Ex Parte Nordstrom et al

Patent Trial and Appeal Board

Sep 10, 2014

12059189 (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/059,189 03/31/2008 Anna Nordstrom 9342-421 4550
54414 7590 09/10/2014
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
SHEN, QUN
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
09/10/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANNA NORDSTROM, BENGT STAVENOW,
and MARKUS ANDREASSON
________________

Appeal 2012-005464
Application 12/059,189
1

Technology Center 2600
________________

Before CARL W. WHITEHEAD, JR., JOHNNY A. KUMAR, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to controlling portable electronic devices
including location circuits and associated methods. Spec. ¶ 2. Claim 1 is
illustrative of the invention and is reproduced below:

1
According to Appellants, the real party in interest is Sony Ericsson Mobile
Communications AB. App. Br. 1.
Appeal 2012-005464
Application 12/059,189

2
1. A portable electronic device configured to
communicate with and download applications or receive events
from a server configured to store at least one application or
event, the portable electronic device comprising:
a location circuit configured to determine a current
position of the portable electronic device and provide the
current position of the portable electronic device to the server;
and
a data manager configured to receive a link to the at least
one application or event from the server responsive to the
provided current position information and download the at least
one stored application or event using the received link if a
certain number of portable electronic devices having a common
element are within a defined region at the same time.

REFERENCES
Torvinen US 2005/0113123 A1 May 26, 2005
Vanska US 7,072,672 B1 July 4, 2006

REJECTION AT ISSUE
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vanska and Torvinen. Ans. 4–11.

ISSUES
Did the Examiner err in finding the combination of Vanska and
Torvinen teaches or suggest, “if a certain number of portable electronic
devices having a common element are within a defined region at a same
time,” as recited in claim 1 (and similarly recited in claims 9 and 15)?
Did the Examiner err in finding a motivation to combine the teachings
of Vanska and Torvinen?

Appeal 2012-005464
Application 12/059,189

3
ANALYSIS
The Examiner finds “Torvinent [sic] teaches that the application
download can be group and time based, and location dependent.” Ans. 13.
Moreover, the Examiner finds Torvinen teaches “defining criteria to
determine minimum capabilities required of group attendees with the same
interest (e.g. common element …), par 0031, location based group formation
triggers actions, application downloads, services, etc.” Id. The Examiner
finds “it would have been obvious to one of skill in the art at the time of
[the] invention to incorporate Torvinent’s [sic] teachings on application
download based on an event occurred at a particular location and time with a
number [of] mobile terminals with the same minimum set of capabilities in
Vanska’s application download and activation triggering condition.” Ans.
14.
Appellants contend “[c]laim 1 recites only downloading the
application if a certain number of portable electronic devices having a
common element are within a defined region at a same time, i.e. the
application is only downloaded if the trigger condition (a certain number of
portable electronic devices having a common element are within a defined
region at the same time) is satisfied.” App. Br. 6. Moreover, Appellants
contend “that Torvinen discusses ‘group sessions,’ however, … Torvinen
discusses grouping users to efficiently use bandwidth of the system.” Id.
Also, Appellants contend “[i]t appears that the only motivation to combine
Vanska and Torvinen comes from Appellants’ disclosure, which is clearly
improper.” App. Br. 7. We agree with the Examiner and disagree with
Appellants for the reasons below.
Appeal 2012-005464
Application 12/059,189

4
The cited portions of Torvinen relied upon by the Examiner disclose,
“providing location based group sessions” (see Torvinen, ¶ 9) which
teaches the claimed limitations “a certain number of portable electronic
devices” and “within a defined region at a same time.” (Emphasis added).
Also, the cited portions of Torvinen relied upon by the Examiner disclose,
“determin[ing] minimum capabilities required of group attendees,” (see
Torvinen, ¶ 10) which teaches the claimed limitations “if a certain number
of portable electronic devices having a common element are within a
defined region at a same time.” (Emphasis added).
Further, we agree with the Examiner’s findings that a person of
ordinary skill in the art at the time the invention was made would have been
motivated to modify “Vanska’s application download and activation
triggering condition” (Ans. 14) with “Torvinen’s teachings on application
download based on an event occurred at a particular location and time with a
number [of] mobile terminals with the same minimum set of capabilities”
(Id). In other words, the motivation to combine the teachings of Vanska and
Torvinen is to “provid[e] application or software program download and/or
activation aiming at a social or group event with more than one participants
equipped with common mobile devices and communication means and
capability or with common interest and objective participating a group event
as taught by Torvinent [sic].” Ans. 14. Thus, we find that the Examiner
articulated reasoning with rational underpinnings to support a motivation to
combine the teachings of Vanska and Torvinen, see In re Kahn, 441 F.3d
977, 989 (Fed. Cir. 2006).
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 1.
Appeal 2012-005464
Application 12/059,189

5
Because Appellants have not provided separate arguments against the
rejections of claims 2–20, these claims fall with claim 1 for the same reasons
as set forth above. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The Examiner’s decision to reject claims 1–20 under 35 U.S.C.
§ 103(a) 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

kis