Ex Parte Forsyth

Board of Patent Appeals and Interferences

Aug 28, 2012

10451500 (B.P.A.I. Aug. 28, 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.
10/451,500 11/28/2003 John Matthew Forsyth 990-001.564 2319
20413 7590 08/29/2012
CORE WIRELESS LICENSING S.a.r.l.
c/o WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON LLP
BRADFORD GREEN, BUILDING FIVE
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
NGUYEN, TU X
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
08/29/2012 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 JOHN MATTHEW FORSYTH
________________

Appeal 2010-002565
Application 10/451,500
Technology Center 2600
________________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002565
Application 10/451,500

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 16 – 31. Claims 1 – 15 are canceled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to a mobile telephone device with an idle screen.
Spec. 1, l. 5. The idle screen of the mobile telephone device is used to show
updated information obtained from a remote information source, in which
the information is of a kind selected by the user. Spec. 4, ll. 7 – 9.
Exemplary Claims
16. A mobile telephone device capable of supplying
information to an end-user, the device being adapted to display
the information from a remote information resource accessible
by the end-user;
wherein the device is adapted to enable the end-user to
select the remote information resource, and wherein the
information is for display on an idle screen of the mobile
telephone device.
(Emphasis added).
27. A computer-readable medium encoded with a computer
program instructing a mobile telephone device to:
(a) retrieve or receive, from a remote information
resource, updated information; and
(b) display that updated information on the device;
characterized in that (i) a user of the device defines the
kind of updated information which is to be retrieved or received
and (ii) the updated information is displayed as part or all of an
idle screen on the device.
(Emphasis added).
Appeal 2010-002565
Application 10/451,500

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Rejections
The Examiner rejects claims 16 – 23 and 25 – 31 under 35
U.S.C. § 102(e) as being anticipated by Martin, Jr. (US 6,363,419 B1; Mar.
26, 2002; filed Apr. 5, 1999) (“Martin”). Ans. 3 – 5.
The Examiner rejects claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Martin and Jiang (US 7,136,631 B1; Nov. 14, 2006; filed.
Nov. 9, 2000) (“Jiang”). Ans. 6.
ISSUES
1. Did the Examiner err in finding that Martin discloses “wherein the
device is adapted to enable the end-user to select the remote information
resource, and wherein the information is for display on an idle screen of the
mobile telephone device,” as recited in claim 16?
2. Did the Examiner err in finding that Martin discloses “a user of the
device defines the kind of updated information which is to be retrieved or
received,” as recited in claim 27?
ANALYSIS
Claim 16
Claim 16 is directed to a mobile telephone device adapted to enable
the end-user to select the remote information resource, wherein the
information is for display on an idle screen of the mobile telephone device.
The Examiner finds that Martin describes this feature in an embodiment in
which the mobile device allows “the user to interact with the idle content
displayed during idle times. [. . .] For instance, the idle content may contain
links for a user to get more information about a particular product or service
of interest.” Fin. Rej. 2 (Dec. 11, 2007) (citing Martin col. 8, ll. 57 – 64).
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Appellant contends that Martin fails to describe the claimed invention,
arguing:
Once a user interacts with the displayed content . . . then the
screen on which this content is display[ed] cannot be
considered idle, it is an active screen. If the user is getting more
information about a particular product by way of using, i.e.,
interacting with, links, this indicates that the device is not idle
due to the user interaction with the ‘idle’ screen, and it has
nothing to do with selecting what appears on the idle screen in
the first place.
App. Br. 8.
Appellant’s arguments are not commensurate with the scope of the
claimed invention. The Specification states that an “idle screen is the screen
which is displayed when the user is not navigating to a particular function,
nor actively using a particular application, such as contacts application, or a
messaging application.” Spec. 1, ll. 10 – 13.
In Martin, the browser of the mobile device is provisioned with a user
selected idle content address identifier. Ans. 6 – 7. One such idle screen is a
screen with links that allows the user wants to “interact with the idle
content” by selecting a link to get more information. Martin col. 8, ll. 59 –
62. In selecting a link to more information about a particular product or
service of interest, the user is selecting a remote information resource for
display on an idle screen (i.e., obtaining additional content to display on the
idle screen).
After the user selects a link to additional content on the idle screen in
Martin, the device displays the additional content on an idle screen. Thus, in
Martin, the user is not navigating to a particular function or actively using a
particular application by merely selecting a link on the idle screen to get
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more information about a particular product or service of interest; the user
has not even exited from the “idle content.” See id. Therefore, we agree with
the Examiner that Martin discloses “wherein the device is adapted to enable
the end-user to select the remote information resource, and wherein the
information is for display on an idle screen of the mobile telephone device,”
as recited in claim 16.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection
of claim 16, as well as the Examiner’s rejection of claims 17 – 26, 28, and
29, which contain the same or similar recitations and which are not argued
separately with sufficient specificity. See App. Br. 7 – 9 and 11.
Claim 27
Claim 27 is directed to a computer-readable medium encoded with a
computer program instructing a mobile telephone device to perform steps of
retrieving or receiving updated information and displaying that updated
information on the device, characterized in that “a user of the device defines
the kind of updated information which is to be retrieved or received.” The
Examiner finds that in Martin the user selects the kind of idle content to
retrieve or receive by controlling the location of the mobile device, which is
enabled “to receive geographic user-oriented information.” See Ans. 7
(citing Martin col. 11, ll. 40 – 46).
Appellant contends that the Examiner’s construction of “defines” is
unreasonably broad, arguing for example that “[t]o suggest that a user would
travel to Chicago from California to ‘define’ his or her mobile device to give
Chicago weather is in no way a reasonable interpretation of Martin or the
claims herein.” See Reply Br. 2. However, neither the Specification nor
claim 27 provides a clear definition for “defines.” The Specification
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describes “the step of sending from a remote information resource updated
information defined by a user of the device.” Spec. 6, ll. 8 – 10. However,
this general description fails to constrain the method by which a user
“defines” the kind of information to retrieve or receive. Thus, we agree with
the Examiner that a broad, but reasonable, interpretation of “defines”
includes actions, such as setting the geographic location of a device, that
affect the kind of information to retrieve or receive. Ans. 7. Therefore, we
agree with the Examiner that Martin discloses “a user of the device defines
the kind of updated information which is to be retrieved or received,” as
recited in claim 27.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection
of claim 30, as well as the Examiner’s rejection of claims 30 and 31, which
are not argued separately with sufficient specificity. See App. Br. 10.
DECISION
The Examiner’s decision to reject claims 16 – 31 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).

AFFIRMED

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