Ex Parte KaplanDownload PDFPatent Trial and Appeal BoardFeb 21, 201311112035 (P.T.A.B. Feb. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte DIEGO KAPLAN ____________ Appeal 2010-010551 Application 11/112,0351 Technology Center 2600 ____________ Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 5, 6, 13, 14, 17-19, 21, and 22. Claims 2-4, 7-12, 15, 1 Although Appellant identifies Kyocera Wireless Corporation as the real party in interest in the Appeal Brief, we note that Kyocera Wireless Corporation has assigned this application to Kyocera Corporation. Appeal 2010-010551 Application 11/112,035 2 16, and 20 are cancelled. App. Br. 5.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION Appellant’s invention relates to wireless communication devices and methods that allow such devices to send binary messages to recipient wireless communication devices. See generally Spec. ¶ [18]. For example, such wireless communication devices may maintain a database of recipient devices that includes the capabilities of the recipient devices to receive binary messages or portions thereof and may determine recipient devices’ capabilities prior to sending binary messages. Id. Claims 1 and 13 are illustrative and are reproduced below with disputed limitations emphasized: 1. A wireless communication device for sending a binary message, comprising: a data storage area configured to store a first plurality of contact records comprising a phone book for the wireless communication device and a second plurality of contact records, wherein each contact record in the second plurality of contact records comprises an initialized timestamp attribute indicating when the contact record was initialized and an attribute indicating the ability for the respective contact to receive a binary message, wherein a binary message comprises one or more binary objects; a contact management module configured to maintain the second plurality of contact records and their respective attributes, the contact management module further configured to purge records in the second plurality of contact records when the initialized timestamp attribute exceeds a predetermined timeout value; a binary message module configured to communicate with the contact management module to determine the ability of an intended recipient to receive a binary message, the binary message module further configured to send a partial binary message comprising a portion of the one or more binary 2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed December 31, 2009; (2) the Examiner’s Answer (Ans.) mailed March 31, 2010; and (3) the Reply Brief (Reply Br.) filed May 27, 2010. Appeal 2010-010551 Application 11/112,035 3 objects to an intended recipient in response to an instruction to send a binary message to the intended recipient, wherein the partial binary message is based on the ability of the intended recipient to receive the binary message. 13. A computer implemented method for sending a binary message, comprising: receiving an instruction to send a binary message, said binary message comprising one or more binary objects; parsing said binary message prior to sending said binary message to determine a binary object type for each of the one or more binary objects comprising said binary message; sending a binary capability query to the intended recipient prior to sending said binary message, the binary capability query not including any portion of said binary message; receiving a response from the intended recipient, the response indicating the ability of the intended recipient to receive a binary message; analyzing the response to determine the capability of the intended recipient to receive each of said binary objects in said binary message based on their respective binary object types; constructing a modified binary message comprising only those binary objects in said one or more binary objects that the intended recipient is capable to receive; and sending said modified binary message to the intended recipient. The Examiner relies on the following as evidence of unpatentability: Morse Tsampalis Coulombe US 6,055,413 US 2004/0203956 A1 US 2005/0165913 A1 Apr. 25, 2000 Oct. 14, 2004 July 28, 2005 THE REJECTIONS 1. The Examiner rejects claims 1, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over Tsampalis and Morse. Ans. 3-5. 2. The Examiner rejects claims 13, 14, 17-19, and 22 under 35 U.S.C. § 103(a) as unpatentable over Coulombe and Tsampalis. Id. at 5-9. 3. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as unpatentable over Coulombe, Tsampalis, and Morse. Id. at 9-10. Appeal 2010-010551 Application 11/112,035 4 OBVIOUSNESS REJECTION OVER TSAMPALIS AND MORSE The Examiner finds that Tsampalis teaches all of the limitations of representative claim 1, except that Tsampalis does not teach (1) that “each contact record in the second plurality of contact records comprises an initialized timestamp attribute indicating when the contact record was initialized” or (2) that “the contact management module further [is] configured to purge records in the second plurality of contact records when the initialized timestamp attribute exceeds a predetermined timeout value.” Ans. 3-4. The Examiner finds, however, that Morse teaches these missing limitations. Id. at 4. Appellant argues that the “initialized timestamp attribute” recited in claim 1 is different from Morse’s “origination” timestamp and that, because of this difference, the “predetermined timeout value” recited in claim 1 would be applied from an irrelevant starting point if based on Morse’s “origination” timestamp. App. Br. 13-15. Consequently, Appellant contends that Tsampalis and Morse fail to teach or suggest all of the limitations of claim 1. ISSUE Under § 103(a), has the Examiner incorrectly rejected claim 1 by finding that Tsampalis and Morse teach: (1) that “each contact record in the second plurality of contact records comprises an initialized timestamp attribute indicating when the contact record was initialized” and Appeal 2010-010551 Application 11/112,035 5 (2) that “the contact management module further [is] configured to purge records in the second plurality of contact records when the initialized timestamp attribute exceeds a predetermined timeout value”? ANALYSIS We begin by construing the disputed limitations of claim 1 which recites, in pertinent part, that each contact record “comprises an initialized timestamp attribute indicating when the contact record was initialized” (emphases added). Appellant does not expressly define the term “initialized” in the Specification. See Spec. ¶ [31]. Nevertheless, Appellant distinguishes between the time at which a contact record is “initialized” and a time at which a contact record is “refreshed.” Id. Further, we note that Appellant describes that, when all information pertaining to a previously purged contact record is updated, the contact record is “re-initialized.” Id. Although Appellant does not expressly define the term “initialized,” we find that the verb “to initialize” was understood to mean “to set (variables, counters, switches, etc.) to their starting values at the beginning of a computer program or subprogram” or “to prepare (a computer, printer, etc.) for reuse by clearing previous data from memory.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 678 (2d Random House ed. 1999). Thus, we conclude that “initialized” and “refreshed” are distinct terms (compare claim 1 (“initialized timestamp attribute” (emphasis added)) with claim 5 (“refreshed timestamp attribute” (emphasis added))), and we construe the term “initialized” to refer to the assignment of values to attributes, such as capabilities associated with a list of binary objects (Fig. 2B; Spec. ¶¶ [29], [30]), of a newly created or recreated contact record. Therefore, we construe the term “initialized timestamp attribute” in claim 1 to mean a variable to Appeal 2010-010551 Application 11/112,035 6 which a value is assigned identifying the time at which a contact record was created or recreated. The Examiner finds that Tsampalis teaches the creation of a plurality of contact records. Ans. 3 (citing Tsampalis, ¶ [0060]). In particular, referring to Figure 16, the Examiner finds that Tsampalis teaches the “storing of the recipient list messaging format capabilities 406 in the phonebook 222 as received in an new capabilities signal one 1326.” Tsampalis, ¶ [0060]; see also Tsampalis, Fig. 3 (Phonebook column entitled “MSG’G FRMT CAPS”).3 In support of the Examiner’s finding, we note that Tsampalis describes that the new capabilities signal one 1326 providing recipient list messaging format capabilities 406 is sent from a second communication wireless device (e.g., a recipient device) to a first wireless communication device (e.g., a sender device). Compare Tsampalis, ¶ [0057]; Fig. 13 (describing signal three 1320, signal two 1322, and signal one 1326 passing capabilities information from the recipient device to the sender device) with Spec. ¶¶ [34], [46]; Fig. 5 (responding to capability query and parsing response to capability query). Thus, the Examiner adequately demonstrates that Tsampalis teaches the initialization of contact records. Ans. 4. As noted above, the Examiner relies upon Morse to teach that Tsampalis’s records may be modified to include an “initialized timestamp attribute.” Id. The Examiner finds that Morse teaches the use of a timestamp for an original message and a timestamp for an update to the 3 We note that, in Appellant’s invention, “the contact records may be the same records that are maintained by the phone book of the handset 20.” Spec. ¶ [28] (emphasis added). Appeal 2010-010551 Application 11/112,035 7 original message. Id. (citing Morse, col. 10, ll. 9-10). In particular, Morse describes that the timestamp for an original message “contains an origination time of the message which indicates when the message was received by the information provider.” Morse, col. 10, ll. 12-14 (emphasis added). Thus, the Examiner concludes that Morse’s teaching of a timestamp including a message “origination time,” indicating when the message was received, teaches a timestamp indicating when a