Ex Parte Vanhatalo

Patent Trial and Appeal Board

May 16, 2016

10538287 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/538,287 11128/2005
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
05/18/2016
FIRST NAMED INVENTOR
Aki Vanhatalo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P4808USOO 9403
EXAMINER
CASCA, FRED A
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
05/18/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKI V ANHA T ALO
Appeal2014-006752
Application 10/538,287
Technology Center 2600
Before DAVID M. KOHUT, JOHN A. EVANS, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1---6, 8-13, and 16-20. 1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Claims 7, 14, and 15 have been canceled. App. Br. 15-16.
Appeal2014-006752
Application 10/538,287
REPRESENTATIVE CLAIM
Claim 1 is representative of the subject matter on appeal:
1. A method, comprising:
determining to establish, at a device, a connection with a
receiver using a telephone number,
as a response to a failed attempt for establishing the
connection, starting, at the device, a multimedia messaging
service (MMS),
determining to record a voice message to be included as
part of a multimedia message in memory of the device, and
determining to transmit the multimedia message to a
voicemail box associated with the telephone number.
REJECTIONS ON APPEAL
Claims 1--4, 6, 8-11, 13, 16, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Pelaez (US
2003/0147373 Al; published Aug. 7, 2003), Zhao (US 2007/0082711 Al;
published Apr. 12, 2007), and Schmidt, JR. (US 2010/0002852 Al;
published Jan. 7, 2010). Final Act. 2-11.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Pelaez, Zhao, Schmidt, and Fan (US 2004/0044733
Al; published Mar. 4, 2004). Final Act. 12.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Pelaez, Zhao, Schmidt, and Wine (US
2002/0004839 Al; published Jan. 10, 2002). Final Act. 13.
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Appeal2014-006752
Application 10/538,287
Claims 5 and 12 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Pelaez, Zhao, Schmidt, and Vaziri (US
2002/0089975 Al; published July 11, 2002). Final Act. 13-14.
ISSUES
Appellant's contentions present us with the following issues:
A) Did the Examiner err in finding the combination of Pelaez, Zhao,
and Schmidt teaches or suggests determining to transmit the multimedia
message to a voicemail box associated with the telephone number
("determining to transmit" limitation), as recited in independent claim 1?
B) Did the Examiner err in finding the combination of Pelaez, Zhao,
Schmidt, and Fan teaches or suggests the multimedia message is converted
by a messaging server to a voicemail for delivery to the voicemail box
("convert" limitation), as recited in dependent claim 18?
ANALYSIS
We have reviewed the Examiner;s rejections in consideration of
Appellant's contentions and the evidence of record. We disagree with
Appellant's conclusions that the Examiner's rejections of the claims are in
error.
Issue A: Claims 1-6, 8-13, 16, 17, 19, and 20
Appellant contends the combination of Pelaez, Zhao, and Schmidt
does not disclose the "determining to transmit" limitation recited in
independent claim 1. App. Br. 5-9; Reply Br. 2---6. Specifically, Appellant
argues Zhao does not disclose that a multimedia message can be transmitted
to a voicemail box. App. Br. 6. Appellant further argues that one of
ordinary skill in the art would not consider the unified messaging system
(UMS) taught by Schmidt to be a voicemail box because it accepts multiple
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Application 10/538,287
different types of communications and a voicemail box as used in the art
implicitly relates only to voicemails. App. Br. 7-8; see also Reply Br. 5.
We are not persuaded by Appellant's arguments. Appellant does not
dispute the Examiner's findings that Pelaez teaches determining to transmit
a multimedia message to a mail box associated with a telephone number or
that Zhao teaches recording a voice message included as part of a
multimedia message. See Final Act. 3--4. The Examiner further finds, and
we agree, Schmidt teaches transmitting a multimedia message to a voice
mail box. Final Act. 4--5; Ans. 5---6, 9. The cited sections of Schmidt
describe the UMS stores voice mail messages and multimedia messages,
which must be implicitly transmitted to the UMS. Schmidt i-fi-f 15, 51. We
agree with the Examiner that one of ordinary skill in the art would recognize
that Schmidt's UMS is a voice mail box that has additional capabilities.
Ans. 4, 6. The claim language does not preclude the voice mail box from
storing other types of messages, nor does Appellant point to any narrowing
definition in the Specification that would limit the voicemail box to only
