Ex Parte Lei et alDownload PDFPatent Trial and Appeal BoardOct 26, 201310677418 (P.T.A.B. Oct. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ZHIBIN LEI, IRENE YUEN HAN FAN, and YIU WING WAT ____________ Appeal 2011-002796 Application 10/677,418 Technology Center 2400 ____________ Before MARC S. HOFF, DENISE M. POTHIER, and GEORGIANNA W. BRADEN, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 32-50. Claims 1-31 and 51-55 have been withdrawn from consideration. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2011-002796 Application 10/677,418 2 Invention Appellants’ invention relates to providing multimedia messaging between network nodes. See Spec. ¶ 1. Claim 32 is reproduced below with emphasis: 32. A method for communication of content, said method comprising: storing content within a database, said database being coupled to a server; uniquely identifying said stored content; after said storing and identifying, receiving, at said server, from a first user device of a plurality of user devices an abbreviated message including identification of certain content of said stored content for sending at least a portion of said stored content to a second user device of said plurality of user devices as a data rich message, wherein said data rich message is selected from the group consisting of: video data and audio data; compiling, at said server, said data rich message using said identification of said certain content to retrieve appropriate content of said stored content from said database for inclusion in said data rich message; and transmitting said complied data rich message to said second user device. The Examiner relies on the following as evidence of unpatentability: Fishman US 2002/0103935 A1 Aug. 1, 2002 Fenton US 2003/0193951 A1 Oct. 16, 2003 Kontio US 2004/0249768 A1 Dec. 9, 2004 The Examiner’s Rejections Claims 32, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fenton and Fishman. Ans. 3-6. Claims 33-42 and 45-50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fenton, Fishman, and Kontio. Ans. 6-10. Appeal 2011-002796 Application 10/677,418 3 OBVIOUSNESS REJECTION OVER FENTON AND FISHMAN Regarding independent claim 32, the Examiner finds that storing content within the database is met by Fenton’s multimedia database. Ans. 3. The Examiner further finds that a server receives an abbreviated message, after storing and identifying, based on the Multimedia Messaging Service (MMS) 100 ability to create, update, store, transfer, interrogate, manage, and retrieve a user’s multimedia messaging profile. Ans. 3-4 (citing ¶¶ 37-38). The Examiner states that Fenton discloses the abstract message contains identifiers within its message. See Ans. 3, 11 (citing ¶ 66). The Examiner further states that Fenton teaches abstract messages are sent between a relay server and a user agent. Ans. 11. Appellants argue Fenton’s paragraphs 37 and 38 do not teach the claimed method. App. Br. 5. Appellants assert Fenton fails to discuss storing content within a database or, after storing, receiving from a first user device at the server an abbreviated message including identification of certain content of the stored content. App. Br. 5-6; Reply Br. 4. Appellants contend that the storing and receiving occur contemporaneously. App. Br. 5-6 (citing ¶ 41). ISSUE Under § 103, has the Examiner erred in rejecting claim 32 by finding that Fenton and Fishman, collectively, would have taught or suggested storing content within a database and, after said storing and identifying, receiving, at said server, from a first user device an abbreviated message including identification of certain content of the stored content? Appeal 2011-002796 Application 10/677,418 4 ANALYSIS Claim 32 Based on the record before us, we find no error in the Examiner’s rejection of claim 32. Appellants’ main contention is that Fenton fails to teach the recited order of storing content in the database and, after storing, receiving an abbreviated message including identification of the certain content of the stored content at the server from a first user device. App. Br. 5-6; Reply Br. 4. Various passages cited by the Examiner support the conclusion that Fenton teaches or suggests such recited limitations. The Examiner maps a multimedia database to the step of storing content within a database. Ans. 3. We find this position reasonable. Fenton discloses that database134 is a customer, subscriber, or operator directory that contains one or more customized processing instructions. Fenton ¶ 27. Fenton further elaborates that database 134 contains other information, including a set of rules how to handle incoming messages and their delivery. Fenton ¶ 32. Given that the database contains information, we find that Fenton teaches or suggests storing content within the database. The Examiner further maps the recited receiving step to the discussions in paragraphs 8, 37 and 66. See Ans. 3-4, 11. Fenton discusses a method for processing multimedia messages where the invention retrieves one or more customized processing instructions from a database and processes the message using the