Ex Parte 7274926 et al

Patent Trial and Appeal Board

Jul 23, 2014

95001210 (P.T.A.B. Jul. 23, 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.
95/001,210 08/13/2009 7274926 60851-381252 1276
23370 7590 07/24/2014
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/24/2014 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
____________

HTC CORP.
Third Party Requester and Appellant

v.

IPCOM GMBH
Patent Owner and Respondent
____________

Appeal 2013-006024
Reexamination Control 95/001,210
Technology Center 3900
Patent 7,274,926 B1
____________

Before JOHN A. JEFFERY, KEVIN F. TURNER, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON EXAMINER’S DETERMINATION
UNDER 37 C.F.R. § 41.77(d)

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This is a decision under 37 C.F.R. § 41.77 (f) on the Examiner’s
determination under 37 C.F.R § 41.77(d) confirming the patentability of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34. We have
jurisdiction under 35 U.S.C. §§ 6(b), 134, and 315. We affirm.

STATEMENT OF THE CASE
In a prior Decision on Appeal, entered April 27, 2012, another panel
of this Board reversed the Examiner’s refusal to reject claims 1, 5, 6, 12, 13,
21, and 27-36 under 35 U.S.C. § 103(a) as proposed and appealed by
Requester HTC Corp. These rejections were entered as a new ground of
rejection pursuant to our authority under 37 C.P.R. § 41.77(b), as follows:
1. Claims 1, 5, 6, 12, 13, 21, and 27-36 are rejected under 35 U.S.C.
§ 103(a) as obvious over MMS0.l.0 (TSG-SA Working Group 1, 3G TS
22.140 version 0.1.0, Multimedia Messaging Service (July 1999)).
2. Claims 1, 5, 6, 12, 13, 21, and 27-36 are rejected under 35 U.S.C.
§ 103(a) as obvious over X.430 (Recommendation X.430, Message
Handling Systems: Access Protocol for Teletex Terminals, CCITT, Malaga-
Torremolinos (1984)) and MMS0.l.0.
3. Claims 1, 5, 6, 12, 13, 21, and 27-36 are rejected under 35 U.S.C.
§ 103(a) as obvious over LaPorta (EP 0 822 728 A2; Apr. 2, 1998) and
MMS0.l.0.
4. Claims 1, 5, 6, 12, 13, 21, and, 27-36 are rejected under 35
U.S.C. § 103(a) as obvious over Rossmann (US 5,809,415; Sept. 15, 1998)
and MMS0.1.0.
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5. Claims 1, 5, 6, 12, 13, 21, and 27-36 are rejected under 35 U.S.C.
§ 103(a) as obvious over Bakshi (US 6,311,215 B1; Oct. 30, 2001) and
MMS0.l.0.
6. Claims 1, 5, 6, 12, 13, 21, and 27-36 are rejected under 35 U.S.C.
§ 103(a) as obvious over Nokia (WO 98/47270; Oct. 22, 1998) and
MMS0.l.0.
Patent Owner IPCom GmbH submitted a Request to reopen
prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1), dated
April 27, 2012, amending claims 1, 5, 6, 12, 13, and 21, and adding new
claims 27-34. In response to Patent Owner’s Request, Requester HTC
Corporation filed written comments to Patent Owner IPCom GmbH’s
Request, dated June 28, 2013 (“Requester § 41.77(c) Comments”).
The Examiner determined that amended claims 1, 5, 6, 12, 13, and
21, and new claims 27-34 were patentable and issued a Determination under
37 C.F.R. § 41.77(d), dated August 16, 2012 (“Determination”).
Requester contends that the Examiner’s Determination not
maintaining these rejections is erroneous for various reasons, and has
submitted Requester Comments on the Examiner’s Determination, dated
September 14, 2012 (“Requester § 41.77(e) Comments”). Patent Owner
contends that the Examiner’s Determination, in which the claim rejections
were not maintained, was correct and has summited Patent Owner Reply,
dated October 15, 2012.
Claim 1 is exemplary, with disputed limitations in italics and
underlining and bracketing to illustrate claim amendments:

