Ex Parte Hyatt

Board of Patent Appeals and Interferences

May 29, 2012

11165521 (B.P.A.I. May. 29, 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.
11/165,521 06/23/2005 Edward Craig Hyatt PU05 0302US/ 2002-168 3415
54472 7590 05/29/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
ALAM, FAYYAZ
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
05/29/2012 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 EDWARD CRAIG HYATT
____________

Appeal 2010-003309
Application 11/165,521
Technology Center 2600
____________

Before DENISE M. POTHIER, JEFFERY S. SMITH, and JOHN A. EVANS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner‟s rejection
of claims 1-23.
Independent claims 1 and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kinnunen (EP 1,111,883 A2; pub. June 27, 2001). Ans. 3-4.
Dependent claims 2-6, 9-11, and 13-23 stand rejected under 35 U.S.C. §
103(a) as obvious over Kinnunen in view of Tsampalis (US 2004/0203956 A1;
published Oct. 14, 2004). Ans. 4-6.
Dependent claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kinnunen and Tsampalis in view of Marino (US 2006/0136379 A1;
June 22, 2006 (filed Dec. 17, 2004)). Ans. 8-9.
We affirm.

STATEMENT OF CASE
Appellant describes the present invention as follows:
The present invention describes a method and apparatus for instantly
sending active media files from a mobile terminal to a remote device. According to
the present invention, a mobile terminal stores a user-defined instant send address
in memory of the mobile terminal. The stored instant send address represents an
address, such as an email address, phone number, etc., associated with an instant
send function of the mobile terminal. After activating a media file by, for example,
taking a photograph, recording an audio message, recording video footage, drafting
a text message, etc., the mobile terminal automatically sends the active media file
to the stored instant send address when the user activates the instant send function.
(Abstract).
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Independent claim 1 is illustrative.
1. A mobile terminal comprising:
memory configured to store a user-defined instant send
address; and
a transceiver circuit configured to automatically send an
active media file to the instant send address responsive to user
activation of an instant send function.

CONTENTIONS
1

THE REJECTION OF CLAIMS 1 AND 12.
Appellant submits essentially identical arguments to separately urge the
patentability of claims 1 and 12. (Br. 3-4). In view thereof, we select claim 1 as
representative. The Examiner finds that Kinnunen discloses every feature recited
in representative independent claim 1 including: a mobile terminal (see Fig. 1)
comprising memory configured to store a contact list (read as user-defined instant
send address) and a transceiver circuit configured to automatically send a
multimedia message (read as an active media file) to an entry in the contact list
responsive to user activation of an instant send function. The Examiner considers
claim 12 to be a method claim comprising elements analogous to those of claim 1.
(See Ans. 3-4).
Appellant contends that Kinnunen discloses users must access an address list
each time the send function is activated and thus does not automatically send an
active media file to an instant send address as recited. In their view, this

1
Rather than repeat the Examiner‟s positions and Appellant‟s arguments in their
entirety, we refer to the following documents for their respective details: the
Appeal Brief (Br.) filed June 26, 2009; and the Examiner‟s Answer (Ans.) mailed
Oct. 1, 2009.
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user-access requirement distinguishes the claimed “instant send address” from
Kinnunen‟s “contact list.” (See Br. 4). Appellant also asserts that the claims
preclude any user-access of a contact list. “The term automatically as used in the
claims means that the media file is sent without the need for the user to manually
specify or select the recipient address.” (Br. 4). Furthermore, Appellant argues:
“nothing in Kinnunen automatically associates a specific recipient address (the
claimed instant send address) with an automatic send function. Thus, Kinnunen
also does not anticipate the automatic sending step of claim 12.” (Br. 4).

ISSUE
The issue is whether, under § 102, has the Examiner erred in rejecting claim
1 by finding that Kinnunen discloses “a transceiver configured to automatically
send an active media file to the instant send address responsive to user activation
of an instant send function.