instructions. Fenton ¶ 8. Fenton also states the MMS 100 can retrieve multimedia messaging profiles, which allow a user to configure and personalize a multimedia messaging environment. Fenton ¶ 37. One such multimedia messaging environment or MMSE is described in Figure 11. See Ans. 11 (citing ¶ 66). Appeal 2011-002796 Application 10/677,418 5 Here, Fenton describes that the messages carry information elements, including the version number and message type, so that the MMSE components may be able to identify properly and manage the message contents. Fenton ¶ 66; Fig. 11. Fenton further discusses abstract messages, including MM1_submit.REQ 1102 and MM4_forward.REQ 1106, created and received both by user agents and servers. See Ans. 11 (citing Fenton ¶ 66 and discussing abstract messages). For example, such information elements within Fenton’s MM4_forward.REQ abstract message may include 3GPP MMS Version identifying a MMS version, a Message ID identifying the multimedia message, content type identifying the content type of the message, and Priority identifying the priority of the message as specified by the User Agent. See Fenton ¶ 104 (Table 20). Similarly, the MM1_submit. REQ 1102 also includes content type and priority. Fenton ¶ 70. Some of these information elements identify customized processing instructions or a set of rules on how to handle incoming messages or delivery, both, which are stored on the database. Fenton ¶¶ 27, 32, 66, 104, 133-134. For example, the MM1_submit.REQ and MM4_forward.REQ messages in Fenton may include an information element, Priority, that identifies the message’s priority or importance. Fenton ¶¶ 70, 104. Fenton further teaches using customized processing instructions to implement user preferences, including instructions with a delivery priority for the message. Fenton ¶ 133. Fenton suggests that the stored set of rules on how to handle the delivery of messages or the customized processing instructions would be identified through the Priority information element that is part of the abstract messages MM1_submit.REQ and MM4-Forward.REQ so that the message Appeal 2011-002796 Application 10/677,418 6 is delivered as requested. See Fenton ¶¶ 32, 66, 70, 104. As such, Fenton suggests the abstract message received by the server includes an identification of certain content of the stored content (e.g., instructions or rules on how to handle delivery) as recited in claim 32. Furthermore, contrary to Appellants’ argument (see App. Br. 5-6), we find that an ordinarily skilled artisan would have recognized Fenton stores the processing instructions and rules set in database 134 prior to any server in Fenton receiving an abstract message. As explained above, Fenton’s messages have certain information elements tied to instructions and rules within the database. Moreover, Fenton discusses and suggests using the database 134, containing instructions, to handle the messages at the server. See Fenton ¶¶ 27-28, 32, 66. Storing instructions and rules in the database after receiving an abstract message for processing would affect Fenton’s ability to process the various instructions referenced in the abstract message by their information elements. Thus, given the creative steps that an ordinary artisan would have employed, Fenton suggests at a minimum receiving the abbreviated message, including its identification to certain content stored in the database, after storing the content within the database, as claim 32 requires. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because we find that Fenton teaches and suggests the disputed limitations in claim 32, we need not determine whether Fishman cures the allegedly deficiencies in Fenton. App. Br. 6; Reply Br. 4. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 32. Appeal 2011-002796 Application 10/677,418 7 Claims 43 and 44 Claim 43 recites a gateway server having similarities to the method claim 32. In particular, claim 43 recites a distribution control apparatus “for receiving from at least one of said users a unique identification of certain content of said stored content and for sending at least a portion of said uniquely identified content to a recipient identified by said one user, wherein said receiving occurs after said content has been stored and uniquely identified.†Appellants argue that the prior art does not teach receiving a unique identification of certain stored content from a user and sending a portion of the uniquely identified content to a recipient identified by the user. App. Br. 6-7. We disagree. First and notably, claim 43 does not recite method steps of receiving an identification and sending a portion of the content as argued. Rather, claim 43 recites a distribution control apparatus “for receiving . . . a unique identification of certain content of said stored content†and “for sending at least a portion of said uniquely identified content to a recipient†or the intended use of the distribution control apparatus. The cited prior art, thus, need only have the ability to perform such functional or intended use limitations. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Second, in the Response to Arguments section, the Examiner clarifies that the rejection relies upon Fenton to teach much of the disputed features. See Ans. 12. As discussed above, Fenton teaches devices (e.g., 1004, 1014) which receive abstract messages having information elements, such as MM1_submit.REQ and MM4_forward.REQ, identifying certain stored content. Fenton ¶¶ 32, 66, 70, 104. Moreover, because some of these Appeal 2011-002796 Application 10/677,418 8 information elements, such as Priority, indicates the importance of a message (Fenton ¶ 104), they are unique. Additionally, as explained above, an ordinary artisan would have recognized the receiving of the message would have occurred after the content was stored in the database. While Fishman’s teachings are cumulative, Fishman further teaches and suggests storing content in a database prior to its receipt elsewhere. See Ans. 6. Fenton and Fishman collectively teach or suggest an apparatus that receives a unique identification of certain content in the database after the content has been stored in the database as recited. Third, Fenton teaches that an abstract message, such as MM4_forward. REQ, includes a recipient address information element. Fenton ¶ 104. Without such information, the message could not be delivered. Fenton therefore teaches an apparatus having the ability to receive a unique identification of certain content (e.g., instructions relating to the priority of the message) and sending at least a portion of the uniquely identified content to the recipient as recited in claim 43. Contrary to Appellants’ contentions (Reply Br. 5), we find that Fenton demonstrates an apparatus, which are part of MMSE 114, for receiving a unique identification of certain stored contents. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 43 and dependent claim 44 not argued separately with particularity. OBVIOUSNESS REJECTION OVER FENTON, FISHMAN, AND KONTIO Claims 33-42 and 45-50 are rejected under 35 U.S.C. § 103(a) as Appeal 2011-002796 Application 10/677,418 9 unpatentable over Fenton, Fishman, and Kontio. Ans. 6-10. Appellants argue Fenton and Fishman do not teach the above-disputed limitations of claims 32 and 43 and Kontio fails to cure the alleged deficiencies. App. Br. 7-8; Reply Br. 6. Because we find that Fenton teaches and suggests the argued limitations in claim 32 and and Fenton/Fishman teach and suggests the argued limitations of claim 43, we are not persuaded by Appellants’ contentions and need not address whether Kontio cures any alleged deficiency. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of claims 33, 38-41, 45, and 48-50 not argued separately with particularity. Claims 34-36 Claim 34 depends from claim 33 and further recites the content is displayed to the first user on a device separate from the user 1 device. Notably, claim 33 does not specify “said content†in claim 34 other than to recite it is “information identifying corresponding [sic] said stored content.†Appellants argue that Kontio merely identifies a device and does not display content to the user on a device separate from user device. App. Br. 8. We are not persuaded. This argument attacks Kontio individually rather than considering the collective teachings in the rejection. See Ans. 6-7, 13. Such individual attacks do not show nonobviousness. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relies on Fenton to teach displaying content to the first user and Kontio for the particular content. See Ans. 6-7 (citing Fenton ¶26 and Kontio, Abstract). The Examiner relies on Kontio’s paragraph 232 to teach displaying content on a device separate from the user device (e.g., at 1 Claim 34 mistakenly recites “use device†rather than “user device.†Appeal 2011-002796 Application 10/677,418 10 MMS User Agent 102). See App. Br. 7. Fenton and Kontio’s Abstract – not Kontio’s paragraph 232 – teach displaying the content to the user as recited in claim 33. See App. Br. 6-7. Appellants have not challenged these findings. See App. Br. 7-8; Reply Br. 6. Kontio teaches serving content to a user at kiosk using a public hotspot, suggesting users can avail themselves of a public terminal rather than their personal terminals to display content. Kontio ¶ 232. Thus, collectively, the Fenton/Kontio system predictably yields no more than displaying the content to the first user on a device separate from the user device as recited. Accordingly, Appellants have not persuaded us of error in the rejection of claim 34 and claims 35 and 36 not separately argued with particularity. Claim 37 Claim 37 depends from claim 34 and further recites that the separate device receives the abbreviated message from the first user device. The Examiner relies upon Kontio to teach this limitation. Ans. 8 (citing ¶ 18). Appellants state Kontio teaches the connection between two Bluetooth devices is initiated by an inquiring device sending an inquiry message. App. Br. 18. However, Appellants argue that the Examiner has not explained how this communication relates to the limitations recited in claims 33 and 34 and is