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1. A method for transmitting messages between at least one
main station and a mobile terminal via a telecommunications network,
comprising:
providing a matching device between the at least one main
station and the mobile terminal, the mobile terminal connected to the
matching device via the telecommunications network, wherein the
telecommunications network comprises a mobile radio network;
controlling a message exchange between the at least one main
station and the mobile terminal using the matching device, the
message exchange being controlled in dependence upon at least one
input from [one of: i)] the mobile terminal[, and ii) the at least one
main station], wherein the [entire message is transmitted in a
transmission format that is determined in dependence upon a] at least
one input specifies a preselected transmission format and a
preselected data type [request made] requested by [one of] the
terminal [and the at least one main station], the preselected
transmission format corresponding to a form of a message according
to a message transfer protocol, and wherein the at least one input
further specifies whether messages of certain types are to be
transmitted to the mobile terminal, stored in a storage device, or
forwarded to another system; [and]
matching, by the matching device, [at least one characteristic
for transmission of a message to the at least one input,] (i) a
transmission format of the message to the preselected transmission
format, wherein the entirety of the message is transmitted in the
preselected transmission format, and (ii) [wherein the at least one
characteristic is at least one of] a data type of the message to the
preselected data type[, a data format and a transmission mode]; and
determining, by the matching device, based on the at least one
input, whether the message is to be transmitted to the mobile terminal,
stored in a storage device, or forwarded to another system.

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ANALYSIS
Claim Interpretation
The Examiner found that Patent Owner’s claim amendment, “[t]he
‘form of the message according to a message transfer protocol’ is distinct
from the unclaimed transmission mode.” (Determination 3.) The Examiner
interpreted the limitation “the preselected transmission format corresponding
to a form of a message according to a message transfer protocol” as “the
preselected transmission format matches or is equivalent to the form of the
message according to a message transfer protocol” (Determination 5)
because “[w]hen the verb correspond is followed by the word ‘to’ or ‘with,’
correspond means to compare closely to or match or to be equivalent in
function” (Determination 4). We agree with the Examiner’s determination.
The ’926 patent discloses that “[t]he functions to be performed by
MMS relay 15 may be subdivided into several groups.” (Col. 7, ll. 35-36.)
In particular, the ’926 patent discloses that “[a] first group of such functions
may make possible the integration of different services or different MMS
[multimedia messaging system] servers by matching device 15” (col. 7,
ll. 36-38), such that “[t]he MMS servers of different services, such as e-mail,
voice mail or fax send their messages via MMS relay 15, . . . converts these
messages into the same form, to terminal 5” (col. 7, ll. 37-41). Furthermore,
the “MM transfer protocol (multimedia messaging) [is] an upper protocol
layer . . . which, for example, may be configured as SMTP or ESMTP.”
(Col. 6, ll. 34-36.) The ’926 patent further discloses “[a] third group of
functions relates to the transmission mode to be set for transmitting
messages from matching device 15 to terminal 5.” (Col. 7, ll. 62-64.)
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Claim 1 has been amended to recite “the preselected transmission
format corresponding to a form of a message according to a message
transfer protocol” (emphasis added). One relevant plain meaning of
“corresponding” is “having or participating in the same relationship.”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 260 (10th ed. 1999).
Accordingly, claim 1 requires the claimed “preselected transmission format”
to have the same relationship with “a form . . . according to a message
transfer protocol,” rather than the transmission mode, because the ’926
patent discloses that the first group of functions (i.e., Simple Mail Transfer
Protocol configuration) are distinct from the third group of functions (i.e.,
transmission mode).
Requester argues that “the claim language as amended does not
require that the ‘preselected transmission format’ be, equate to, specify,
define, or even influence, the ‘form of a message according to a message
transfer protocol,’ under the broadest reasonable interpretation,” only that “it
only requires that there be some identifiable relationship between the
‘preselected transmission format’ and the form of the message.” (Requester
§ 41.77(c) Comments 4.) Accordingly, Requester argues that “the term
‘transmission format’ (or ‘preselected transmission format’) can still
encompass at least transmission mode under the broadest reasonable
interpretation, despite the amendment and Owner’s assertion to the
contrary.” (Id.) Contrary to Requester’s arguments, as discussed
previously, because amended claim 1 requires “preselected transmission
format” to have the same relationship with the “message according to a
message transfer protocol” and the ’926 patent discloses that the first group
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of functions (i.e., SMTP configuration) are distinct from the third group of
functions (i.e., transmission mode), Patent Owner’s amended claim 1 does
not encompass a transmission mode.
Furthermore, Requester states that “[t]he Examiner may be
assuming that the phrase ‘according to a message transfer protocol’ modifies
the word ‘form’ in the limitation, ‘the preselected transmission format
corresponding to a form of a message according to message transfer
protocol.’” Accordingly, Requester argues, “a simpler, broader, reasonable
interpretation is that the phrase ‘according to a message transfer protocol’
simply modifies the word ‘message.’” (Requester § 41.77(e) Comments 6.)
However, this interpretation proposed by Requester would result in an
awkward and unnatural reading of the claim 1, because such an
interpretation results in a redundancy for the term “message” (i.e., “a
message according to a message transfer protocol”).
Accordingly, we agree with the Examiner that amended claim 1
does not encompass a transmission mode.