contact record was initialized. Ans. 11. Appellant argues that Morse’s origination timestamp is different from Appellant’s initialized timestamp attribute. App. Br. 13. Referring to Morse’s Figure 1, Appellant argues that Morse describes a system for providing time-sensitive information to subscribers. Id. at 14 (citing Morse, Fig. 1 (depicting information sources for “current events,” “sports information,” “local news,” etc.). Consequently, Appellant argues that the Morse’s “origination” timestamp provides information relevant to the content of the message, e.g., its “timeliness,” rather than when it was initialized. Id. We are unpersuaded by these arguments. First, the Examiner is not incorporating Morse’s “origination” timestamp into Tsampalis’s apparatus. Instead, the Examiner is modifying the teaching of Tsampalis in view of the teaching of Morse. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2010-010551 Application 11/112,035 8 Second, referring to Tsampalis’s Figure 3, the Examiner notes that the contact records stored in Tsampalis’s phonebook 222 already include a last update time. Ans. 11 (citing Tsampalis, Fig. 3; ¶ [0031]).4 Thus, the Examiner properly combines Morse’s teaching of a timestamp based on origination time with Tsampalis’s teaching of a contact record including a list of messaging format capabilities and an update time to teach Appellant’s contact record comprising an “initialized timestamp attribute.” Id. As the U.S. Supreme Court explained, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Finally, as noted above, claim 1 also recites that “the contact management module further [is] configured to purge records in the second plurality of contact records when the initialized timestamp attribute exceeds a predetermined timeout value.” Morse describes that “[t]he original message also contains an update lifetime . . . time or reference which represents the length of time . . . that the original message can be updated by subsequently received message updates.” Morse, col. 10, ll. 14-18. Further, once the update lifetime expires, Morse teaches that the original message may be deleted. Id. at ll. 18-20. Because the original message includes both 4 In the Answer, the Examiner finds for the first time that Tsampalis’s “Last Update Time” may be interpreted as Appellant’s “initialized timestamp attribute.” Ans. 11. Appellant argues (Reply Br. 2-5) that this represents a new basis for the obviousness rejection of claim 1. Nevertheless, we do not reach this argument because we find persuasive the basis for the obviousness rejection over Tsampalis and Morse set forth in the Final Rejection. Final Rej. 2-5; see also Ans. 3-5. Appeal 2010-010551 Application 11/112,035 9 the “origination” timestamp and the update lifetime, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art to modify the teaching of Tsampalis to purge contact records after a predetermined timeout value (e.g., the update lifetime), calculated from the initialized timestamp attribute (e.g., the “origination” timestamp), has been exceeded. Ans. 4. Appellant argues that this limitation is not taught or suggested by Tsampalis and Morse because Morse’s “origination” timestamp, i.e., the starting time for the expiration period calculation, is different from Appellant’s initialized timestamp attribute. App. Br. 15. For the reasons set forth above, we find this argument unpersuasive. For the foregoing reasons, Appellant has not persuaded us that the Examiner incorrectly rejected independent claim 1 and dependent claims 5 and 6, not separately argued with particularity (App. Br. 15). Therefore, we sustain the rejection of these claims. OBVIOUSNESS REJECTION OVER COULOMBE AND TSAMPALIS The Examiner finds that Coulombe teaches all of the limitations of representative claim 13, except that Coulombe does not teach “sending a binary capability query to the intended recipient prior to sending said binary message, the binary capability query not including any portion of said binary message;” and “receiving a response from the intended recipient, the response indicating the ability of the intended recipient to receive a binary message.” Ans. 5-6. The Examiner finds, however, that Tsampalis teaches these missing limitations. Id. at 6-7 (citing Tsampalis, ¶¶ [0033]-[0035]). Appellant does not contest that Tsampalis teaches the limitations that the Examiner finds missing from Coulombe. App. Br. 15-18. Instead, Appeal 2010-010551 Application 11/112,035 10 Appellant argues that Coulombe does not teach “parsing said binary message prior to sending said binary message to determine a binary object type for each of the one or more binary objects comprising said binary message,” as recited in claim 13. Id. at 16. Further, Appellant argues that Coulombe teaches away from “parsing,” as recited in claim 13. Id. at 16-17 (citing Coulombe, ¶ [0005]). ISSUES Under § 103, has the Examiner erred in rejecting claim 13 by finding that Coulombe and Tsampalis teach “parsing said binary message prior to sending said binary message to determine a binary object type for