[00:00:43] Speaker 02: Our final case this morning is number 15-1508 in Ray Askoff. [00:00:49] Speaker 02: Mr. Greco. [00:00:51] Speaker 03: Thank you, Your Honor. [00:00:51] Speaker 03: May it please the court, Joseph Greco for the petitioner, Keith G. Askoff. [00:00:56] Speaker 03: If I may, I'd like to start off with the automatic call hold element, which is present in most of the claims that are at issue here. [00:01:07] Speaker 03: And I believe that the briefing really [00:01:11] Speaker 03: focuses this dispute on the statement at page A4 of the record, which is the board's decision, where the board quotes and upholds the examiner's finding of obviousness. [00:01:27] Speaker 03: And there, the board concludes that the malloc reference would lead one of ordinary skill and the art to see that instead of having the user manually handle each call, [00:01:41] Speaker 03: It is more efficient to have the CIR manager to be configured in advance and handle the call accordingly. [00:01:49] Speaker 03: I think that's really where we're focused in this case for the most part. [00:01:54] Speaker 02: How does Malik disclose that? [00:01:57] Speaker 01: Under that option, under Malik, aren't the calls handled without action by the user when the communication is received? [00:02:04] Speaker 03: No, there's only one disclosure in Malik. [00:02:08] Speaker 03: of an automatic message. [00:02:09] Speaker 03: And this is in the record at A236 paragraph 277. [00:02:16] Speaker 01: Malik teaches call forwarding out of the office and so on, right? [00:02:23] Speaker 03: Only as a manual option. [00:02:25] Speaker 03: Only as a manual option. [00:02:28] Speaker 02: But no, you can set it in advance to do that, right? [00:02:31] Speaker 02: No. [00:02:32] Speaker 03: No? [00:02:33] Speaker 03: No. [00:02:33] Speaker 03: The only thing that Malik teaches as an automatic [00:02:38] Speaker 03: response is at 236 paragraph 277 where it says you can have automatically responding to the call with a standard response such as a pre-recorded message. [00:02:53] Speaker 03: The rest of those options in malloc are what are called action features and those are all manual. [00:03:04] Speaker 03: And in fact if you look at page [00:03:08] Speaker 03: A210 of the record, figure 10 of Malik shows buttons for those. [00:03:15] Speaker 03: And so what happens when the call comes in is the user has got to select one of those. [00:03:22] Speaker 03: That's the only thing Malik discloses. [00:03:25] Speaker 03: Now what about this one feature that I just alluded to, the automatic responding to the call with the standard response? [00:03:32] Speaker 03: That's sort of like a do not disturb message. [00:03:35] Speaker 03: That makes sense in terms of malloc because what malloc is directed towards is this, it's called a CIR manager. [00:03:42] Speaker 03: Communication Information Resource Manager. [00:03:46] Speaker 03: And an example malloc gives is you have somebody in the office who's on a conference call. [00:03:53] Speaker 03: And what this CIR manager does is when other calls come in, it gives the person, the user who's on the conference call, information about each of [00:04:04] Speaker 03: the calls coming in, for example, name, telephone number, or whether you even have an appointment scheduled with that person. [00:04:13] Speaker 03: So at that point, then the user has the option of saying, oh, here's a call coming in. [00:04:19] Speaker 03: What do I want to do with it at this point? [00:04:22] Speaker 03: And there's five options, manual options, that are given. [00:04:26] Speaker 03: And these are at, again, you can see them at that figure 10, but also at A233 of the record, paragraph 253. [00:04:34] Speaker 03: The user can ignore the call, take the call, forward the call to voicemail, play an on-hold message to the call. [00:04:45] Speaker 03: That's what we're really dealing with here. [00:04:47] Speaker 03: Or link the call into an ongoing conference call. [00:04:52] Speaker 03: So you can see that the concept of malloc is enabling the user to be able to make a decision at the time the call comes in. [00:05:02] Speaker 03: with respect to what to do with it and one of those might be to place it on hold. [00:05:06] Speaker 03: Now this is the complete opposite of Askoff's invention because the concept that Mr. Askoff had was the person is in the meeting, he's dealing with people who are important people that he doesn't want to disturb if a call comes in by having to pull the phone out of his pocket and hit hold or whatever. [00:05:31] Speaker 03: But he knows that when he's in this meeting, an important call is going to come in. [00:05:33] Speaker 03: Like, for example, the CEO is going to call him. [00:05:36] Speaker 03: And he's got to take that call. [00:05:38] Speaker 03: But he doesn't want to disturb the meeting. [00:05:39] Speaker 03: So he does this automatic preset to put the call on hold with the other element that we can also talk about, which is the low volume indication. [00:05:49] Speaker 03: So then he gets the indication that there's a call being put on hold. [00:05:54] Speaker 03: And he