§ 103 Rejection – MMS0.1.0
The Examiner found that MMS0.l.0 would not have rendered
obvious independent claim 1 as amended, including the limitation
“transmission format corresponding to a form of a message according to a
message transfer protocol.” (Determination 8.) In particular, the Examiner
found that “MMS Spec. 0.1.0 fails to disclose matching the transmission
format of the message to the preselected transmission format (corresponding
to a form of a message according to a message transfer protocol)” and
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“interpreting ‘preselected transmission format’ (as explicitly limited in the
amendment) to encompass transmission mode, data format and data type . . .
[is] incorrect.” (Id.) We agree with the Examiner’s determination.
MMS0.l.0 relates to a Multimedia Messaging Service (MMS) that
“enables a unified application which integrates the composition, storage,
access, and delivery of different kinds of media, e.g. text, voice, image or
video in combination with additional mobile requirements.” (§ 1.)
MMS0.l.0 explains that multimedia message delivery includes both a “push
mechanism” and a “pull mechanism.” (§ 5.2.) Thus, because the
multimedia message delivery of MMS0.l.0 is silent with respect to a
message transfer protocol, MMS0.l.0 does not teach the limitation
“transmission format corresponding to a form of a message according to a
message transfer protocol,” as recited in claim 1.
Requester argues that “[p]ush and pull are examples of transmission
mode, which is one permissible interpretation of ‘transmission format . . . ’”
and “Owner’s amendment does not exclude transmission mode from the
term ‘transmission format.’” (Requester § 41.77(c) Comments 8; see also
Requester § 41.77(e) Comments 12-13.) However, as discussed previously,
under the broadest reasonable interpretation consistent with the ’926 patent,
the claimed “transmission format” does not encompass the unclaimed
transmission mode.
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over MMS0.l.0 should not be maintained.

