Ex parte YOON

Board of Patent Appeals and Interferences

Jun 27, 2001

08655126 (B.P.A.I. Jun. 27, 2001)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHAN-KOOK YOON
________________
Appeal No. 2000-1503
Application 08/655,126
________________
HEARD: JUNE 12, 2001
________________
Before HAIRSTON, DIXON and GROSS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 8. In an Amendment After Final (paper number 9),
claim 1 was amended.
The disclosed invention relates to a method and apparatus
for transmitting a list of messages received by a local
facsimile machine to a remotely located facsimile machine
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Application 08/655,126
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after a calling party at the remotely located facsimile
machine correctly inputs a secret number. After the
transmission of the list of received messages, a check is made
at the local facsimile machine to determine whether or not a
received message selection number has been inputted by the
calling party. When a received message selection number is
inputted by the calling party, the local facsimile machine
transmits the message that corresponds to the selection number
to the remotely located facsimile machine.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method for remotely confirming and receiving
messages received from a local facsimile machine having a
memory for storing a secret number set by a user and received
messages, comprising the steps of:
checking whether or not the secret number has been
inputted, in response to an input of a ring signal by a
remotely located facsimile machine of a remotely located
calling party when the local facsimile machine has been set in
a remote reception mode;
transmitting a list of received messages stored in the
memory to said remotely located facsimile machine of a calling
party when the secret number has been correctly inputted by
the calling party as determined in the secret number checking
step;
after transmitting the list of received messages,
checking whether or not a received message selection number
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Application 08/655,126
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has been inputted by the calling party; and
transmitting a received message corresponding to the
received selection number from the local facsimile machine to
the facsimile machine of the calling party when the received
message selection number has been inputted by the calling
party.
The references relied on by the examiner are:
Fuller et al. (Fuller) 5,224,156 June 29,
1993
Gordon et al. (Gordon) 5,291,302 Mar. 1,
1994
Claims 1 through 8 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Fuller in view of Gordon.
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 1
through 8.
Fuller teaches that facsimile messages may be sent from
one location to another in a confidential manner. Appellant
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Application 08/655,126
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and the examiner both agree that Fuller fails to teach the
inputting of a selection number by a calling party, and the
transmission of the message that corresponds to that selection
number to the calling party (brief, page 5; answer, page 4).
In view of the acknowledged shortcoming in the teachings of
Fuller, the examiner turns to the facsimile teachings of
Gordon. The examiner explains (answer, page 5) that “[s]ince
Fuller and Gordon are directed to delivery of facsimile data
from a first machine to a local facsimile machine remote from
the first facsimile machine, the purpose of assigning or
identifying a stored message with a numeric representation
would have been recognized by Fuller as clearly set for [sic,
forth] by the designation of a desired message number (col.
12, line 61 of Gordon).” The examiner then concludes (answer,
page 5) that “[i]t would have been obvious to one of ordinary
skill in the art to replace the ‘index’ of facsimile messages
(col. 6, lines 54) as discussed by Fuller with a numeric
representation of a message such that the ‘selected number’,
corresponding to a message, can be used to list and retrieve
those messages which are desired by the user instead of
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Application 08/655,126
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transmitting all of the messages which may be available to the
remote recipient.”
With respect to the teachings of Gordon, the appellant
argues (reply brief, pages 2 and 3) that:
As noted in Figs. 5A and 7, while the user may
manipulate the queue in Gordon et al. ‘302 by
directing a message or making additional copies of
the message or forwarding copies of the messages to
other locations or change the priority of a selected
message, the user cannot pick only selected message
to be sent. All of the messages in the queue are
sent.
Inasmuch as appellant’s assessment of the teachings of
Gordon agrees with the teachings of Gordon (column 12, lines
37 through 62), we agree with the appellant (brief, page 7)
that:
In view of the above, it is submitted that it
would not be obvious to combine the references in
the fashion noted by the Examiner and even if the
references were so combined, the resultant
combination does not teach or suggest the recited
steps of checking whether or not a received message
selection number has been inputted by a calling
party and transmitting only a received message
corresponding to the received selection number from
the local facsimile machine to the facsimile machine
of the calling party when the received message
selection number has been inputted to the calling
party as recited in Claim 1.
In summary, the examiner has not set forth a prima facie case
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of obviousness of claims 1 through 8.
DECISION
The decision of the examiner rejecting claims 1 through 8
under 35 U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JOSEPH L. DIXON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
KH/ki
Appeal No. 2000-1503
Application 08/655,126
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