Ex Parte Bass et al

Patent Trial and Appeal Board

Aug 15, 2013

10262463 (P.T.A.B. Aug. 15, 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.
10/262,463 09/30/2002 Shelley L. Bass 130332.00009 1178
82744 7590 08/16/2013
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
ADDY, ANTHONY S
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
08/16/2013 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 SHELLEY L. BASS, MICHAEL A. EIFERT,
SCOTT A. ELLWANGER, CHARLES E. GRAVES,
and JOHN D. WERSCHEY
____________________

Appeal 2010-009281
Application 10/262,463
1

Technology Center 2600
____________________

Before MARC S. HOFF, ELENI MANTIS MERCADER, and
BARBARA A. BENOIT, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
The real party in interest is SBC Properties, L.P.
Appeal 2010-009281
Application 10/262,463

2
Appellants’ invention is a method and system for obtaining
information using a mobile communications device. The method includes
receiving at an electronic mailbox accessible by a server, a request email,
sent by a remote client device, comprising a description of information.
Based on the description (e.g., an information category indicator) in the
email, the server requests information from a particular database that is
remote from the server. The method also includes converting the information
received from the database into a response email, and automatically
transmitting the response email to the remote client device (Abstract).
Claim 1 is exemplary of the claims on appeal:
1. A method for obtaining information for a client, comprising:
receiving, at an electronic mail box accessible by a server, a request
email sent by a remote client device, the request email comprising a
description of requested information and comprising an information
category indicator corresponding to a particular category of information
selected from a plurality of categories of information by a client using the
remote client device, the requested information stored in one or more
databases accessible by a particular one of a plurality of remote servers and
not directly accessible by the server, the particular remote server and the
remote client device located remote from the email server;
in response to receiving the request email, the email server:
using the identified information category indicator in the
request email,
identifying the particular remote server from the plurality of
remote servers corresponding to the information category indicator
identified in the request email; and
automatically determining an address of the particular remote
server;
automatically sending, from the email server to the particular remote
server using the determined address of the particular remote server, a request
email for the requested information;
receiving the requested information at the email server; and
after receiving the requested information from the one or more
databases, automatically converting the received information into a response
Appeal 2010-009281
Application 10/262,463

3
email and automatically transmitting the response email to the remote client
device.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Tucciarone US 2003/0009385 A1 Jan. 9, 2003
Watanabe US 6,877,031 B2 Apr. 5, 2005
Takahashi EP 0 981 232 A2 Feb. 23, 2000

Claims 1, 3-6, 8-14, and 16-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Takahashi in view of Tucciarone.
Claims 2, 7, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi in view of Tucciarone and Watanabe.
Throughout this decision, we make reference to the Amended Appeal
Brief (“Amended App. Br.,” filed Mar. 1, 2010), the Reply Brief (“Reply
Br.,” filed Jan. 8, 2007), and the Examiner’s Answer (“Ans.,” mailed Oct. 7,
2009) for their respective details.

ISSUES
Appellants argue that neither Takahashi nor Tucciarone teach or
suggest using an indicator in a request email to identify a particular remote
server or database (App. Br. 9, 12, 14). Appellants further assert that there is
no motivation to combine the references because the Examiner’s proposed
modification of Takahashi would increase the amount of connection time for
client terminal 101. According to Appellants, this would contradict
Takahashi’s stated objective of reducing the amount of time that its mobile
terminal 101 needs to be in active communication with application server
107 (App. Br. 9, 13, 16).
Appeal 2010-009281
Application 10/262,463

4
Appellants’ contentions present us with the following issues:
1. Does the combination of Takahashi and Tucciarone teach or fairly
suggest receiving a request email comprising a description of requested
information and comprising an information category indicator corresponding
to a particular category of information selected from a plurality of categories
of information by a client using the remote client device?
2. Would the person having ordinary skill in the art at the time of the
invention have been motivated to modify Takahashi in view of Tucciarone
as the Examiner proposes?

PRINCIPLES OF LAW
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991). If the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l,
73 F.3d 1085, 1090 (Fed. Cir. 1995).
Appeal 2010-009281
Application 10/262,463

5
ANALYSIS
CLAIMS 1, 3-6, 8-14, AND 16-20
We are not persuaded by Appellants’ argument that neither Takahashi
nor Tucciarone teaches using an information category indicator in an email
to identify a particular server from which to receive information (App. Br.
8). Appellants argue the features of the references individually, whereas the
Examiner has proposed a combination.
We agree with the Examiner’s finding that Takahashi teaches sending
a request email, to a server agent. The agent determines through the content
of the email an agent that will retrieve the described information from an
application server (Ans. 5; Takahashi col. 7, ll. 17-23). The Examiner finds
that Tucciarone supplies the teaching conceded to be missing from
Takahashi, i.e., an information category indicator corresponding to a
particular category of information selected from a plurality of categories of
information by a client using a remote client device (Ans. 6; Tucciarone Fig.
5A, ¶ [0115]). We agree with the Examiner, once again, that one of ordinary
skill in the art have been motivated to modify Takahashi to enable users “to
make self-tailored or personally customized requests using categories, which
are provided by the system and use the customized requests for matching to
categories of information at the system” (Ans. 7).
We do not agree with Appellants that motivation to combine is
lacking because the Examiner’s proposed combination contradicts
Takahashi’s stated objective of “reduc[ing] the amount of time that its
mobile terminal 101 needs to be in active communication with an
application server 107” (App. Br. 9). First, Takahashi expresses a desire to
“reduce a waiting time taken for attaining the result of service processing
Appeal 2010-009281
Application 10/262,463

6
from a server and to save the cost of communication associated with the
waiting time” (¶ [0008]). Enabling a user to select categories of information
to be specified in an email to be sent to a server would not have increased
the waiting time for attaining the result of service processing from a server.
Second, Appellants have not identified, and we do not find, a teaching in
Takahashi that would have discouraged one of ordinary skill in the art from
following the path set out in the reference, or would have led such a person
in a direction divergent from the path that was taken by Appellants. Gurley,
27 F.3d at 553.
We find that the combination of Takahashi and Tucciarone teaches or
suggests all the limitations of claims 1, 3-6, 8-14, and 16-20, and we
conclude that it would have been obvious to make the combination proposed
by the Examiner. Accordingly, we will sustain the Examiner’s § 103
rejection.
CLAIMS 2, 7, AND 15
Appellants present no arguments for the patentability of these claims.
Accordingly, we will sustain pro forma the Examiner’s § 103 rejection of
claims 2, 7, and 15.

CONCLUSIONS
1. The combination of Takahashi and Tucciarone fairly suggests
receiving a request email comprising a description of requested information
and comprising an information category indicator corresponding to a
particular category of information selected from a plurality of categories of
information by a client using the remote client device.
Appeal 2010-009281
Application 10/262,463

7
2. The person having ordinary skill in the art at the time of the
invention would have been motivated to modify Takahashi in view of
Tucciarone as the Examiner proposes.

ORDER
The Examiner’s rejection of claims 1-20 is affirmed.
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

kis