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§ 103 Rejection – X.430 and MMS0.1.0
The Examiner found that the combination of X.430 and MMS0.l.0
would not have rendered obvious independent claim 1 as amended,
including the limitation “transmission format corresponding to a form of a
message according to a message transfer protocol.” (Determination 9.) In
particular, the Examiner found that “X.430 discusses retrieval and auto-
output options . . . but these go to transmission mode, which . . . is not
encompassed by transmission format as presently amended.” (Id.) We
agree with the Examiner’s determination.
X.430 relates to a Teletex Access Unit (TTXAU) that provides a
Teletex terminal with access to a Message Transfer System (MTS). (§ 2.1.)
The Teletex terminal registers with the TTXAU, including control
information (e.g., DS retrieval mode or DS auto-output mode). (§ 2.2.7.)
X.430 explains that a “Retrieval” mode allows for messages to be held until
such messages are retrieved by the terminal and an “Auto-output” mode is
where the TTXAU tries to output the messages once they have been
received. (P. 237, n.1.) Thus, because the Teletex registration with TTXAU
of X.430 is silent with respect to a message transfer protocol, X.430 does not
teach the limitation “transmission format corresponding to a form of a
message according to a message transfer protocol,” as recited in claim 1.
Requester argues that “X.430 . . . discloses the transmission mode
(‘output mode’), which Owner’s amendment fails to clearly exclude from
the scope of the term ‘transmission format.’” (Requester § 41.77(c)
Comments 10; see also Requester § 41.77(e) Comments 14.) However, as
discussed previously, under the broadest reasonable interpretation consistent
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with the ’926 patent, the claimed “transmission format” does not encompass
the unclaimed transmission mode.
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over X.430 and MMS0.l.0 should not be
maintained.