not considering the claim as a whole. App. Br. 8-9. We agree. Claim 37 directly or indirectly depends from claims 32-34. As stated above in connection with claim 32, Fenton teaches an abbreviated message is received by the server. We further found when discussing claim 34 that that Kontio teaches receiving displayed content at a kiosk. However, Kontio’s teaching of sending an inquiry message to other devices in its Appeal 2011-002796 Application 10/677,418 11 vicinity (Kontio ¶ 18) falls short of teaching or suggesting that the separate device (e.g., the kiosk) receives the abbreviated message discussed above in connection with claim 32 as taught by Fenton. Moreover, the Examiner has not provided a reason for combining these teachings to result in what is recited in claim 37. See Ans. 8, 13-14. In sum, the Examiner fails to present a prima facie case of obviousness. Claim 42 Claim 42 depends from claim 32 and further recites that, prior to compiling the data rich message, identifying a version of the certain content suitable for use by the second user device. To teach this limitation, the Examiner relies on Fenton’s discussion of formatting, screening, deleting, and modification (e.g., compiling) messages and the message carrying a version number. Ans. 9 (citing Fenton ¶¶ 28, 66). The Examiner also discusses Figure 12 in Fenton and how it relates to customizing processing instructions. Ans. 14 (citing ¶¶ 132-134). Appellants argue that the Examiner fails to show that a version of the message is identified prior to compiling the data rich message. App. Br. 9. Based on the record, we are not persuaded by Appellants’ arguments. Fenton teaches an MMS application protocol that provides a mechanism to identify the version number and message type in each abstract message, suggesting that the version number must have been identified prior to including such information within the message. Fenton ¶ 66. Fenton suggests that the message is compiled after obtaining all related information, including an identifiable version number in each message, as well as its contents. See id. Moreover, Fenton teaches the customized processing instructions located within the database (Fenton ¶ 27) are used to determine Appeal 2011-002796 Application 10/677,418 12 multimedia capabilities of a destination device and how to reformat the message so as to be compatible with the destination device. Fenton ¶ 133. Fenton thus further suggests identifying a version of certain content based on multimedia capabilities suitable for a second user device, prior to compiling (e.g., reformatting) the message. See also Ans. 14. Claims 46 and 47 Disputed claim 46 depends from claim 43 and further recites a transmission apparatus for sending portions of the stored content along with the unique identity of the content over a network in a non-user specific broadcast mode. The Examiner finds this limitation is meet by Fenton’s MMS that sends and receives messages with unique message identifiers and formats messages. Ans. 9 (citing Fenton ¶¶ 28-29; Fig. 1), 14 (citing Fenton ¶ 48). Appellants argue that the mere disclosure of MMS relay 128 that uses the appropriate protocol, such as STMP, to transfer messages is insufficient to teach sending portions of the stored content over a communication network in a non-user specific broadcast mode as recited. App. Br. 9. We are not persuaded. As discussed above when addressing claim 43, claim 46 recites a transmission apparatus “for sending portions of said content . . . over a communication network in a non-user specific broadcast mode.†This limitation is functional, requiring the prior art only have the ability to perform this function. Turning to Figure 1, Appellants fail to demonstrate why the MMS relay 128 does not have the ability to send portions of content stored in database 134 along with any unique identity of the content over a communication network in a non-user specific broadcast mode. Fenton, Appeal 2011-002796 Application 10/677,418 13 Fig. 1. Fenton states that the MMS relay 128 receives and sends messages, converts messages leaving the MMSE 114 to appropriate non-user specific message format (e.g., multimedia to internet email), and provides message notification to users agents (e.g., broadcasting). Fenton ¶ 28. Also, as the Examiner notes (Ans. 9), Fenton further discusses transferring messages between different MMSEs 114 using SMTP protocol. Fenton ¶ 29. These passages further support that Fenton’s MMS relay 128 has the ability to send portions of stored content along with a unique identity of the content over a communication network in a non-user specific broadcast mode as recited. Accordingly, Appellants have not persuaded us of error in the rejection of claim 46 and claim 47 not separately argued with particularity. CONCLUSION The Examiner did not err in rejecting claims 32-36 and 38-47 under § 103. The Examiner erred in rejecting claims 37 under § 103. DECISION The Examiner’s decision rejecting claims 32-36 and 38-47 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 alw Copy with citationCopy as parenthetical citation