Ex Parte Ye

Patent Trials and Appeals Board

Aug 30, 2013

11731680 - (D) (P.T.A.B. Aug. 30, 2013)

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.
11/731,680 03/30/2007 Sang-Wook Ye 1235-269 9160
66547 7590 08/30/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
LAI, DANIEL
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
08/30/2013 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 SANG-WOOK YE
____________

Appeal 2011-007914
Application 11/731,680
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENARY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2-6, 11-15, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-007914
Application 11/731,680

2
STATEMENT OF THE CASE
Appellant’s claimed invention is directed to “an apparatus and method
for transmitting multimedia messages in a mobile communication terminal”
(Spec. 1:13-15).
Independent claim 18, reproduced below, is illustrative of the subject
matter on appeal.
18. A method of processing a Multimedia Message
Service (MMS) message in a mobile communication system,
comprising the steps of:

transmitting, by a receiving MMS server, a MMS
notification message to a receiving terminal, the MMS
notification message for notifying a receipt of an MMS
message,

determining, by the receiving terminal, whether the
corresponding MMS message includes media files that can be
processed using the MMS notification message, requesting the
MMS server to retransmit the MMS notification message to
another receiver when the MMS message includes media files
that cannot be processed, and requesting a transmission of the
MMS message when the MMS message can be processed, and

retransmitting, by the receiving MMS server, the MMS
notification message to the other receiver when the request of
the receiving terminal to retransmit the MMS notification
message to the other receiver is received, or transforming and
transmitting the media files included in the MMS message
when the request to transmit the MMS message is received.

REFERENCES and REJECTIONS
The Examiner rejected claims 2, 11, 18, and 19 under 35 U.S.C.
§ 103(a) based upon the teachings of Rooke (U.S. Pat. App. Pub. No.
2002/0044634 A1) and 3GPP TS 23.140 V6.9.0 (2005-03), 3rd Generation
Appeal 2011-007914
Application 11/731,680

3
Partnership Project; Technical Specification Group Terminals; Multimedia
Messaging Service (MMS); Functional description; Stage 2 (Release 6), 29-
69, (2005) (hereinafter “3GPP”).
The Examiner rejected claims 3-6 and 12-15 under 35 U.S.C. § 103(a)
based upon the teachings of Rooke, 3GPP, and Aho (Int’l Pub. No. WO
01/33782 A1).

ANALYSIS
The Examiner finds Rooke discloses all of the claimed elements
except it “does not explicitly disclose requesting the MMS server to
retransmit the MMS notification message to another receiver and
transforming and transmitting the media files included in the MMS message
when the request to retransmit the MMS message is received.” (Ans. 5).
However, the Examiner finds 3GPP teaches this limitation (id.).
Appellant contends the Examiner is incorrect in finding the
combination of Rooke and 3GPP teach or suggest “requesting the MMS
server to retransmit the MMS notification message to another receiver ‘when
the MMS message includes media files that cannot be processed’” as recited
in independent claim 18 and similarly recited in claim 19 (emphasis omitted)
(App. Br. 6; see also Reply Br. 2). Appellant contends Rooke “merely
teaches that an MMS Forward Req may be replied to by the MS, but [is] not
based on whether the MMS message includes media files that cannot be
processed,” as claimed (App. Br. 6). We agree.
We also do not agree with the Examiner’s assertion 3GPP discloses
“requesting the MMS server to retransmit the MMS notification message to
another receiver and transforming and transmitting the media files included
Appeal 2011-007914
Application 11/731,680

4
in the MMS message when the request to transmit the MMS message is
received” (Ans. 5). We do not find this limitation is taught or suggested in
either 3GPP, page 31, section 7.1.3.1 or page 69, Table 8 (Sender Address)
as the Examiner asserts (Ans. 5). Additionally, the Examiner has not
responded to Appellant’s contention in the Appeal Brief regarding 3GPP
(App. Br. 6) in the Response to Argument portion of the Examiner’s Answer
(Ans. 8-9).
For these reasons, we conclude the Examiner erred in finding claims
18 and 19 obvious over the combination of Rooke and 3GPP and claims 2-6,
and 11-15, which depend therefrom (App. Br. 7-8).

DECISION
The Examiner’s decision rejecting claims 2-6, 11-15, 18, and 19 is
reversed.

REVERSED

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