§ 103 Rejection – LaPorta and MMS0.1.0
The Examiner found that the combination of LaPorta and MMS0.l.0
would not have rendered obvious independent claim 1 as amended,
including the limitation “transmission format corresponding to a form of a
message according to a message transfer protocol.” (Determination 9-10.)
In particular, the Examiner found that “[n]owhere does LaPorta teach that
the modifier and alias affect the form of a message according to a message
transfer protocol.” (Id. at 10.) We agree with the Examiner’s determination.
LaPorta relates to a two-way wireless messaging system
“with a mobile switching center for routing messages to base stations, a
home location register for storing profiles and a home location register for
storing profiles and location information, and a messaging center.”
(Abstract.) Figure 2 of LaPorta illustrates a two-way wireless messaging
system network 14 that includes a user agent 12 (col. 6, ll. 1-2), such that
messages are “forwarded to a desired destination such as a data network 26,
public switched telephone network 16 or a cellular network 24 in response to
an originating message code that is received from a two-way messaging
device 11” (col. 6, ll. 15-20). LaPorta explains that the two-way wireless
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messaging system can support multicasting and a message can be forwarded
to multiple destinations, such that “address alias contained in a coded
message can correspond to a single address, a group address or any
combination of the two.” (Col. 3, ll. 20-25.)
LaPorta also explains:
In accordance with one aspect of the present invention, a
wireless messaging device can originate new messages or
reply to previously received messages along a first
communication channel (uplink), and receive messages along
a second communication channel (downlink). Each such
message is coded in a predetermined manner and includes,
among other things, a message number that uniquely
identifies a message stored both locally at the device and at
the user agent, a modifier representing the customization to be
applied to the message, and personalized address aliases.
(Col. 2, ll. 33-43.) LaPorta also provides an example of “Dan, Mary and
Paul each receive the message in a different format, which could have been
proposed by Thomas during message origination or specified as part of the
filtering/forwarding criteria of the respective user agents of the recipients.”
(Col. 7, ll. 28-32.) Thus, because LaPorta is silent with respect to a message
transfer protocol for customization of a message or message format, LaPorta
does not teach the limitation “transmission format corresponding to a form
of a message according to a message transfer protocol,” as recited in claim 1.
First, Requester argues that the explanation in LaPorta that “[e]ach
such message . . . includes . . . a modifier representing the customization to
be applied to the message, and personalized address aliases” (col. 2, ll. 38-
43) “corresponds to a form of the message according to a message transfer
protocol, per Owner’s claims.” (Requester § 41.77(c) Comments 12; see
also Requester § 41.77(e) Comments 16.) However, Requester has provided
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insufficient evidence or arguments to support this position, particularly when
LaPorta is silent with respect to a message transfer protocol.
Second, Requester argues that “the transmission format in LaPorta
can also be preselected based on an input from the mobile terminal” in
reference to the explanation in column 7, lines 28-32 of LaPorta that “Dan,
Mary and Paul each receive the message in a different format, which could
have been proposed by Thomas during message origination or specified as
part of the filtering/forwarding criteria of the respective user agents of the
recipients.’” (Requester § 41.77(c) Comments 12; see also Requester
§ 41.77(e) Comments 16.) Again, Requester has provided insufficient
evidence or arguments to support this position, particularly when LaPorta is
silent with respect to a message transfer protocol.
Last, Requester argues that “Owner’s amendment fails to clearly
exclude transmission mode from the scope of the term ‘transmission format
. . .’” and “LaPorta discloses the use of multicasting as a transmission mode,
which is also preselected based on input from the mobile terminal and
matched for a message.” (Requester § 41.77(c) Comments 12; see also
Requester § 41.77(e) Comments 16.) However, as discussed previously,
under the broadest reasonable interpretation consistent with the ’926 patent,
the claimed “transmission format” does not encompass the unclaimed
transmission format.
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over LaPorta and MMS0.l.0 should not be
maintained.
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§ 103 Rejection – Rossmann and MMS0.1.0
The Examiner found that the combination of Rossmann and
MMS0.l.0 would not have rendered obvious independent claim 1 as
amended, including the limitation “controlling a message exchange . . .
transmission format corresponding to a form of a message according to a
message transfer protocol.” (Determination 11-12.) In particular, the
Examiner found that “[n]owhere . . . does Rossman teach preselected MIME
content types . . . change the form of a message according to a message
transfer protocol, such as SMTP or SMS.” (Id. at 11.) We agree with the
Examiner’s determination.
Rossmann relates to “two-way data communication devices
including a cellular telephone, a two-way pager, and a telephone that permit
a user to interface with and interact with a server on a computer network.”
(Col. 1, ll. 27-31.) Figure 7 of Rossmann illustrates a cellular telephone 700
having a client module 702 and a display 705, connected to a server
computer 743 having an HTTP server 749. (Col. 21, ll. 3-15.) Rossmann
explains that “[i]nstructions in the telephone interaction description language
and in the terminal interaction language are grouped into a deck and a card”
such that “[a] card includes the information, i.e., a set of telephone
interaction description language, required to generate a screen.” (Col. 22,
ll. 4-9.) Rossmann also explains that the “client module 702 . . . could also
generate appropriate HTTP request fields to pass information to server 749
about the capabilities of client module 702” such that “[t]he request fields
can include information such as lists of the MIME [Multipurpose Internet
Mail Extensions] content-types acceptable to the client; [and] lists of data
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encoding types acceptable to the client.” (Col. 25, ll. 53-58.) Rossmann
further explains that “[u]pon completion of servicing the request, HTTP
server 749 converts the PIDL [telephone interaction description language]
deck to a TIL [terminal interaction language] deck and returns the TIL deck
to client module 702.” (Col. 27, ll. 7-11.) Accordingly, because the client
module 702 of Rossmann interacts with the server 749 via only MIME,
rather than multiple alterative message transfer protocols, Rossmann does
not teach the limitation “controlling a message exchange . . . transmission
format corresponding to a form of a message according to a message transfer
protocol.”
Requester argues “Rossmann discloses . . . that the client
module 702 in the mobile device uses HTTP request fields to pass
information to the server regarding MIME content types acceptable to the
client as well as encryption scheme information . . . which can be considered
‘transmission format . . . .’” (Requester § 41.77(c) Comments 13; see also
Requester § 41.77(e) Comments 17.) However, as discussed previously,
because the client module 702 of Rossmann interacts with the server 749 via
only MIME, Rossmann does not teach the limitation “controlling a message
exchange . . . transmission format corresponding to a form of a message
according to a message transfer protocol.”
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over Rossmann and MMS0.1.0 should not be
maintained.

