Ex Parte Laumen et al

Patent Trials and Appeals Board

Jan 16, 2019

14247654 - (D) (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/247,654 04/08/2014
23370 7590 01/18/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
JosefLaumen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
60851-904068 7453
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
01/18/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEF LAUMEN, JOERG REINECKE, FRANK SCHANGE,
and GUNNAR SCHMIDT
Appeal2017-005633
Application 14/247,654 1
Technology Center 2400
Before JAMESON LEE, KEVIN F. TURNER, and STEPHEN C. SIU,
Administrative Patent Judges.
TURNER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Office
Action dated June 20, 2016 ("Final Act."), rejecting claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is IPCOM GmbH & CO,
the assignee of this application. Appeal Brief (hereinafter "App. Br."), 3.
Appeal2017-005633
Application 14/247,654
THE CLAIMED SUBJECT MATTER
The claims are directed to a method and a transmitter for sending
predetermined messages of the first message service, using messages of the
second message service. Specification ,r,r 21-24. Claims 1 and 11 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter, with emphases added:
1. A method for transmitting multimedia messages of a
multimedia message service using short messages of a short
message service in a telecommunications network, the method
compnsmg:
embedding a multimedia message of a multimedia
message service within a data portion of a short message of a
short message service, the data portion following a header
portion of the short message;
including in said short message a first identifier
indicating that said multimedia message is present in said data
portion;
including in the data portion of the short message a
second identifier indicating a type of said multimedia
message; and
transmitting the short message to a receiver.
REJECTIONS
Claims 1-7, 9-17, 19, and 20 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Winbladh (US 6,205,330 B 1, issued Mar. 20, 2011 ),
Belpaire (EP 0777394 Al, pub. June 4, 1997), and Global System for
Mobile Communications 03 .40 version 7 .1.0 (pub. 1998) (hereinafter "GSM
03.40 V7.1"); and
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Appeal2017-005633
Application 14/247,654
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Winbladh, Belpaire, GSM 03 .40 V7 .1, and 3rd Generation
Partnership Project Technical Specification 23 .140 version 1.0.0 (pub. 1999)
(hereinafter "3G TS 23.140").
ANALYSIS
The § 103 (a) reiections
Appellants argue claims 1-20 together as a group. See generally App.
Br. We select claim 1 as representative. Thus, claims 2-20 will stand or fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Winbladh discloses all the elements of claim
1, except for ( 1) sending an multimedia message service ("MMS ") message
of a multimedia message service, and (2) wherein the identifier is distinct
from the message of the first message service. Final Act. 4---6; Answer
(hereinafter "Ans."), 5-7. The Examiner finds that the combination of
Belpaire and GSM 03.40 V7.1 discloses sending emails2 using the short
message service ("SMS") protocol, which includes identifiers indicating the
type of message that is being transmitted, i.e., sending an email via SMS.
Final Act. 6; Ans. 5, 7. The Examiner argues that given the teachings of
Belpaire and GSM 03 .40 V7 .1, one of ordinary skill in the art would have
found it obvious to send an MMS message, wherein the identifier is distinct
from the message of the first message service. Final Act. 7.
Appellants argue that the Examiner's obviousness rejection is
improper because Winbladh fails to teach or suggest "embedding a
2 The Examiner interprets emails as messages sent using a multimedia
message service because emails can contain multimedia data. Final Act. 6.
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Appeal2017-005633
Application 14/247,654
multimedia message of a multimedia message service within a data portion
of a short message of a short message service" (hereinafter "embedding
limitation"), per claim 1. App. Br. 8-11; Reply Brief (hereinafter "Reply
Br."), 6-7. In particular, Appellants argue that Winbladh cannot teach
embedding a MMS message within the data portion of a SMS message
because Winbladh teaches that the SMS contains an agent that initiates the
email transfer from a host, i.e., contains instructions that instruct a mobile
phone to grab an email from a remote server. App. Br. 8-11; Reply Br. 6.
We agree with Appellants. More specifically, we agree that Winbladh fails
to disclose the embedding limitation, and the additional references of
Belpaire and GSM 03.40 V7.1 fail to correct this deficiency.
In particular, the Examiner does not offer sufficient evidence to show
Winbladh discloses that the MMS message's content is embedded within the
SMS message's data portion to meet the embedding limitation. Final Act. 4;
Ans. 5---6. Rather, Winbladh discloses that the SMS message contains
instructions for transferring an email, stored on a remote server, to a mobile
device. Winbladh Abstract. As explained in Winbladh, an arriving email is
stored on a remote server. Id. at 4:38--40. Thereafter, the arriving email
creates an SMS message, which is sent to a mobile device. Id. at 7:5-9. The
SMS message contains code that the mobile device's software reads to
access the email together with specific commands, i.e., "get now," "get
later," or "delete mail." Id. at 7:9-57. See also Figure 1 (illustrating a
flowchart for routing of the email from the internet to a mobile phone or
computer via SMS).
We note that the Examiner does not look to or apply the secondary
references in an effort to cure Winbladh's lack of disclosure. In view of the
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Appeal2017-005633
Application 14/247,654
above, we are persuaded that the Examiner erred in rejecting claim 1. We
note that all the rejections rely, at least in part, on the combination of
Winbladh, Belpaire, and GSM 03 .40 V7 .1, and the Examiner does not find
that the additional reference 3G TS 23.140, asserted in the rejection of
claims 8 and 18, corrects the deficiencies identified above regarding the
combination of Winbladh, Belpaire, and GSM 03 .40 V7 .1. Final Act. 4--9;
Ans. 5-7. For the above reasons, we do not sustain the rejection of claim 1
under 35 U.S.C. § 103(a), as well as the rejections of claims 2-20.
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
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