storing voice messages. 2
As we agree with the Examiner that the combination of Pelaez, Zhao,
and Schmidt teaches or suggests the "determining to transmit" limitation
recited in claim 1, Appellant does not persuade us of error in the rejection.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of: (1) claim 1;
2 We observe that even the addition of such language to the claim may not
represent an unobvious step over the cited prior art. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (obviousness analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim); Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
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Application 10/538,287
and (2) claims 2--4, 6, 8-11, 13, 16, 17, and 20, for which Appellant does not
present separate arguments for patentability (App. Br. 9).
With regard to dependent claims 5, 12, and 19, Appellant merely
contends the additional references of record do not make up for the
purported deficiencies in the rejection of independent claims 1 and 8. App.
Br. 11-12. As Appellant does not otherwise separately argue these claims
with particularity, we sustain the 35 U.S.C. § 103(a) rejections of these
claims for the reasons discussed supra.
Issue B: Claim 18
Appellant contends the combination of Fan with Pelaez, Zhao, and
Schmidt does not teach or suggest the "convert" limitation recited in
dependent claim 18. App. Br. 10-11. In particular, Appellant argues Fan
merely discloses a text-to-speech functionality and does not teach converting
a multimedia message to voicemail for delivery to a voicemail box. Id.
Appellant additionally argues the Examiner does not provide a proper
rationale for the combination because no compatibility issues exist and
Pelaez teaches away from converting a multimedia message to a voicemail.
App. Br. 11; Reply Br. 6-7. We are not persuaded of error.
As discussed in Issue A supra, we agree with the Examiner that the
combination of Pelaez, Zhao, and Schmidt teaches transmitting a multimedia
message to a voice mail box. The Examiner relies on Fan only to show
converting a multimedia message into a voice signal. Ans. 14--15 (citing
Fan i-f 42). We agree with the Examiner's findings. Appellant's argument
that Fan does not teach the "convert" limitation is not persuasive because
one cannot show non-obviousness by attacking references individually
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Application 10/538,287
where the rejection is based on a combination of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981).
We are also not persuaded by Appellant's arguments that the
combination is improper. The Examiner finds it would be obvious to modify
the combination of Pelaez, Zhao, and Schmidt to convert a multimedia
message to a voice message to transmit the message as a voice message
when voice message transmission is more feasible than multimedia
transmission and to use communication resources more efficiently. Ans. 16.
Appellant does not provide sufficient evidence that Pelaez teaches away
from the combination. To teach away, a reference must "criticize, discredit,
or otherwise discourage" investigation into the claimed solution. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The sections of Pelaez cited
by Appellant describe a user may be given an option to send a multimedia
message if a user of the device is not available. Pelaez i-f 5. Although Pelaez
describes the bandwidth may be reduced by sending the multimedia message
in non-real-time mode, Pelaez does not require the transmission be in non-
real-time mode or that the message be sent as a multimedia message. See id.
Thus, Appellant does not establish Pelaez teaches away from converting a
multimedia message to a voice signal. Moreover, we observe combining the
teachings of Pelaez/Zhao/Schmidt with Fan's teaching of converting a
multimedia message to a voice signal is no more than the combination of
familiar elements according to known methods that yields predictable
results, i.e., a predictable variation. See KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007).
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Application 10/538,287
For the reasons stated above, Appellant does not persuade us of error
in the rejection of claim 18. Accordingly, we sustain the 35 U.SC. § 103(a)
rejection of this claim.
DECISION
We affirm the Examiner's decision to reject claims 1---6, 8-13, and
16-20.3
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
3 In the event of further prosecution, we invite the Examiner to consider
whether claim 17 invokes 35 U.S.C. § 112 i-f 6, and if so, whether sufficient
structure is provided in the Specification to comply with 35 U.S.C. § 112
,-r 2.
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