Ex Parte Hjelm

Patent Trial and Appeal Board

Jul 24, 2014

12118849 (P.T.A.B. Jul. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHAN HJELM
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Appeal 2012-003595
Application 12/118,849
Technology Center 2400
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Before: CHARLES N. GREENHUT, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1–17. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-003595
Application 12/118,849

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CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is reproduced below.
1. A method of releasing device information related to a
communications device over a network to a service provider,
comprising:
receiving a service request sent from the
communications device to the service provider, said request
including identification information about the service provider;
determining a policy to be applied to device
capabilities information about the communications device
based on the identification information;
providing an amount of the device capabilities
information to the service request, said amount corresponding
to an extent permitted by said policy; and
sending the service request including the amount
of the device capabilities information over the network to the
service provider.

REJECTION
Claims 1–17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Koike (US 2003/0084300 A1; pub. May 1, 2003).
ANALYSIS
The Examiner found that Koike discloses the method of claim 1 of
receiving a service request sent from a communications device to the service
provider, the request including privacy data and identification information
about the service provider 110 (paras. 4, 115, 128), determining the policy to
be applied to device capabilities information based on the identification
information (paras. 118-120), providing an amount of device capabilities
(user privacy data) to the service request to the extent permitted by policy
(para. 135), and sending the service request including an amount of user
privacy data over a network to the service provider (para. 135). Ans. 5–6.
Appeal 2012-003595
Application 12/118,849

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The Examiner found that Koike teaches that the user privacy data includes
data related to device information or capability, e.g., programs installed in
the device (para. 28). Ans. 6. The Examiner determined that claims 11–17
correspond to the method of claims 1-10 and rejected claims 11–17 under
the same rationale set forth for claims 1-10. See Final Rej. 4.
Appellant asserts that there is no evidence that Koike provides an
amount of device capabilities information to a service request. App. Br. 8;
Reply Br. 1–3. Appellant contends that the Specification makes clear that
“sending the service request including the amount of the device capability
information over the network to the service provider” is a single action, not a
series of exchanges between the requestor and service provider and therefore
there is no basis for the Examiner’s interpretation of this claim limitation to
permit the sending of the service request to be a separate action from the
sending of the device capability information. App. Br. 10; Reply Br. 3.
The Examiner has not established by a preponderance of evidence that
Koike discloses “providing an amount of the device capabilities information
to the service request” as recited in claim 1, or that Koike “provides to the
service request an amount of the device capabilities from the information
set” as recited in claim 11. Appellant discloses a service request as a request
to a service provider for video and/or audio information to be played on a
user’s equipment, for example. Spec. 1, para. 3. A service request also may
request information or set up a session. Spec. 13–14, para. 52. Appellant
discloses that service requests include device capabilities information. Spec.
13–14, para. 52; Spec. 15, para. 61.
The Examiner has not explained how the portions of Koike cited by
the Examiner disclose a service request. For example, paragraph 4 of Koike
Appeal 2012-003595
Application 12/118,849

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discloses that services require a user to provide data including privacy of the
user. Paragraph 115 of Koike discloses a privacy data administrator 110b
receiving data from a user including privacy of a user of a terminal device
120 and determining whether to transmit the received data to the server 110.
Paragraph 128 of Koike discloses an inquiry transmitter 106 storing data
identifying service provided to a service provider. The Examiner also found
that a “service request” does not have to be a single action or communication
but can comprise a sequence of steps so that Koike’s provision of device
capability information can be considered part of a service request. Ans. 7–9.
Even if a service request can be interpreted this broadly, the Examiner has
not shown where Koike discloses receiving a service request, i.e., a request
for services from a service provider, rather than sending device or privacy
data to a service provider. The Examiner’s reliance on paragraphs 5, 6, 15,
20, and 21 of Koike does not overcome this deficiency. Paragraphs 5 and 6
discuss protection of data and privacy policies between a user and a service
provider. Paragraph 15 discusses a service provider requesting a user to
provide a temporary identifier to a service provider. Paragraphs 20 and 21
discuss a system for administrating data including privacy of a user in
communications between a server and a terminal device of a user.
Accordingly, we do not sustain the rejection of claims 1–17.
DECISION
We REVERSE the rejection of claims 1–17.

REVERSED

Klh