each of the one or more binary objects comprising said binary message”? ANALYSIS 1. Claim 13. We begin by construing the disputed limitation of claim 13 which recites, in pertinent part, that “parsing said binary message prior to sending said binary message to determine a binary object type for each of the one or more binary objects comprising said binary message” (emphasis added). Appellant does not define the term “parsing” in the Specification and only uses the term when describing “parsing” the response to a capability query “to determine what binary objects the recipient is capable of receiving.” Spec. ¶ [46] (describing the step of “analyzing the response to determine the capability of the intended recipient to receive each of said binary objects . . .” in claim 13 with respect to item 340); Fig. 5 (item 340 (“parse response for objects”)). We find that the verb “to parse” was understood to mean “to analyze (a sentence) in terms of grammatical constituents, identifying the parts of speech, syntactic relations, etc.” or “to describe (a word in a Appeal 2010-010551 Application 11/112,035 11 sentence) grammatically, identifying the part of speech, inflectional form, syntactic function, etc.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 962 (emphasis added). Therefore, we construe the term “parsing” in claim 13 broadly as analyzing data, e.g., an instruction, a binary message or response, or a contact record; to determine the types of information, e.g., the types of binary objects or the intended recipient, contained or identified in the data. The Examiner finds that Coulombe teaches “parsing” the binary message to determine a binary object type for each of the one or more binary objects comprising the binary message. Ans. 5, 12 (citing Coulombe, ¶ [0005]). Referring to claim 13, Appellant first argues that Coulombe does not teach or suggest such “parsing.” App. Br. 16. In particular, Appellant argues that Coulombe only teaches sending “unparsed” messages from a sending terminal to a messaging server where the unparsed messages may or may not be transcoded before the messages are received by a receiving terminal. Id. We are not persuaded by Appellant’s argument. Coulombe teaches that “a user agent of the sending terminal inserts, into the message, media characteristics of the message sufficient in detail to enable determining whether the message should be transcoded to accommodate multimedia capabilities of the receiving terminal.” Coulombe, ¶ [0005] (emphases added). Thus, the Examiner finds that the insertion of media characteristics into the message requires analysis of the message, so that the correct media characteristic is selected and inserted at the correct location. Ans. 12. In support of the Examiner’s finding, we note that, in describing particular embodiments of its method, Coulombe teaches that the insertion of such media characteristics into the body of message is Appeal 2010-010551 Application 11/112,035 12 “parsing.” Coulombe, ¶¶ [0042]-[0044]. Coulombe describes two embodiments of its method: inserting such media characteristics into the body of a message (id. at ¶ [0043]) and inserting such media characteristics into the message header (id. at ¶ [0044]). Coulombe explains that header insertion has the advantage over message body insertion that, when using header insertion, “one doesn’t need to parse through the message body to extract the relevant information.” Id. (emphasis added). Therefore, the Examiner correctly concludes that Coulombe’s description of the insertion of media characteristics teaches “parsing” the binary message, as recited in claim 13.5 Appellant also argues that, because Coulombe describes sending a message from a sending terminal to a messaging server for possible transcoding before the message is received by the receiving terminal (Coulombe, ¶ [0005]), Coulombe does not teach that the message is parsed “prior to sending said binary message.” App. Br. 16. Coulombe teaches, however, that a user agent at the sending terminal inserts media characteristics into a message “prior to sending” the message for ultimate receipt by the receiving terminal. Ans. 12 (citing Coulombe, ¶ [0005]); see also Coulombe, ¶ [0042] (Message Fragment 1 is an MMS message after insertion of media characteristics “by the user agent in the sending terminal 21.”). Although the message may be transcoded at the messaging server before its receipt at the receiving terminal, Coulombe teaches that the 5 Appellant further argues that sending an unparsed message with inserted media characteristics would not be as efficient as parsing a binary message prior to sending. App. Br. 16. Because the Examiner correctly finds that Coulombe teaches parsing the binary message before sending, we find this argument unpersuasive. Appeal 2010-010551 Application 11/112,035 13 insertions to the message, i.e., the parsing of the message, occur prior to sending by either the sending terminal or the messaging server. Id. To the extent that Appellant argues that the “parsing” must occur immediately before the final transmission