can gracefully get out of the meeting. [00:05:56] Speaker 03: So that has nothing to do with Malik. [00:05:59] Speaker 03: Malik is just a completely different situation. [00:06:02] Speaker 03: Again, the only automatic disclosure, the only automatic precept for Malik is this just pre-recorded message that effectively is like, I'm in the conference call, I don't want to hear anything, I don't want to know about all this other stuff coming in. [00:06:16] Speaker 02: that, and we hold that the board had substantial evidence to support its interpretation of Malik as describing the ability to set these features and have these things done automatically. [00:06:29] Speaker 02: Is that the end of the case? [00:06:30] Speaker 03: No, because if that's the case, you still have to combine Malik with Che, because Malik is not a cell phone, it's not a mobile phone. [00:06:41] Speaker 03: Che is the mobile phone, the cell phone, that has the automatic [00:06:46] Speaker 03: voice hold feature, right? [00:06:48] Speaker 03: In other words, with CHE, the concept with CHE was you have your cell phone and a call comes in and you want to take the call but your hands aren't free. [00:07:00] Speaker 03: And so the concept of CHE is you use your voice, hold, you say hold, and the call will be placed on hold. [00:07:09] Speaker 03: Now again, that's completely different than ASCOP because what ASCOP is trying to do is to keep quiet, not to disturb. [00:07:16] Speaker 03: Che is perfectly fine with using a loud voice command. [00:07:20] Speaker 03: So Che teaches away from Ascoth. [00:07:24] Speaker 03: There's no reason to combine Che with Malik. [00:07:28] Speaker 03: So even if you were to find that Malik explicitly teaches this automatic presetting of hold, it's not a cell phone, and so you still would have to combine it with Che. [00:07:42] Speaker 03: Che teaches away, so that combination shouldn't be made. [00:07:48] Speaker 03: So there's a waiver argument as to CHE. [00:07:51] Speaker 03: I don't know if you would like me to address that now, but I can do that if you'd like or wait for a rebuttal. [00:07:56] Speaker 03: I assume I'm going to hear about that. [00:08:00] Speaker 03: So I'll address it. [00:08:02] Speaker 03: Our argument on CHE is it teaches away. [00:08:07] Speaker 03: And the director didn't take that argument on its merits, because CHE clearly does teach us away. [00:08:14] Speaker 03: But the director's argument is that we didn't raise that particular argument before the board, and so we shouldn't be able to raise it here. [00:08:23] Speaker 03: And our response to that is we raised the issue. [00:08:26] Speaker 03: We raised the issue that there's no reason to modify CHE for automatic hole. [00:08:33] Speaker 03: There's no reason to do it. [00:08:36] Speaker 03: There's no reason to combine it with malloc. [00:08:38] Speaker 03: So at least under the court's case law on waiver, [00:08:42] Speaker 03: For example, the Harris case and the interactive gift exchange case. [00:08:46] Speaker 03: As long as we raise the issue, the basic concept below, we can make additional arguments on appeal. [00:08:53] Speaker 03: And so in this situation, we've raised the issue and the additional argument is that it teaches a way. [00:08:59] Speaker 03: So you shouldn't have the combination. [00:09:02] Speaker 03: Now, if you all have any questions on that element, I'm going to move to the other element. [00:09:09] Speaker 03: The other element is [00:09:12] Speaker 03: the low volume indication. [00:09:15] Speaker 03: So part of the invention is you set the cell phone to automatic hold, and then this element is, when that happens, the phone automatically will set itself to a low volume indication, which is in keeping with what I described before. [00:09:37] Speaker 03: In other words, when the call comes in, it's gonna be placed on hold [00:09:41] Speaker 03: and you're going to get a low-volume indication so you don't disturb the meeting. [00:09:45] Speaker 03: So it either gives you an automatic low-volume indication, or it reminds you to set that. [00:09:53] Speaker 03: Now, the only prior art that the board relied on with respect to teaching that was chow. [00:09:59] Speaker 03: Different from chow, this is chow. [00:10:02] Speaker 03: And all chow is is a situation where you've got like a centric system with [00:10:07] Speaker 03: that you could use cell phones and those wireless phones with. [00:10:12] Speaker 03: And it just simply says, well, with a cell phone, you can have a ringer or low vibration or whatever. [00:10:18] Speaker 03: But it has nothing to do with automatically having the low volume indication set when you set it to some type of a hole. [00:10:26] Speaker 03: So that's the distinction there. [00:10:32] Speaker 03: I asked to keep about five minutes for rebuttal. [00:10:35] Speaker 03: I don't know if your owners have any questions. [00:10:38] Speaker 03: address them now otherwise. [00:10:40] Speaker 03: The only one other quick point I just wanted to make is, you know, this invention, Mr. Askoff applied for this in 2004 originally with a provisional and then followed