Ex Parte Kallio

Patent Trial and Appeal Board

Nov 30, 2012

10517442 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUHA KALLIO
____________

Appeal 2010-002689
Application 10/517,442
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002689
Application 10/517,442

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiners final
rejection of claims 28-58. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
Claim 28. A method, comprising:

determining profile reception capabilities of a mobile terminal;

allocating a profile to a specific event;

detecting an association of the mobile terminal with said event; and

based on the determining, transmitting said profile to said mobile
terminal.

Prior Art
Brescia US 7,068,189 B2 June 27, 2006
Murto US 7,249,100 B2 July 24, 2007

Examiner’s Rejections
Claims 28-52 and 54-58 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Brescia.
Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brescia and Murto.

Appeal 2010-002689
Application 10/517,442

3
ANALYSIS
Section 102 rejection of claims 28-52, 54, 56, and 58
Appellant contends that the term “profile” recited in claim 28 is
explicitly defined by page 1, lines 18 and 19 of Appellant’s Specification to
mean “collections of user settings or preferences that the end user can
automatically manage together.” App. Br. 6, 7. However, Appellant’s
Specification states that a profile could include wallpaper, customized tones,
or icons to link to information regarding an event. Spec. 8:23 to 9:7. The
scope of “profile,” when read in light of Appellant’s Specification,
encompasses information, such as the information transmitted to a mobile
terminal as described by Brescia.
In addition to finding that the scope of “profile” encompasses the
information described in Brescia, we also find that the scope of “profile”
encompasses non-functional descriptive material. The “profile” recited in
claim 28 does not affect any method steps or structural limitations recited in
claim 28. Therefore, the “profile” is a non-functional description of
information that does not distinguish the claim from the prior art in terms of
patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls,
88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
Appellant contends that Brescia does not describe “transmitting said
profile to said mobile terminal” as recited in claim 28, but rather stores a
profile on a server, and transmits information such as event and location
criteria to a mobile terminal. App. Br. 6-8; Reply Br. 2-3. Appellant’s
contention is based on the premise that the information transmitted by
Brescia to a mobile terminal is not a profile, which we find unpersuasive.
Appeal 2010-002689
Application 10/517,442

4
We agree with the Examiner’s finding (Ans. 9-11) that Brescia describes
“transmitting said profile to said mobile terminal” within the meaning of
claim 28.
Appellant contends that Brescia describes an e-mail server that is
capable of sending e-mail to devices receiving e-mail, but does not describe
“determining profile reception capabilities of a mobile terminal.” App. Br.
8. Appellant’s contention is based on the premise that the information of
Brescia does not describe a profile, which we find unpersuasive. We agree
with the Examiner’s finding (Ans. 4) that Brescia describes “determining
profile reception capabilities of a mobile terminal.”
In addition to the Examiner’s finding, we cumulatively find that
Brescia describes storing information for defining a delivery medium for
delivering information to a mobile terminal, such as e-mail, WAP push, or
an SMS message. See col. 4, ll. 58-64; col. 7, ll 42-43; col. 8, ll. 22-25; col.
8, ll. 51-53; and col. 9, l. 1. Page 7, lines 13-18 of Appellant’s Specification
states that the “capability of the mobile station … to receive a particular
profile … can be done based on prestored information (e.g. a company
database having details of an end user’s preference)….” Therefore, we find
Appellant’s contention that Brescia does not describe “determining profile
reception capabilities of a mobile terminal” unpersuasive.
We sustain the rejection of claim 28 under 35 U.S.C. § 102.
Appellant has not provided arguments for separate patentability of claims
29-52, 54, 56, and 58, which fall with claim 1.

Appeal 2010-002689
Application 10/517,442

5
Section 102 rejection of claims 55 and 57
Appellant contends that the Examiner fails to cite any portion of
Brescia that describes “wherein the determining profile reception
capabilities comprises determining the capability of the mobile terminal to
install a particular profile” recited in claim 55. App. Br. 9. The Examiner
finds that column 3, lines 5-59 of Brescia describes this limitation. Ans. 4.
Appellant has not addressed the Examiner’s finding. We sustain the
rejection of claim 55 under 35 U.S.C. § 102.
Appellant contends that Brescia describes delivering information, but
Brescia does not describe determining, by an application server, “the
capability of the mobile terminal to at least one of receiving a particular
profile, and installing a particular profile” as recited in claim 57.1 App. Br.
9. Appellant’s contention is based on the premise that Brescia does not
describe the claimed “profile,” which we find unpersuasive as discussed in
our analysis of claim 28. We sustain the rejection of claim 57 under
35 U.S.C. § 102.

Section 103 rejection of claim 53
Appellant does not present arguments for separate patentability of
claim 53, but instead relies on those presented for claim 28, which we find
unpersuasive. App. Br. 10-11.

1 We provisionally interpret claim 57 to include a drafting error, intending to
recite, “wherein the application server is further configured to determine the
capability of the mobile terminal to [sic: perform] at least one of receiving a
particular profile, and installing a particular profile.” However, upon any
further prosecution the Examiner and Appellant should confirm that our
interpretation is accurate.
Appeal 2010-002689
Application 10/517,442

6
DECISION
The rejection of claims 28-52 and 54-58 under 35 U.S.C. § 102(e) as
being anticipated by Brescia is affirmed.
The rejection of claim 53 under 35 U.S.C. § 103(a) as being
unpatentable over Brescia and Murto 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

kis