to the receiving terminal or that “parsing” must include transcoding, such arguments are not commensurate with the language of claim 13, as construed above. Therefore, the Examiner correctly concludes that Coulombe’s insertion of media characteristics into a message and the subsequent sending of that message teaches that “parsing” the binary message occurs “prior to sending” the message, as recited in claim 13. Finally, Appellant argues that Coulombe describes the analysis of all components of the message, including the inserted media characteristics, by transcoding at the messaging server. App. Br. 16-17 (citing Coulombe, ¶ [0002]). Moreover, because transcoding may occur after the message is sent from the sending terminal, Appellant argues that Coulombe teaches away from the parsing the message “prior to sending” the message. Id. (emphasis added). Nevertheless, we note that, in cited Paragraph [0002], Coulombe refers to techniques existing at the time of Coulombe’s invention, rather than Coulombe’s insertion, sending, and transcoding steps. Thus, because the Examiner correctly finds that Coulombe teaches insertion of media characteristics in the binary message before the message is sent from the sending terminal, we also are not persuaded by Appellant’s teaching away argument. 2. Claim 18. Appellant acknowledges that “[c]laim 18 contains subject matter similar to the subject matter of claim 13.” App. Br. 18. In particular, claim Appeal 2010-010551 Application 11/112,035 14 18 recites that a computer implemented method comprises “parsing the instruction to send the binary message to identify an intended recipient for the binary message and the one or more binary objects that comprise the binary message” (emphasis added). Raising substantially the same arguments raised with respect to claim 13, Appellant argues (1) that Coulombe does not teach or suggest that parsing occurs before the message is sent and (2) that Coulombe teaches away from parsing the message before the message is sent. Id. Initially, we note that, unlike the disputed limitation of claim 13, the disputed limitation of claim 18 does not recite that parsing of the binary message occurs “prior to sending said binary message.” Id. at 22-24. Nevertheless, because the disputed limitation describes parsing the instruction “to send the binary message” and parsing “to identify an intended recipient for the binary message” (emphases added), we construe this limitation to require that the parsing occur before the message is sent. Nevertheless, for the same reasons set forth above with respect to claim 13, the Examiner concludes that Coulombe’s insertion of media characteristics into a message teaches parsing the message to identify one or more binary objects that comprise the binary message and that sending that message with insertions teaches that “parsing” the binary message occurs before sending the message, as described in claim 18. Ans. 12-13. Therefore, we are not persuaded by Appellant’s first argument. Because transcoding may occur after the message is sent from the sending terminal, Appellant again argues that Coulombe teaches away from parsing the message “prior to sending” the message. App. Br. 18. Nevertheless, because the Examiner correctly finds that Coulombe teaches Appeal 2010-010551 Application 11/112,035 15 insertion of media characteristics in the binary message before the message is sent from the sending terminal, we also are not persuaded by Appellant’s second argument. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 13 and its dependent claims 14 and 17, not separately argued with particularity (App. Br. 18). We also are not persuaded of error in the rejection of independent claim 18, which includes a disputed limitation substantially similar to that recited in claim 13, or its dependent claims 19 and 22, not separately argued with particularity (App. Br. 19). Therefore, we sustain the rejection of these claims. OBVIOUSNESS REJECTION OVER COULOMBE, TSAMPALIS, AND MORSE The Examiner finds that Coulombe and Tsampalis teach all of the limitations of claim 21, except for the step of “deleting the contact record for the intended recipient if the last update time of the contact record exceeds the predetermined value.” Ans. 9-10. The Examiner finds, however, that Morse teaches this limitation. Id. at 10 (citing Morse, col. 9, l. 61–col. 10, l. 25). Although Appellant argues this claim separately, Appellant merely argues that Morse fails to supply the alleged deficiencies in Coulombe and Tsampalis, as applied to independent claim 18, from which claim 21 depends. App. Br. 19. For the reasons discussed above, we are not persuaded by those arguments. Therefore, we sustain the rejection of claim 21. Appeal 2010-010551 Application 11/112,035 16 CONCLUSION The Examiner did not err in rejecting claims 1, 5, 6, 13, 14, 17-19, 21, and 22 under § 103(a). DECISION The Examiner’s decision rejecting claims 1, 5, 6, 13, 14, 17-19, 21, and 22 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 babc Copy with citationCopy as parenthetical citation