Ex Parte van RijnDownload PDFBoard of Patent Appeals and InterferencesJul 14, 201111143972 (B.P.A.I. Jul. 14, 2011) Copy Citation 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. 11/143,972 06/01/2005 Percy van Rijn PA3284REI 9851 22830 7590 07/14/2011 CARR & FERRELL LLP 120 CONSTITUTION DRIVE MENLO PARK, CA 94025 EXAMINER BORISSOV, IGOR N ART UNIT PAPER NUMBER 3628 MAIL DATE DELIVERY MODE 07/14/2011 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 2011-006512 Application 11/143,972 Technology Center 3600 ____________ Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006512 Application 11/143,972 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 25-33. 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 Internet message system (Specification 1: 10-11). Claim 25, reproduced below, is representative of the subject matter on appeal. 25. A system for generating and transmitting an image- enhanced text message comprising: a computing device hosting a messaging module stored in memory and executable by a processor to generate an image- enhanced text message including textual information and a video image; a keyboard coupled to the messaging module for generation of the textual information based on input provided by a user; a camera coupled to the messaging module and configured to generate the video image of the user, wherein the messaging module is further executable to activate the camera upon receiving a user selection corresponding to generating an image-enhanced text message via user input to the keyboard; a database coupled to the messaging module and storing audio and visual messages, wherein the messaging module is further executable to return to pre\- recorded audio and visual messages Appeal 2011-006512 Application 11/143,972 3 when the user selection is not received within a specified time period; and a network interface configured to establish a connection to a network from a plurality of networks and transmit the image- enhanced text message over the network, the image-enhanced text message transmitted to a recipient via the plurality of networks, wherein at least one network from the plurality of networks is a wireless network. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Buckley US 5,561,604 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 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? Appeal 2011-006512 Application 11/143,972 4 FINDINGS OF FACT We find the following facts by a preponderance of the evidence: We adopt the Examiner’s findings as set forth on pages 3- 29 of the Answer. ANALYSIS We affirm the rejections of claims 25-33. Initially, we note that the Appellant argues these claims together as a group. Correspondingly, we select representative claim 25 to decide the appeal of these claims, remaining claims standing or falling with claim 25. Appellant argues that “… Buckley does not disclose “returning to pre\- recorded audio and visual messages” as required by the claims. (Appeal Br. 25). The Examiner found that Buckley discloses "return[ing] 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 at these portions of his disclosure. Appeal 2011-006512 Application 11/143,972 5 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 26-28) showing that sound and graphics are inextricably connected with one another in the Buckley system such that the invitation message by inference would have both visual and audio 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. 17). We disagree with Appellants. 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., 127 S. 550 U.S. 398418, 419 (2007). Also, the Examiner found that all the “references belong to the same field of endeavor and employ same elements.” (Answer 29). 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 Appeal 2011-006512 Application 11/143,972 6 of software employed for certain operations.” (Answer 29). 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 endeavor, it would be reasonable to combine them. Id. (“[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 under 35 U.S.C. § 103(a). Appeal 2011-006512 Application 11/143,972 7 DECISION The decision of the Examiner to reject claims 25-33 is AFFIRMED. AFFIRMED. MP Copy with citationCopy as parenthetical citation