a service for providing personalized
call features to electronic equipment within a communications network.
Spec. 1, ll. 5-6.
Claims 1 and 16 are illustrative of the invention (disputed limitations
in italics):
1. A server for providing call hold functions to a
communications network through which a call between a user
electronic equipment and one or more called/calling devices is
routed, the server comprising:
a network interface that connects the server to the
communications network; and
a controller that is coupled to the communications
network via the network interface, the controller being
operatively configured to receive a request from the user
electronic equipment to communicate a media object to at least
one of the one or more called/calling devices in response to the
user electronic equipment placing the call on hold in
accordance with hold settings of the user electronic equipment.
16. A user electronic equipment designed for use in
combination with a server as recited in claim 1, the user
electronic equipment comprising:
call circuitry that enables the user electronic equipment
to establish a call with a called/calling device;
hold circuitry that enables the user electronic equipment
to place the call established with the called/calling device on
hold;
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an interface for receiving hold settings including criteria
for selecting a media object; and
a controller operative in conjunction with the call
circuitry and hold circuitry to communicate a request to the
server indicating that the call is placed on hold, wherein the
request includes the criteria of the hold settings.
Rejections on Appeal
The Examiner has rejected claims 1-6, 9-11, and 14-17 under 35
U.S.C. § 103(a) as being unpatentable over Bilder (US 6,400,804 B1, June 4,
2002) and Moore (US 2005/0096023 A1, May 5, 2005). Ans. 4-9.
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Bilder, Moore, and Hamilton (US 2005/0152531 A1, July
14, 2005). Ans. 9-10.
The Examiner has rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Bilder, Moore, and Kiiskinen (US 2007/0211869 A1,
Sept. 13, 2007). Ans. 10.
The Examiner has rejected claims 12 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over Bilder, Moore, and Florkey (US 2007/0047711
A1, Mar. 1, 2007). Ans. 10-11.
Issue on Appeal
Based on Appellant’s arguments, the issue on appeal is whether the
combination of Bilder and Moore teaches or suggests “to communicate a
media object to . . . one or more called/calling devices in response to the user
electronic equipment placing the call on hold in accordance with hold
settings of the user electronic equipment,” as recited in claim 1, and “hold
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settings including criteria for selecting a media object,” as recited in claim
16.
FINDINGS OF FACT (FF)
1. Bilder discloses an on-hold activity selection device 114 that
provides activity services to parties that are placed on hold during a call.
Bilder, col. 2, ll. 66-67; Fig. 1. On-hold activity selection device 114 is
connected to a communications network, as are user terminals 102 and 104.
Id., col. 2, ll. 4-11; Fig. 1. When a calling party uses terminal 104 to
communicate with terminal 102, for example, the call is routed through on-
hold activity selection device 114. Id., col. 3, ll. 18-21.
2. Bilder discloses that when one of the terminals 102 or 104
places the other terminal on hold during a call, on-hold activity device 114
provides on-hold activities to the on-hold party’s terminal. Id., col. 3, ll. 42-
44. “The on-hold activities may include, for example, listening to music,
listening, viewing or reading advertisements, news, sports, graphical
presentations, prerecorded video messages, playing video games, browsing
the Internet, reading textual messages, and any other type of entertaining
and/or informative activity.” Id., col. 4, ll. 29-35. The on-hold activity to be
provided to the on-hold party’s terminal may be selected from a menu. Id.,
col. 3, ll. 38-42.
3. Bilder teaches customizing the available on-hold activities
based on a user profile associated with the on-hold party. Id., col. 8, ll. 29-
32. The user profile for a particular party may be correlated with the party’s
terminal, which may be identified, for example, by its telephone number.
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Id., col. 8, ll. 37-51. Bilder also teaches customizing the available on-hold
activities based on the approximate on-hold time. Id., col. 10, ll. 5-7.
4. Moore discloses a mobile phone 100 that can place an incoming
call on hold. Moore, ¶ [0016]. Mobile phone 100 contains controller 140,
which can be configured to play for the caller a pre-recorded message or a
digital music file stored in memory when the call hold feature is activated.
Id., ¶¶ [0017], [0018].
ANALYSIS
Appellant contends that the combination of Bilder and Moore fails to
teach or suggest “hold settings” as recited in claim 1 and “hold settings
including criteria for selecting a media object” as recited in claim 16,
features described by Appellant as “customized hold settings.” App. Br. 5-
7; Reply Br. 2-6. Specifically, Appellant alleges that the Examiner erred in
relying on Bilder because Bilder does not “provid[e] criteria for
determining a selection of a media object as provided by the claimed hold
settings.” App. Br. 6; Reply Br. 4. Appellant also alleges that the Examiner
erred in relying on Moore for teaching “hold settings” as recited in
Appellant’s claims because “[p]aragraph [0016] of Moore merely discloses
how a call is placed on hold. . . . [It] does not relate at all to what happens
during the hold state.” Reply Br. 2.
We are not persuaded by Appellant’s arguments. First, with respect to
Bilder, we do not agree that the reference fails to teach or suggest criteria for
determining a selection of a media object. Bilder teaches that the list of
available on-hold activities (including “media objects” such as audio and
video messages) may be customized based on identification of the on-hold
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party. FF3. Appellant’s Specification provides the same example when
describing criteria for selecting a media object. Spec 12 (“[T]he user may
select to input different criteria to be used in conjunction with the selection
of the particular media objects to be communicated. For example, the user
may be presented with an option to associate specific media object (e.g.,
songs) based on the identification of the called/calling party.” (emphasis
added)). Bilder also teaches customizing the available on-hold activities
based on approximate on-hold time. FF3. Thus, contrary to Appellant’s
argument, we find that Bilder teaches criteria for selecting media objects.
Moreover, because Bilder’s system uses criteria to determine a list of
available media objects from which the media object to be communicated to
the on-hold party will be selected, we find that Bilder teaches, or at least
suggests, providing criteria for selecting a media object to be communicated
to the on-hold party.
We also disagree with Appellant’s contention that Moore does not
teach “hold settings” as recited in Appellant’s claims because it merely
discloses how a call is placed on hold rather than what happens during the
hold state. We agree with Appellant that paragraph [0016] of Moore
describes various means for placing a call on hold. See Reply Br. 2.
However, paragraphs [0017] and [0018] of Moore describe what happens
during the hold state, i.e., a pre-recorded message or digital music file is
played for the caller placed on hold. FF4. Thus, we find unpersuasive
Appellant’s argument that Moore fails to teach “hold settings” because it
does not describe what happens during the hold state.
Based on our analysis of the references, we concur with the
Examiner’s conclusion that claims 1 and 16 would have been obvious
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because the combination of Bilder and Moore teaches or suggests all the
limitations of claims 1 and 16. See Ans. 14. Accordingly, we sustain the
Examiner’s § 103(a) rejection of claim 1 and 16, as well as the § 103(a)
rejections of dependent claims 2-15 and 17, which were not separately
argued with particularity. App. Br. 7-8. Because our conclusion relies on
findings different from those made by the Examiner, we designate our
affirmance as a new ground of rejection over the art relied on by the
Examiner.
DECISION
The Examiner’s decision to reject claims 1-17 is affirmed. We have
designated the affirmance as a new ground of rejection.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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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
37 C.F.R. § 41.50(b)

ELD