Ex Parte Gray et al

Patent Trial and Appeal Board

Oct 2, 2014

10993472 (P.T.A.B. Oct. 2, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/993,472 11/19/2004 William M. Gray PU04 0255US1/2002-099 3782
54472 7590 10/02/2014
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
TRAN, PAUL P
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
10/02/2014 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
____________________

Ex parte WILLIAM M. GRAY and GWENDOLYN FOURNIER
____________________

Appeal 2012-006214
Application 10/993,472
Technology Center 2400
____________________

Before JASON V. MORGAN, JOHN A. EVANS, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–6, 13–18, and 26–31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to push-to-talk (PTT) terminals in a
cellular network. (Spec. ¶¶ 1–3 and Abstract.)2 Specifically, Appellants

1 According to Appellants, the real party in interest is Sony Ericsson Mobile
Communications AB. (App. Br. 2.)
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claim methods for a PTT user terminal to generate and distribute PTT group
identifiers to other group members. (Abstract.)
Claims on Appeal
Claims 1, 13, and 26 are the independent claims on appeal. Claim 1 is
illustrative of Appellants’ invention and is reproduced below with disputed
limitations emphasized:
1. A method implemented by a Push-to-Talk (PTT)
terminal of distributing a group identification for a PTT group
comprising:
receiving a group identifier from a group server
following registration of a PTT group;
generating a group identification message including said
group identifier responsive to receipt of the group identifier
from the group server; and
sending the group identification message to one or more
group members.

Evidence Considered
Keever US 2003/0120801 A1 June 26, 2003
Ahya US 6,600,928 B1 July 29, 2003
Valentine EP 1330138 A2 July 23, 2003

Examiner’s Rejections
Claims 26–31 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. (Ans. 4–5.)
Claims 1–5, 13–17, and 26–30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ahya and Keever. (Ans. 5–16.)

2 Our decision refers to Appellants’ Appeal Brief filed September 12, 2011
(“App. Br.”); Examiner’s Answer mailed December 5, 2011 (“Ans.”);
Appellants’ Reply Brief filed February 3, 2012; Final Office Action mailed
March 14, 2011 (“Final Act.”); and the original Specification filed
November 19, 2004 (“Spec.”).
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Claims 6, 18, and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahya, Keever, and Valentine. (Ans. 16–17.)

Issues on Appeal
Based on Appellants’ arguments, the issues on appeal are:
I. With respect to claims 26–31, whether the term “non-transient
computer readable media” fails to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph.
(App. Br. 5–7.)
II. With respect to independent claims 1, 13, and 26, whether Ahya
and Keever teach “send[ing] [a] group identification message to
one or more group members,” as claimed. (App. Br. 7–13.)
III. With respect to dependent claims 2, 14, and 27, whether Ahya
and Keever teach “generating a group identification message if
the user input indicates approval,” as claimed. (App. Br. 13–
15.)
IV. With respect to dependent claims 5, 17, and 30, whether Ahya
and Keever teach “wherein the group identification message
comprises one of a text message, an instant message, email
application and a multimedia message,” as claimed. (App. Br.
15–17.)

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ANALYSIS
I.
§ 112, First Paragraph Rejection of Claims 26–31
With respect to Appellants’ claims 26–31, the Examiner finds that
“the term ‘non-transient’ or in particular the terms ‘non-transient computer
readable media’ are not defined anywhere in the original specification as
currently indicated in the amended claims.” (Ans. 4–5.) The Examiner
further finds:
the term “non-transient” is a new terminology introduced by the
Appellant without prior definition from the specification and
more importantly, the term is not one of the words
“nontransitory” and “tangible” suggested by the USPTO Office
memo guideline on 101 issue, the Examiner therefore needs to
maintain the 112th first paragraph in this case.

(Id. at 18.)
Appellants dispute the Examiner’s finding. Specifically,
Appellants argue the “specification provides explicit examples of a
computer readable media,” including “volatile (RAM) and non-
volatile (ROM) memory.” (App. Br. 6.) According to Appellants, the
reason for amending the claims to recite “non-transient” was to ensure
that only claimed computer readable media was tangible. (Id. at 7.)
However, Appellants contend that the Specification fully supports the
claims as amended. (Id.)
We are persuaded by Appellants’ argument. Appellants added
the “non-transient” language to overcome a § 101 rejection based on
the claim term “computer readable media.” (Final Act. 5.) As the
Examiner notes (Ans. 18), if Appellants had used the term “non-
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transitory” as opposed to “non-transient,” it would not have raised a
§ 112, first paragraph rejection. See David J. Kappos, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office
212 (Feb. 23, 2010) (“Such an amendment would typically not raise
the issue of new matter . . . .”). However, the terms transient and
transitory are synonyms that mean “passing away in time.” See
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 2428–29
(1971). Because the term non-transitory poses no issue of new matter,
we find the synonymous term non-transient also poses no such issue.
Accordingly, we do not sustain the § 112, first paragraph rejection of
claims 26–31.

