Ex Parte Holzer

Patent Trial and Appeal Board

Nov 19, 2012

09884741 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID HOLZER
____________

Appeal 2011-004801
Application 09/884,741
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
ANDREW CALDWELL, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-30. An oral hearing was conducted on this appeal on November
6, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (filed Aug. 3, 2010), the Answer
(mailed Sep. 16, 2010), and the Reply Brief (filed Nov. 16, 2010). Only
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those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(vii)).

Appellant’s Invention
Appellant’s invention relates to relationship management of devices
utilizing a network. Information from a device is received by a service
aggregator which sends information to the device directing the device to
communicate with a service provider. See generally Abstract.
Claim 1 is illustrative of the invention and reads as follows:
1. A method of managing a relationship between a device and a service
provider comprising:
receiving at a service aggregator a first information from the device,
the service aggregator having information about one or more service
providers and the service aggregator configured to select a specific service
provider from the one or more service providers for the device based on the
first information; and
transmitting a second information from the service aggregator to the
device directing the device to communicate with the specific service
provider, the second information being based on the first information
received from the device, wherein the first information is sent automatically
from the device to the service aggregator.

The Examiner’s Rejection
The Examiner relies on the following prior art reference to show
unpatentability:
Morris US 6,353,848 B1 Mar. 5, 2002
(filed Jul. 31, 1998)
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Anderson US 6,636,259 B1 Oct. 21, 2003
(filed July 26, 2000)
Mighdoll US 6,662,218 B2 Dec. 9, 2003
(eff. filed June 3, 1996)
Cook US 6,697,806 B1 Feb. 24, 2004
(May 19, 2000)
Claims 1, 2, 4, 6-9, 13-17, and 19-28 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Anderson.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson in view of Morris.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson in view of Mighdoll.
Claims 10-12, 18, 29, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Anderson in view of Cook.

ANALYSIS
35 U.S.C. § 102(e) REJECTION
Claims 1, 4, 6-9, and 17
Appellant initially argues, with respect to independent claim 1, that
Anderson does not disclose a “service aggregator” as claimed. According to
Appellant, the Examiner erred in interpreting the “gateway server” 18 of
Anderson as corresponding to the claimed service aggregator (App. Br. 17-
18; Reply Br. 4-5, 7-8).
We do not agree with Appellant. Appellant has, at most,
demonstrated that Anderson uses different terminology from claim 1 without
persuasively identifying any substantive import of the differences in
terminology. Anticipation, however, “is not an ‘ipsissimis verbis’ test.” In
re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S.
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Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). “An
anticipatory reference . . . need not duplicate word for word what is in the
claims.” Standard Havens Prods. v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991).
As described by Anderson, during a connection of the gateway server
18 with a user’s camera 14, an action list 48 is downloaded to the camera
providing selectable options to the camera user such as uploading images to
a photo website, sending images to a list of email addresses, and providing
analysis on the image data (Fig. 5; col. 8, ll. 5-24; col. 12, ll. 53-55).
Further, Anderson discloses that the gateway server 18 operates to select a
particular service provider photo-sharing web site based on information
provided from a particular camera device (col. 5, ll. 30-34). Additionally,
Anderson discloses that different Internet Service Providers (ISPs) can be
provided to the camera device user dependent on user profile (col. 10, ll.
15-63).
Accordingly, we find that the disclosed operation of Anderson’s
gateway server satisfies Appellant’s proffered ordinary dictionary definition
of “service aggregator” as “one that brings together services.” Reply Br. 4.
We further find that the described functions performed by Anderson’s
gateway server are remarkably similar to the functions performed by
Appellant’s service aggregator as described at paragraphs 0027 and 0030 of
the Specification.
We further find unpersuasive Appellant’s contention that Anderson
does not disclose that information is sent “automatically” from the camera
device to the gateway server. According to Appellant (App. Br. 18; Reply
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Br. 5, 9-10), Anderson discloses that a user must push a “Send” button on
the camera before information is sent.
We agree with the Examiner, however, that there is no claimed
requirement that the connection between the camera device and the service
aggregator be made automatically but, instead, only that information be
automatically sent from the camera device to the service aggregator (Ans.
11-12). In other words, to whatever extent Anderson requires that a camera
user push a “Send” button to initially establish an Internet connection or a
connection between the camera and the gateway server, Anderson
nonetheless discloses that information is automatically sent from the camera
to, for example, photo-sharing websites, through the gateway server (col. 3,
ll. 40-49).
In view of the above discussion, we find that the Examiner did not err
in concluding that all of the limitations of independent claim 1 are present in
the disclosure of Anderson. Accordingly, the Examiner’s 35 U.S.C.
§ 102(e) rejection of independent claim 1, as well as the rejection of
dependent claims 4 and 6-9 and independent claim 17 not separately argued
by Appellants, is sustained.

