Ex Parte Adams et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11158104 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NEIL P. ADAMS, HERBERT A. LITTLE,
MICHAEL K. BROWN, and MICHAEL S. BROWN
____________

Appeal 2010-000953
Application 11/158,104
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11 and 13-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
Appellants’ claimed invention is a system and method for handling
message receipt notification such that a portion of a sender’s message is
displayed to a wireless device user before a signed receipt is provided to the
sender (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for operation upon a wireless mobile device to
handle a message notification for a message, comprising:

receiving a portion of the message by the wireless mobile
device over a wireless communications network;

wherein the message is sent from a sender and is
intended to be received by at least one recipient;

processing the received message portion so that at least
the portion of the sender’s message is displayed to a user of the
wireless mobile device before a signed receipt is provided to the
sender;

wherein the signed receipt is used at least in part to
confirm whether the intended recipient had received the
sender’s message;

wherein the received portion of the sender’s message is
displayed to the user although the entire message has not been
received by the wireless mobile device.

REJECTION
The Examiner rejected claims 1-12 and 14-21 under 35 U.S.C.
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§ 103(a) based upon the teachings of Simons (US Patent No. 6,323,754 B1,
November 27, 2001), Liu (US Patent Application No. 2002/0143710 A1,
October 3, 2002), and Rooke (US Patent No. 6,678,361 B2, Jan. 13, 2004).1
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) based upon
the teachings of Simons, Liu, Rooke, and Dominguez (US Patent
Application No. 2003/0200184 A1, Oct. 23, 2003).

ANALYSIS
The Examiner finds Simons suggests all the features of Appellants’
claim 1 except for signing a receipt (Ans. 3). The Examiner then finds Liu
teaches a signed receipt; however, neither Simons nor Liu teach or suggest
“receiving a portion of the message wherein the received portion of the
sender’s message is displayed to the user although the entire message has
not been received by the wireless mobile device” (Ans. 4). The Examiner
then finds Rooke teaches receiving and displaying a received portion of a
sender’s message even though the entire message has not been received.
Thus, the Examiner asserts it would be obvious to modify Simons in view of
Liu to include a signed receipt for security purposes and to include receiving
and displaying a portion of a message even though the entire message has
not been received. (Ans. 4.)
Appellants contend Simons teaches decoding operations occur before
displaying a message (App. Br. 10). Appellants also do not argue Rooke
discloses handling a partial message, only that Rooke does not teach
receiving an entire message. That is, Appellants assert Rooke would render

1 Claim 12 was cancelled by the Amendment mailed January 8, 2007, and
thus is not part of this appeal.
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claim 1 inoperable as the signed receipt would not be sent without receiving
the entire message. It is known in the art the entire message must be received
to generate the signed receipt; this cannot happen in Rooke because the
entire message cannot be received. Additionally, Liu also requires the entire
message be supplied before a signed receipt is generated and sent. (App. Br.
12)
Appellants’ arguments are not commensurate in scope with the
claims. Claim 1 recites processing a received message portion so at least the
portion of the message is displayed before a signed receipt is provided to the
sender, the signed receipt is used to confirm the intended recipient has
received the sender’s message, and the received portion of the message is
displayed although the entire message has not been received. Claim 1
includes partial handling of the message, but does not recite what happens to
the rest of the message that is not received. That is, claim 1 does not
preclude the message processing taught by Rooke. Further, Appellants
acknowledge that in the prior art an entire message must be received to
generate the signed receipt (see Liu, showing it was known to use a signed
receipt to confirm a recipient has received a sender’s message (Ans. 16;
App. Br. 12), which is what Appellants’ claims recite. The claims do not
recite the signed receipt is sent after the portion of the sender’s message is
displayed, only that the signed receipt confirms the intended recipient
received the sender’s message, not a portion of the message.
We find Rooke does disclose a portion of a message is displayed, as
recited in claim 1. Appellants’ comments about Simons are also not relevant
to the claim language. Thus, we find claim 1 obvious over Simons, Liu, and
Rooke.
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Appellants argue claim 3 is not obvious over Simons, Liu, and Rooke
as Liu does not teach verifying the message as claimed (App. Br. 14).
However, as found by the Examiner, Liu recites certifying receipt of a
message and verifying a signed receipt before transferring the verified
receipt to the sender (Ans. 21-22; Liu, para. [0006]). Thus, we conclude
claim 3 would have been obvious over Simons, Liu, and Rooke.
Appellants argue claim 13 is not obvious over Simons, Liu, Rooke,
and Dominguez as Dominguez does not disclose prompting a user for a
password and using the password to generate a digitally signed receipt (App.
Br. 15). However, Dominguez’s abstract teaches requesting a password
from the cardholder, verifying the password, and notifying a merchant the
cardholder’s authenticity has been verified (Ans. 22). Thus, Dominguez
teaches the features of claim 13, as found by the Examiner.
Claim 19 recites substantially the same limitations as those in claim 1
and Appellants provide substantially the same arguments (App. Br. 17-19).
Thus, for the reasons set forth above with respect to claim 1, we conclude
claim 19 would have been obvious over Simons, Liu, and Rooke.
Claim 20 contains substantially the same limitations as those in claims
1 and 19. Appellants also provide the same arguments as those set forth
with respect to claim 1 (App. Br. 21-23). Thus, for the reasons set forth
above with respect to claim 1, we conclude claim 20 would have been
obvious over Simons, Liu, and Rooke.
Although Appellants did not argue claim 21, this claim recites the
features argued, but not found, in claim 1. That is, claim 21 recites “wherein
the signed receipt notification is provided to the sender although the entire
message has not been received” (emphasis added). We find none of the
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cited references teach this feature. Thus, we conclude claim 21 is not
obvious over Simons, Liu, and Rooke.

DECISION
The Examiner’s decision rejecting claims 1-11 and 13-20 is affirmed.
The Examiner’s decision rejecting claim 21 is reversed.
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)(2010).

AFFIRMED-IN-PART

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