it up in 2005. [00:10:55] Speaker 03: So to some degree, what the board has done is really use hindsight. [00:11:01] Speaker 03: And we should keep in mind that this thing was filed back at a time when the cell phone [00:11:08] Speaker 03: industry and technology was much less advanced than it is today. [00:11:12] Speaker 03: Thank you. [00:11:13] Speaker 02: Thank you, Mr. Greco. [00:11:18] Speaker 00: Thank you, Your Honors, and may it please the Court. [00:11:20] Speaker 00: Malik has substantial evidence respectfully inviting the Court's attention to paragraph 277 of Malik. [00:11:28] Speaker 00: Malik has many teachings about how the user has choices for call handling to automatically [00:11:36] Speaker 00: respond to the call. [00:11:38] Speaker 00: The word automatic is expressly used there. [00:11:41] Speaker 00: Malik talks about responding to the call with a message, with a pre-recorded message. [00:11:46] Speaker 00: And then later on, not too much down, Malik says, on hold message. [00:11:52] Speaker 00: So clearly, that's a nice suggestion that both the board and the examiner had a reasonable basis to rely on as substantial evidence. [00:12:02] Speaker 00: Maybe some other rationale might be plausible. [00:12:05] Speaker 00: throughout other parts of the record, but this rationale is clearly plausible and is substantial evidence supporting the board's motivation finding that using an automatic feature, which Malik says is a benefit, and Che and Malik already hold calls. [00:12:26] Speaker 00: So all that's missing is to preset calls to hold. [00:12:32] Speaker 00: That's claim one. [00:12:36] Speaker 00: And we submit that that claim is very affirmable, should be affirmed. [00:12:42] Speaker 00: Claim two is the only other claim, adds a ringer that has low volume and Chao discloses low volume vibration in call hold settings. [00:12:52] Speaker 00: A skilled phone maker would be motivated to be quiet. [00:12:57] Speaker 00: Unless the court has any questions, I would be happy to take my seat. [00:13:01] Speaker 00: Thank you, Your Honors. [00:13:02] Speaker 03: Thank you, Mr. Ferdinand. [00:13:06] Speaker 03: I'm just going to go back to that Paragraph 277 of MALC and explain why the word automatically can only reference the first clause. [00:13:20] Speaker 03: So this is at page A, 236 of the record. [00:13:26] Speaker 03: It says, the user has choices with respect to handling of the communication itself. [00:13:32] Speaker 03: The choices for call handling may include [00:13:35] Speaker 03: Automatically responding to the call with a standard response such as a pre-recorded message, that we agree on. [00:13:41] Speaker 03: But that's the only automatic part. [00:13:43] Speaker 03: The word automatically doesn't appear again in that paragraph. [00:13:47] Speaker 03: So if you go on to the other parts of that sentence that are separated by semicolons, responding to the message with a selected response, such as a response selected from a variety of pre-recorded messages, well, you can't [00:14:03] Speaker 03: automatically have that. [00:14:04] Speaker 03: I mean, if it's going to be a selected response, it's going to have to be selected at the time it comes in. [00:14:10] Speaker 03: Otherwise, it's the same thing as the first clause. [00:14:15] Speaker 03: Going on, ignoring the call. [00:14:18] Speaker 03: Well, again, you can't automatically ignore the call unless you're just talking about the same thing as the first response, which is setting a pre-recorded message. [00:14:28] Speaker 03: Taking the call. [00:14:30] Speaker 03: Well, you can't automatically take the call because if you're on a conference call, then the whole point of this thing is to be able to know whether you want to take the call if it comes in. [00:14:39] Speaker 03: So you can't automatically take the call. [00:14:41] Speaker 03: So you can see that the word automatically doesn't modify all the different options. [00:14:48] Speaker 03: Then the next word, the next thing is forwarding the call to voicemail. [00:14:52] Speaker 03: Well, again, unless you're on a do not disturb, you can't automatically do that because you don't know what the call is until it comes in. [00:14:59] Speaker 03: And then finally, adding a call to a conference call. [00:15:03] Speaker 03: I mean, clearly, you can't have an automatic add to a conference call before you even know who it is. [00:15:08] Speaker 03: And again, so it's not only the syntax here, but again, if you look at what I've cited before, all these other actions here, besides that first one we talked about, the pre-recorded message, they're all called action features. [00:15:23] Speaker 03: And they're all explicitly described as what the user does when the call comes in. [00:15:29] Speaker 03: So this has nothing at all to do with Mr. Askoff's invention. [00:15:36] Speaker 03: Unless you have questions, I think that's all I need to say. [00:15:40] Speaker 02: Okay. [00:15:41] Speaker 02: Thank you, Mr. Greco. [00:15:42] Speaker 02: The case is submitted and we thank both counsel. [00:15:45] Speaker 02: And that concludes our session for this morning.