Ex Parte Burgard et al

Patent Trial and Appeal Board

Jun 19, 2018

10203429 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/203,429 12/02/2002 Thomas Burgard
86528 7590 06/21/2018
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03869.105728 8139
EXAMINER
STRANGE, AARON N
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
06/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BURGARD, YORK HOCHHEIM,
and AXEL KRETEN
Appeal2017-001047
Application 10/203,429
Technology Center 2400
Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and
NORMAN H. BEAMER, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5, 6, 32-57, and 73-92, which are all the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. App. Br. 2.
2 Claims 1--4, 7-31, and 58-72 have been canceled previously.
Appeal2017-001047
Application 10/203,429
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to a system and method for providing
subscriber-specific information to a subscriber. See Spec. 2:32-3 :5. Claim
5 is illustrative and reads as follows:
5. A server device, embodied at least in hardware, for
providing subscriber-specific information for a plurality of
subscribers in at least one communications network, the server
device configured to:
collect subscriber-specific status information relating to a
status of mailbox messages from a plurality of service-specific
mailbox servers, the subscriber-specific status information
relating to mailbox messages which are stored for the plurality
of subscribers in the plurality of mailbox servers,
register the activity of a particular subscriber of the
plurality of subscribers on at least one communication terminal
in the at least one communications network, and
transmit, automatically in response to identifying the
particular communication terminal at which the particular
subscriber is active, the collected subscriber-specific status
information for the particular subscriber via at least one
communications network to the identified particular
communications terminal at which the particular subscriber is
currently active.
The Examiner's Rejection
Claims 5, 6, 32-35, 37--45, 48-57, and 90 stand rejected under
35 U.S.C. §I03(a) as unpatentable over Horiuchi (US 6,272,530 Bl; Aug. 7,
2001) and Theimer (US 5,812,865; Sept. 22, 1998). 3 See Final Act. 4--10.
3 Appellants' present no separate arguments against the rejection of the
remaining claims over Horiuchi and Theimer in combination with the other
prior art of record. App. Br. 8. Because the separate rejections of the
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Prior Board's Decision on Appeal
In the Decision on Appeal dated January 2, 2015 ("Decision"), we
affirmed the rejection of claims 5, 6, 32-35, 37--45, 48-57, and 90 as being
unpatentable over Horiuchi and Theimer and of claims 73-75, 77-83, and
86-89 as being unpatentable over Horiuchi, Theimer, and Arev. Claim 5 on
appeal is substantially similar to claim 5 in the prior Decision. To the extent
Appellants' arguments are similar to those presented in the prior Decision,
we will not repeat our analysis and will refer to the prior Decision.
ANALYSIS
In rejecting claim 5, the Examiner relies on Horiuchi for disclosing
the recited server device and the functionalities related to collecting
subscriber-specific status information and transmitting the subscriber-
specific status information. Final Act. 4--6. The Examiner further relies on
Theimer as disclosing the recited registering the activity in the
communications network and transmitting the status information to the
particular communications terminal. Final Act. 6. With respect to the
reason for the combination, the Examiner finds
Therefore, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to register
current activity information for users to identify particular
communication terminals at which a user is currently active to
permit prompt delivery of messages to a user at their current
location while preventing unauthorized interception of
messages by unintended recipients at locations where the
intended user is not currently active.
remaining claims are not substantively argued, we reach the same result for
these claims as we do for claim 5.
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Application 10/203,429
Final Act. 6-7.
Combination of References
Appellants contend there is no motivation for combining the
references because the Examiner provided no articulated reasoning as to
how to combine the different approaches to messaging disclosed in Horiuchi
and Theimer. App. Br. 5. Appellants specifically argue a user's location is
not important to the cost-based delivery system of Horiuchi, whereas
Theimer requires locating a user. Id.
The Examiner explains that, in addition to calculating the cost of
delivery, Horiuchi includes a position information control unit that provides
the location information of the user. Ans. 2-3 (citing Horiuchi 6:22-27,