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§ 103 Rejection – Bakshi and MMS0.1.0
The Examiner found that the combination of Bakshi and MMS0.l.0
would not have rendered obvious independent claim 1 as amended,
including the limitation “transmission format corresponding to a form of a
message according to a message transfer protocol.” (Determination 12.) In
particular, the Examiner found that “[t]ranscoding the content of a message
differs distinctly from preselecting the transmission format of said message
according to a message transfer protocol, such as SMS or SMTP.” (Id.) We
agree with the Examiner’s determination.
Bakshi relates to “[a] system for determining whether an entity that
issued a message is pre-configured to receive a response according to an
enhanced communications protocol.” (Abstract.) Figure 2 of Bakshi
illustrates “a non-enabled network client 12 [that] communicates with an
external network 18 through a transcoding server 34.” (Col. 3, ll. 54-56.)
Bakshi provides examples of transcoding, including data compression,
image scaling, and dynamic removal of predetermined content. (Col. 4,
ll. 5-7.) Thus, because the transcoding of Bakshi is silent with respect to a
message transfer protocol, Bakshi does not teach the limitation
“transmission format corresponding to a form of a message according to a
message transfer protocol,” as recited in claim 1.
Requester argues that “[b]ased on the Board’s factual finding,
Bakshi clearly discloses a ‘transmission format corresponding to a form of a
message according to a message transfer protocol,’ as recited in Owner’s
amended claims” and “the Board explicitly found that ‘transmission format’
can refer to the content of a message. (Requester § 41.77(c) Comments 14-
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15; see also Requester § 41.77(e) Comments 19.) However, Requester’s
argument does not specifically address Patent Owner’s amended claim 1,
which expressly recites “transmission format corresponding to a form of a
message according to a message transfer protocol.” As discussed
previously, the transcoding of Bakshi is silent with respect to a message
transfer protocol.
Requester further argues that “data compression, image scaling and
removal of predetermined content, as disclosed in Bakshi, clearly all
correspond to a form of a message according to a message transfer protocol
under the broadest reasonable interpretation, and therefore, are reasonably
interpreted as ‘transmission formats.’” (Requester § 41.77(c) Comments 15;
see also Requester § 41.77(e) Comments 19.) However, Requester has
provided insufficient evidence or arguments to support this position,
particularly when Bakshi is silent with respect to a message transfer
protocol.
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over Bakshi and MMS0.l.0 should not be
maintained.

§ 103 Rejection – Nokia and MMS0.1.0
The Examiner found that the combination of Nokia and MMS0.l.0
would not have rendered obvious independent claim 1 as amended,
including the limitation “transmission format corresponding to a form of a
message according to a message transfer protocol.” (Determination 12-13.)
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In particular, the Examiner found that “[m]anipulating the content of a
message differs distinctly from preselecting the transmission format of said
message according to a message transfer protocol, such as SMS or SMTP.”
(Id. at 12.) We agree with the Examiner’s determination.
Nokia relates to an information server (IS) of a telecommunications
system, such that “server (IS) is . . . arranged to receive commands from the
terminals (1) and convert them into a format compatible with at least one of
the protocols of the other telecommunications system (3).” (Abstract.)
Nokia explains that “the short message service center (or another apparatus)
separates or filters only the relevant part of the www page and sends it to the
mobile station in a short message” (p. 12, ll. 16-18) and that “[t]he part of
the www page containing relevant information can be identified using a
predetermined fixed criterion which is common to all subscribers or based
on a criterion received from the mobile station, such as a keyword” (p. 16,
ll. 5-8). Thus, because the conversion of Nokia, from the www page content
to the short message, is silent with respect to a message transfer protocol,
Nokia does not teach the limitation “transmission format corresponding to a
form of a message according to a message transfer protocol,” as recited in
claim 1.
Requester argues that “the Board explicitly found that ‘transmission
format’ can refer to the content of a message.” (Requester § 41.77(c)
Comments 15; see also Requester § 41.77(e) Comments 20.) However,
Requester’s argument does not specifically address Patent Owner’s amended
claim 1, which expressly recites “transmission format corresponding to a
form of a message according to a message transfer protocol.” As discussed
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previously, because the conversion of Nokia, from the www page content to
the short message, is silent with respect to a message transfer protocol,
Nokia does not teach the limitation “transmission format corresponding to a
form of a message according to a message transfer protocol,” as recited in
claim 1.
Accordingly, we agree with the Examiner that the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) as obvious over Nokia and MMS0.1.0 should not be
maintained.