II.
§ 103(a) Rejection of Independent Claims 1, 13, and 26
With respect to independent claims 1, 13, and 26,3 the Examiner relies
on the combination of Ahya and Keever. (Ans. 5–16.) In particular, the
Examiner finds Ahya teaches a push-to-talk (PTT) group “receiving a group
identifier from a group server” and “generating a group identification
message including said group identifier,” as claimed. (Ans. 6 (citing Ahya,
3:5–58 & Fig. 2).) The Examiner further finds that Ahya describes the
mobile station, i.e., PTT terminal, transmitting a temporary talk group
identifier to the other mobile stations. (Ans. 19 (citing Ahya, 4:4–26 &

3 Appellants’ arguments are directed specifically at claim 1 without arguing
separate grounds of patentability for independent claims 13 and 26. (App.
Br. 12–13.) Therefore, we focus on claim 1 for our review. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).

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claims 3, 6).). The Examiner also finds that Keever describes a group
communication method, where the “mobile is sending the group
identification message to one or more group members.” (Ans. 7 (citing
Keever ¶¶ 31–33).) Accordingly, the Examiner finds that Ahya and Keever
teach or suggest a PTT terminal “sending the group identification message to
one or more group members,” as claimed. (Ans. 6–7, 19–20.)
Appellants dispute the Examiner’s findings on two bases. First,
Appellants argue that neither Ahya nor Keever teaches that the PTT terminal
sends that group identification message the other group members:
Ahya, as the Office acknowledges, teaches that each
mobile terminal receives a group identifier directly from a
group server as soon as they register with the server. Keever
teaches that each user node is pre-programmed with the
requisite information before the user node is assigned to a
group. Therefore, neither reference, alone or in combination,
teaches or suggests a user node, “sending the group
identification message [which includes a group identifier] to
one or more group members,” as claimed in claim 1.

(App. Br. 11 (emphasis added).) Second, Appellants argue that even if
Keever teaches the PTT terminal sending group identification to other group
members, Ahya teaches the direct server-to-mobile station method is
preferable to prevent users from having to program their respective mobile
stations. (Id. at 11–12 (citing Ahya, 4:4–18).) Thus, Appellants conclude,
Ahya teaches away from the required “sending” by the PTT terminal. (App.
Br. 11–12.)
We are not persuaded by Appellants’ arguments. With respect to
Appellants’ argument that neither Ahya nor Keever teaches the PTT
terminal sending the group identification message, Appellants fail to address
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each of the disclosures that the Examiner relied upon. In particular, the
Examiner points to Ahya’s claims 3 and 6 as teaching this step. (Ans. 19.)
Claim 3 from Ahya recites:
3. A method for establishing a temporary conference call
group as defined in claim 1, further comprising transmitting
the temporary talk group identifier to other mobile stations
corresponding to the plurality of identifiers.

Ahya, claim 3 (emphasis added). For context, claim 1, from which claim 3
depends, recites “initiating a talk group call set-up mode at a mobile
station.” Ahya, claim 1. Thus, the method of claim 3 discloses sending a
group identifier from an initiating mobile station to other mobile stations.
We agree, therefore, with the Examiner’s finding that claims 3 and 6 in
Ahya teach the PTT terminal “sending the group identification message” to
other mobile stations. We note that Appellants do not address the
Examiner’s finding with regard to claims 3 and 6. (See Reply Br. 5–6.)
As to Appellants’ second argument—that Ahya teaches away from
“the peer-to-peer distribution of the group identifiers from a group creator’s
mobile terminal” (App. Br. 11)—we disagree. Even if Ahya discloses that a
server-to-mobile station distribution is “preferable,” as Appellants contend
(id. at 11–12), “[a] known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Here, Ahya may describe an alternate server-based distribution
as preferable, but, as discussed supra, it also discloses that the requesting
mobile station may do the distributing of the group identifiers. Accordingly,
we are not persuaded that Ahya teaches away from the required “sending the
group identification message.”
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Because we are not persuaded that the Examiner erred in finding that
Ahya or Keever teaches or suggests the disputed claim limitations, we
sustain the rejection of claims 1, 13, and 26. Regarding dependent claims 3,
4, 6, 15, 16, 18, 28, 29, and 31, Appellants make no separate patentability
arguments. Therefore, we sustain the rejections of these claims as well. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