6:35-50). Additionally, the Examiner finds Theimer's system, in which a
user's activity is registered to identify a particular device, would improve the
message delivery of Horiuchi at a known location of the user by reducing the
chance of unauthorized interception of the message. Ans. 3--4. The
Examiner further explains that the teachings of Theimer do not need to be
bodily incorporated in Horiuchi because Theimer was relied on only for
teaching how a user's location is tracked for message delivery. Ans. 4
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)).
We agree with the Examiner's findings with respect to the stated
reason as to why one of ordinary skill in the art would have combined the
message delivery of Horiuchi with the user's location detection of Theimer.
See Ans. 3--4. Consistent with the guidelines stated in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), the Examiner identifies improvements
made by the combination to the method of Horiuchi for ensuring messages
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Application 10/203,429
are delivered quickly and accurately to a user's actual location. Id. Indeed,
the Supreme Court has indicated that:
[It is error to] assum[ e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem .... Common sense teaches
... that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted). Therefore, the Examiner has
articulated how the claimed features are suggested by the proposed
combination of the reference teachings with some rational underpinning.
See KSR, 550 U.S. at 418.
Reference Teachings
Appellants contend "Horiuchi fails to disclose at least 'register[ing]
the activity of a particular subscriber of the plurality of subscribers on at
least one communication terminal in the at least one communications
network,' as recited by independent Claim 5." App. Br. 7. Appellants
specifically argue Horiuchi stores "an estimate of a recent user position,"
which is not the same as the "activity of a particular subscriber." Id.
Additionally, Appellants argue that the proposed combination "fails to
disclose 'transmit[ing], automatically in response to identifying the
particular communication terminal at which the particular subscriber is
active, the collected subscriber-specific status information for the particular
subscriber ... to the identified particular communications terminal at which
the particular subscriber is currently active." Id. Appellants cite to
Theimer' s disclosure in column 11 and assert the communications are sent in
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response to a user request, rather than in response to identifying the
particular terminal where the subscriber is active. App. Br. 8.
In response, the Examiner explains that Horiuchi teaches an estimate
of the user position information is used for message delivery, which is
collected from the user terminal, whereas Theimer also registers the current
location information and activity information of the user. Ans. 5 ( citing
Horiuchi 6:22-30, Theimer 8:7-15 and 9:35--42). The Examiner further
finds Theimer subsequently sends communications to the appropriate
terminal in response to or upon identifying the appropriate terminal location.
Ans. 5---6.
We are not persuaded by Appellants' arguments that the Examiner
erred. Appellants' contentions focus on the references separately and ignore
the fact that the proposed rejection is based on the combination of Horiuchi
and Theimer. See In re Keller, 642 F.2d 413,425 (CCPA 1981); In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the Examiner
finds (Ans. 5), Horiuchi teaches the user location, although an estimate
location, is used for message delivery, whereas Theimer teaches registering
the user location improves message delivery. See Horiuchi 6: 22-33,
Theimer 8:7-15. In other words, Appellants' contentions are not persuasive
because Horiuchi was relied on for message delivery to a user with
consideration for the user location, and not for teaching whether the activity
of a subscriber is registered, which is taught in Theimer. We also observe
that although Theimer' s disclosure in column 11 may identify sending the
message as soon as possible, Theimer's disclosure in column 9 describes the
transmission takes place when it is determined, or in response to identifying,
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Application 10/203,429
that a user is active or when the activity of a user is monitored and detected,
as recited in the claim.
CONCLUSION
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the disclosures of Horiuchi and
Theimer teach or suggest the disputed features of claim 5. Therefore, we
sustain the 35 U.S.C. § I03(a) rejection of 5, 6, 32-57, and 73-92.
DECISION
We affirm the Examiner's decision to reject claims 5, 6, 32-57, and
73-92.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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