10825972 (B.P.A.I. Jun. 13, 2012)

Ex Parte Allen et al

Board of Patent Appeals and InterferencesJun 13, 2012

10825972 (B.P.A.I. Jun. 13, 2012)

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. 10/825,972 04/16/2004 Andrew Michael Allen 9169-99319 (11834-US-PAT) 8222 75322 7590 06/13/2012 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street Suite 1600 Chicago, IL 60603 EXAMINER MANOHARAN, MUTHUSWAMY GANAPATHY ART UNIT PAPER NUMBER 2617 MAIL DATE DELIVERY MODE 06/13/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte MICHAEL ANDREW ALLEN, ADRIAN BUCKLEY, and PAUL MARCUS CARPENTER Appeal 2010-002427 Application 10/825,972 Technology Center 2600 ______________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and JASON V. MORGAN, Administrative Patent Judges. Per Curiam DECISION ON APPEAL Appeal 2010-02427 Application 10/825,972 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final rejection of claims 65 through 117. We affirm. INVENTION The invention is directed to method of creating a group of mobile stations for a communications session. Claim 65 is representative of the claimed invention under appeal and reproduced below: 65. A method of creating and managing a group of mobile stations for a communication session in a communications network, the communication session being one in which users of respective mobile stations communicate with one another, the method comprising: publishing information about one or more particular users of respective mobile stations to the communications network; and receiving at least one rule defining a member of the group, the at least one rule defining group members based on criteria comprising published information about respective users of mobile stations, the at least one rule being received in association with a group address; and dynamically populating the group with members, the populating comprising: determining mobile stations having respective users with published information on the communications network that matches the published information criteria of the at least one rule; and populating the group with the mobile stations having respective users with published information on the communications network that matches the published information criteria of the at least one rule. Appeal 2010-02427 Application 10/825,972 3 REJECTIONS AT ISSUE The Examiner has rejected claims 65, 68-71, 74, 75, 79 through 81, 83, 84, 86, 87, 94 through 114, and 116 under 35 U.S.C. § 102(e) as anticipated by Torvinen (US 2005/0113123 A1, May 26, 2005). Answer 3-8 and 15.1 The Examiner has rejected claims 66, 67, 72, and 73 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Amir (WO 01/97539 A2, Dec. 20, 2001). Answer 9-10. The Examiner has rejected claims 76 through 78 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Griffin (US 7,072,941 B2, Jul. 4, 2006). Answer 10-11. The Examiner has rejected claim 85 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Laiho (US 6,097,942, Aug. 1, 2000). Answer 11-12. The Examiner has rejected claim 86 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Chandhok (US 2004/0198376 A1, Oct. 7, 2004). Answer 12-13. The Examiner has rejected claims 89 through 92 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Leigh (US 5,535,426, Jul. 9, 1996). Answer 13-14. 1 Throughout this opinion we refer to the Examiner’s Answer mailed on August 26, 2009, Appeal Brief dated July 1, 2009, and Reply Brief dated October 14, 2009. Appeal 2010-02427 Application 10/825,972 4 The Examiner has rejected claim 93 under 35 U.S.C. § 103(a) as unpatentable over Torvinen in view of Requena (US 2002/0126701 A1, Sep. 12, 2002). Answer 14-15. ISSUES Rejection under 35 U.S.C. § 102(e) Appellants argue on pages 13 through 19 of the Brief that the Examiner’s rejection under 35 U.S.C. § 102(e) is in error. These arguments present us with three issues: 1) Did the Examiner error in finding that Torvinen teaches publishing information about one or more users of respective mobile stations? 2) Did the Examiner error in finding that Torvinen teaches receiving one rule defining a member of a group based upon the published criteria, the rule being in association with a group address? 3) Did the Examiner error in finding that Torvinen teaches dynamically populating the group with members? Rejection under 35 U.S.C. § 103(a) Appellants argue on pages 19 through 29 of the Brief that the Examiner’s rejection under 35 U.S.C. § 103(a) is in error. With respect to each of these rejections Appellants argue that the Examiner’s rejection does not state a proper rationale for combining the references, rather the Examiner has provided a mere conclusory statement. Thus, Appellants’ arguments directed to this rejection present us with the issue did the Examiner provide proper rationale for combining the references. Appeal 2010-02427 Application 10/825,972 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. With respect to the first issue we additionally note that Appellants’ arguments directed to “publishing” information appears to be applying a narrower interpretation of the term than used by the Examiner. We note that Appellants’ Specification identifies that information may be “published on behalf of the station to one or more servers” Specification para. 10. Similarly, paragraphs 48 and 54 of Appellants’ Specification discuss publishing in the context of information coming from either the network or the mobile device and being provided to only one other device. Thus Appellants’ arguments which assert error in the Examiner’s findings are not persuasive as the claim term publishing is broad enough to encompass Torvinen’s teaching that the location information is made available (see e.g. para. 62 which discusses the mobile station communicating location information to the location server 404, and para. 63 which discusses the management server being notifying mobile terminals entering a region of interest). In as much as Appellants’ argument, Brief 15-16, asserts that Torvinen’s location information is different from the claimed published information as recited in representative claim 65, we are not persuaded as the claim does not recite the differences nor are the differences functionally Appeal 2010-02427 Application 10/825,972 6 related to the method.2 Further, in as much as Appellants’ statements on page 30 of the Brief, are arguments for the separate patentability of claim 104, we are not persuaded because, as discussed above, para. 63 of Torvinen discusses the mobile station communicating (transmitting) the location information. Accordingly, Appellants’ argument directed to the first issue have not persuaded us of error in the Examiner’s rejection under 35 U.S.C. § 102(e). With respect to the second issue, we concur with the Examiner that the groups discussed by Torvinen, in paragraph 15 and 16, are associated with a group address. Accordingly, the arguments directed to the second issue have not persuaded us of error in the Examiner’s rejection under 35 U.S.C. § 102(e). With respect to the third issue, we note that Appellants’ arguments directed to the limitation of “dynamically” forming the group appear to be applying a narrower interpretation of the term than applied by the Examiner. Appellants’ Specification discusses “dynamic populating groups” as defining groups at use time by a user. Specification para. 4-6. Torvinen teaches that a user of a mobile device sets up the groups rules, and based upon these rules the group is created. Torvinen para. 13. The claim does not recite a limitation that precludes the invites to the dynamically formed group from performing additional actions to join in the communications with the group. Accordingly, Appellants’ arguments directed to the third issue have 2 The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Footnote continued on next page. Appeal 2010-02427 Application 10/825,972 7 not persuaded us of error in the Examiner’s rejection under 35 U.S.C. § 102(e). Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 102(e). Rejection under 35 U.S.C. § 103(a) We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ conclusions. The Examiner’s response to Appellants’ arguments, on Pages 19 through 26 of the Answer, provides a comprehensive response to these arguments. We have reviewed this response and consider the Examiner to have provided a reasoned rationale to support the conclusion of obviousness. Thus, we are not persuaded of error in the Examiner’s obviousness rejections and concur with the conclusion reached by the Examiner. Accordingly, we sustain the Examiner’s rejections under 35 U.S.C. § 103(a). CONCLUSION The Examiner has not erred in rejecting 65 through 117 under 35 U.S.C. § 102 and 35 U.S.C. § 103. DECISION The Examiner’s rejection of claims 65 through 117 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). Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our Footnote continued on next page. Appeal 2010-02427 Application 10/825,972 8 AFFIRMED ke decision in Ex parte Curry, 2005-0509 (BPAI 2005), 84 USPQ2d 1272.