Claim Broadening
The Examiner found that the amendment to claim 1, in which the
original limitation “the entire message is transmitted in a transmission
format that is determined in dependence upon a transmission format request”
was amended to recite “a preselected transmission format and a preselected
data type requested by the terminal” does not broaden the scope.
(Determination 13.) We agree with the Examiner’s determination.
Claim 1, as amended, recites “at least one input specifies a
preselected transmission format and a preselected data type requested by
the terminal” (emphasis added). Because the claim language “at least one
input specifies . . . requested by the terminal” immediately surrounds the
claim language “specifies a preselected transmission format and a
preselected data type,” an ordinary reading of claim 1 is that “at least one
input specifies . . . requested by the terminal” modifies both “a preselected
transmission format” and “a preselected data type.”
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Patent 7,274,926 B1

19
First, Requester argues that “[c]laim 1 as amended does recite ‘a
preselected transmission format and a preselected data type requested by the
terminal’ (emphasis added), however, it is not clear that the phrase
‘requested by the terminal’ modifies both ‘preselected transmission format’
and ‘preselected data type.’” (Requester’s § 41.77(c) Comments 16-17; see
also Requester § 41.77(e) Comments 20-21.) However, as discussed
previously, when the claim language “preselected transmission format and a
preselected data type” is read in the context of the entire surrounding
language (i.e., “at least one input specifies . . . requested by the terminal”),
an ordinary reading of claim 1 is that “at least one input specifies . . .
requested by the terminal” modifies both “a preselected transmission
format” and “a preselected data type.” Requester’s interpretation of claim 1
is improper, because such an interpretation focuses only on the claim
language “requested by the terminal,” rather than the entire surrounding
claim language.
Second, Requester argues that “[t]he absence of ‘request’
unambiguously modifying ‘transmission format’ has significant implications
for the claim scope” because “the term ‘input’ (as in ‘at least one input from
the mobile terminal’) can encompass more than just a ‘request’ under the
broadest reasonable interpretation.” (Requester’s § 41.77(c) Comments 17;
see also Requester § 41.77(e) Comments 21.) However, because the phrase
“at least one” is immediately adjacent to the term “input,” an ordinary
reading of claim 1 is that “at least one” modifies “input.”
Last, Requester argues that “the phrase ‘at least one input specifying
a preselected transmission format’ might be argued to encompass a scenario
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Reexamination Control 95/001,210
Patent 7,274,926 B1

20
in which multiple messages sent from the mobile terminal,” however, “the
term ‘transmission format request’ (now deleted) clearly implied that a
single message from the mobile terminal specify the transmission format.”
(Requester’s § 41.77(c) Comments 17; see also Requester § 41.77(e)
Comments 21.) Again, because the phrase “at least one” is immediately
adjacent to the term “input,” an ordinary reading of claim 1 is that “at least
one” modifies “input.”
Accordingly, we agree with the Examiner that Patent Owner’s
amendments to claims 1, 13, and 21 do not enlarge the scope of the claims of
the patent being reexamined.

DECISION
We affirm the Examiner’s decision not to maintain the rejection of
amended claims 1, 5, 6, 12, 13, and 21, and new claims 27-34 under 35
U.S.C. § 103(a) over various combinations of MMS0.1.0, X.430, LaPorta,
Rossmann, Bakshi, and Nokia.
We affirm the Examiner’s decision not to reject amended claims 1, 5,
6, 12, 13, and 21, and new claims 27-34 under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
This is final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

AFFIRMED
Appeal 2013-006024
Reexamination Control 95/001,210
Patent 7,274,926 B1

21
Patent Owner:

John S. Pratt, Esq.
KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street
Atlanta, GA 30309

Third Party Requester:

PERKINS COIE LLP
PATENT –SEA
P.O. Box 1247
Seattle, WA 98111-1247