Ex Parte Lei et al

Patent Trial and Appeal Board

Oct 26, 2013

10677418 (P.T.A.B. Oct. 26, 2013)

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 Claims 1-31 and 51-55 have been withdrawn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.

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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.

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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?

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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).
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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
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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.

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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
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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
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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.”
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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
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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
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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,
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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

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