Claim 2
We also sustain the Examiner’s anticipation rejection, based on
Anderson, of dependent claim 2. We find no error in the Examiner’s
determination that Anderson’s gateway server, upon establishing a new ISP
for a camera device, communicates device information to the new ISP and
returns information to the camera including the URL of the camera entity-
specific website (col. 10, ll. 37-47). Similarly, contrary to Appellant’s
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contentions (App. Br. 19), Anderson discloses two-way communication
between the camera device and the entity-specific photo-sharing website
through the gateway server where information about the camera device is
provided to the photo-sharing website service provider (Fig. 1; col. 5, ll. 14-
34; col. 13, l. 16).
Lastly, we do not interpret the Examiner’s stated position as relying
on supposed ISP to ISP communication in Anderson as Appellant’s
arguments suggest (Reply Br. 15-16). While Anderson’s gateway may use
the existing default ISP connection with the camera to gather camera
identifying information, this information is provided to the new ISP to
establish the new ISP account and returned along with the new ISP
information to the camera device (col. 10, ll. 37-47).

Claims 13-16
We do not sustain the Examiner’s anticipation rejection of
independent claim 13 and its dependent claims 14-16. With respect to
independent claim 13, we agree with Appellant’s contention (App. Br. 19-
23; Reply Br. 16) that the relied upon portions of Anderson do not disclose
each and every step of the claim in the manner specifically recited.
In particular, the latter part of claim 13 recites a detailed sequence of
steps involving sending and receiving of messages from a device following
determination of a “new connection event.” We find that the Examiner, in
purportedly addressing the language of claim 13, has merely repeated the
claim language and made reference to various portions of column 10 of
Anderson (Ans. 3). The Examiner, however, has not adequately explained
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how and in what manner such portions are interpreted as corresponding to
the specific claimed method steps.
Further, at pages 20-23 of the Appeal Brief, Appellant has provided
detailed arguments challenging the Examiner’s position with respect to each
of the claimed method steps. The Examiner has not responded to such
arguments other than by providing a blanket reference to the rejections made
against the other appealed claims. We do not find, however, the specific
sequence of method steps recited in claim 13 similarly recited in any of the
other appealed claims. Accordingly, we find that the Examiner has relied
upon conclusory statements which do not adequately address the specific
claimed limitations and are not sufficient to support a rejection based on
anticipation.

Claims 19-26
The Examiner’s anticipation rejection, based on Anderson, of
independent claim 19, as well as the rejection of claims 20-26 not separately
argued by Appellant, is sustained. Appellant’s arguments (App. Br. 15;
Reply Br. 11-14) are not persuasive of any error in the Examiner’s
determination (Ans. 13) that Anderson’s gateway server 18 functions as a
“relationship manager” by directing a plurality of camera devices to their
specific photo-sharing website service providers based on device
identification provided to the gateway server. As disclosed by Anderson, the
gateway server matches the device identification information provided by
the camera devices during image uploading with account information stored
in a database to associate the camera devices with their specific photo-
sharing websites (col. 4, ll. 24-30; col. 5, ll. 14-34).
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We also find that Anderson discloses that identification is provided by
the camera devices to the gateway server during the uploading of images and
that the uploading of images is performed automatically (col. 3, ll. 40-48).
Contrary to Appellant’s contention (Reply Br. 13-14) and as previously
discussed, there is no claimed requirement that a connection between the
camera devices and the gateway server be performed automatically, but only
that information is provided automatically.

Claims 27 and 28
We also sustain the Examiner’s anticipation rejection, based on
Anderson, of independent claim 27 and dependent claim 28 not separately
argued by Appellant. Appellant’s arguments (App. Br. 14; Reply Br. 5) to
the contrary notwithstanding, we find multiple instances of disclosure in
Anderson to support the Examiner’s determination (Ans. 12) that Anderson
provides for the determination of whether the camera devices have access
rights to a service provider.
As described by Anderson, upon determination of a match between
received camera device information with account information stored in a
database, the gateway server will direct a particular camera device to
provide images to the photo-sharing website provider associated with that
particular camera device (col. 4, ll. 9-30; col. 5, ll. 14-34). Further,
Anderson discloses that the gateway server will return ISP information to a
camera device enabling the camera device to connect with a new ISP after
access rights to the new ISP is established through a default ISP connection
procedure (col. 10, ll. 15-47).

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35 U.S.C. § 103(a) REJECTIONS
We also sustain the Examiner’s obviousness rejections of dependent
claims 3, 5, 10-12, 18, 29, and 30 based on separate combinations of
Anderson with Morris, Mighdoll, and Cook. Appellants have not presented
separate arguments for the patentability of these claims.

CONCLUSION
Based on the analysis above, we conclude that Appellant has not
shown that the Examiner erred in rejecting claims 1-12 and 17-30, but has
shown that the Examiner erred in rejecting claims 13-16.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 6-9, 13-17, and 19-
28 under 35 U.S.C. § 102(e) and claims 3, 5, 10-12, 18, 29, and 30 under
35 U.S.C. § 103(a) is affirmed-in-part.
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-IN-PART

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