III.
§ 103(a) Rejection of Dependent Claims 2, 14, and 27
With respect to dependent claims 2, 14, and 27, the Examiner finds
that Ahya discloses that the PTT server “alerts (i.e. prompts) the user that
talk group membership may now be specified,” and, therefore, teaches
“prompting the user responsive to receipt of the group identifier from the
group server . . . .” (Ans. 23–24 (citing Ahya, 3:42–53).)
Appellants dispute the Examiner’s finding. Specifically, Appellants
contend the cited portion of Ahya discloses a procedure that “occurs at the
infrastructure equipment in the network.” (App. Br. 14 (citing Ahya, 3:27–
44) (emphasis omitted).) Accordingly, there is no teaching or suggestion
that a user manually approves the generation of a group identification
message, as claimed. (App. Br. 14.)
We are not persuaded by Appellants’ argument. We agree with the
Examiner’s finding that the last sentence of the cited portion of Ahya
specifically says the requesting device, not infrastructure equipment,
receives the temporary group identifier and the user is alerted. (Ans. 24
(citing Ahya, 3:42–44).) This finding is further supported, as the Examiner
points out (Ans. 24), by the next paragraph of Ahya, which discloses that in
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response to the alert, “the user then commences creating the temporary talk
group list (208) . . . .” (Ahya, 3:45–53). Accordingly, we disagree with
Appellants’ contention that the cited portion discloses a procedure that
occurs at the infrastructure equipment, and sustain the rejection of claim 2.
Appellants make no separate patentability arguments with respect to claims
14 and 27. (App. Br. 15.) Therefore, we sustain the rejection of these
claims as well.

IV.
§ 103(a) Rejection of Dependent Claims 5, 17, and 30
With respect to dependent claims 5, 17, and 30, the Examiner finds
that Ahya discloses that the user’s mobile station uses a “microbrowser” to
interact with the disclosed system. (Ans. 9, 24 (citing Ahya, 4:55–5:18).)
Because a microbrowser communicates using “hypertext,” the Examiner
finds that Ahya teaches the “group identification message comprises one of a
text message, an instant message, email application, and a multimedia
message.” (Ans. 24–25.) The Examiner also finds that Keever discloses
users sending text messages including group identification information. (Id.
(citing Keever ¶¶ 33, 36.).)
Appellants dispute the Examiner’s finding. According to Appellants,
neither Ahya nor Keever discloses that the group identification message may
comprise one of the recited message formats. (App. Br. 15–16.) With
respect to Ahya, Appellants argue that “Ahya says nothing whatsoever about
the makeup of group identification messages, let alone teaching such
messages comprising ‘one of a text message, an instant message, email
application and a multimedia message,’” as recited in claim 5. (Id. at 16.)
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With respect to Keever, Appellants concede that it discloses “user nodes
send and receive text messages, which is conventional wisdom,” but argue
that it says nothing about a “group identification message,” and, given that
Ahya discourages users from propagating user information, “no one skilled
in the would ever modify Ahya to include the teachings of Keever. (Id. at
16–17.)
We are not persuaded by Appellants’ arguments. As the Examiner’s
cites from Ahya indicate, a user device can create a temporary talk group,
i.e., the recited group identification message, using a microbrowser. Ahya,
5:11–18 (“Using the microbrowser, the user can enter the identifiers of the
other talk group members . . . .”). The Examiner finds, and we agree, that
the microbrowser in Ahya uses a text-based protocol, and thus teaches or
suggests that the “group identification message comprises one of a text
message, an instant message, email application and a multimedia message.”
We observe that Appellants do not address the Examiner’s reliance on the
microbrowser disclosure in Ahya. (See App. Br. 15–17; Reply 5–6.)
With respect to Keever, we also agree with the Examiner’s finding
that its disclosure of text messaging teaches the disputed limitation in
combination with Ahya. While conceding that its “conventional wisdom”
for user devices to send and receive text messages (App. Br. 16), Appellants
contend that Ahya discourages sending the required “group identification
messages.” However, as discussed supra, Ahya not only does not teach
away from user devices from sending group identification messages, it
actually discloses it. Therefore, we agree that would be obvious for one of
ordinary skill to combine Ahya’s disclosure of users sending group
identification messages, with the conventional wisdom that user’s send and
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receive text messages as disclosed in Keever. See KSR Int’l Co. v. Teleflex,
550 U.S. 398, 416 (2007).
Accordingly, we are not persuaded that the Examiner erred in finding
that Ahya and Keever teach the limitations of claim 5. With respect to
claims 17 and 30, Appellants make no separate patentability arguments.
(App. Br. 17.) Therefore, we sustain the rejection of these claims as well.

CONCLUSION
On the record before us, we do not sustain the rejection of claims 26–
31 under 35 U.S.C. § 112, first paragraph. However, we sustain the
rejection of claims 1–6, 13–18, and 26–31 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s final rejection of claims 26–31 under
35 U.S.C. § 112, first paragraph, and we affirm the Examiner’s final
rejection of claims 1–6, 13–18, and 26–31 under 35 U.S.C. § 103(a).
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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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