ANALYSIS
Claim 1 recites, in pertinent part: “a transceiver circuit configured to
automatically send an active media file to the instant send address responsive to
user activation of an instant send function.” (Br. 8). The “Examiner agrees that
Kinnunen is a conventional art and requires that a user select or specify an address
each time in order to send a message.” (Ans. 9). However, Examiner and
Appellant disagree about whether the claim limitations “instant” and
“automatically” differentiate from the conventional art of Kinnunen.
According to the Examiner, the claim limitations do not exclude a user from
entering into several menus and submenus of the phone before sending the
message. Moreover, the Examiner considers Appellant's limitation “instant” to be
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a broad term of relative degree which does not inhibit a user from performing other
operations prior to or during the sending of a message. According to the
Examiner, the “instant send address” is a contact that is selected from a contact list
and the “instant send function” is a “call” or “send” button that exists on all
conventional cell phones in order to send a multimedia file or message that exists
in the phone. (Ans. 9-10). Similarly, as further evidence of “automatically
send[ing] an active media file,” the Examiner considers the term “automatically” to
be a broad term of relative degree “because the function of selecting a contact and
sending a message is done by a phone and its electronic circuitry and not by a
person personally delivering the message to a desired contact.” In fact, the phone
numbers are stored in the phone so a user does not even have to type the numbers
in order to send the message. Therefore, in the Examiner‟s view, “once a contact
is selected and a send button is pressed, then the message is „automatically‟ sent
via the transceiver circuit.” (Ans. 10).
A critical question is whether Appellant‟s claims specifically exclude user
intervention. Notably, independent claims 1 and 12 each recite the transition
phrase “comprising.”
The transitional term “comprising” is inclusive or open-ended and does not
exclude additional, unrecited elements. “The transition „comprising‟ in a method
claim indicates that the claim is open-ended and allows for additional steps."
Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003).
“„Comprising‟ is a term of art used in claim language which means that the named
elements are essential, but other elements may be added and still form a construct
within the scope of the claim”. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997). Thus, we do not find that claim 1 (or claim 12) excludes
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additional elements, including the transceiver being able to receive input from the
user prior to sending an active media file automatically.
Additionally, the Examiner interprets the claim terms, “instant” and
“automatically,” to be broad and not as limiting as Appellant would urge. During
patent examination, pending claims must be given their broadest reasonable
interpretation consistent with the specification. Phillips v. AWH Corp., 415 F.3d
1303, 1316(Fed. Cir. 2005). The question is whether the Examiner‟s determination
of the scope of claims, though broad, is a reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.” In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). (See MPEP §
2111). As we read the specification, we are mindful that “[a]bsent claim language
carrying a narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim the
broader definition.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
The record does not comprise such an express disclaimer or a definition in
the disclosure that narrows the recited phrases, “instant ” or “automatically,” to
Appellant‟s limited constructions. (Br. 4). We are persuaded that the Examiner‟s
broad interpretation of the disputed claim terms is reasonable. For example,
Appellant states “[t]he instant send address may comprise any type of
communication address, i.e., an email address, phone number, uniform resource
locator (URL), etc.” (Spec. 5:7-9). Similarly, Kinnunen discloses a mobile phone
with a contact list includes email addresses and phone numbers or an “instant send
address” as broadly as recited. See ¶¶ 0003, 0010, 0015; see also Ans. 3-4.
Moreover, as the Examiner explains (Ans. 3-4, 10) and as broadly as recited,
Kinnunen discloses that, once a contact is selected and a send button is pressed, a
message containing an active media file is automatically and instantly sent in
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response to user activation (e.g., selection) of the send function. See Kinnunen, ¶
0015; Fig. 2
For the foregoing reasons, Appellant has not persuaded us of error in the
Examiner‟s anticipation rejection of claims 1 and 12, presenting the same
arguments. (Br. 3-4). Accordingly, we will sustain the Examiner‟s rejection of
claims 1 and 12.

THE REJECTION OF DEPENDENT CLAIMS 2-6, 9-11, AND 13-23 AS OBVIOUS OVER
KINNUNEN AND TSAMPALIS
With respect to claims 2 and 13, the Examiner cites Tsampalis as teaching
memory configured to store different instant send addresses for different types of
media files. (Ans. 5). Appellant acknowledges “Tsampalis describes sending the
message in one of the formats compatible with the messaging format capabilities
of the receiving device.” (Br. 5). Appellant argues Kinnunen does not use an
instant send address or function. (Br. 5). We disagree as explained above when
addressing claims 1 and 12.
Also, Appellants argue that Kinnunen does not store instant send addresses
for different media types or applications and that “Tsampalis does not describe
using an instant send address or instant send function to send the formatted
message.” (Br. 5-6). Notably, the Examiner does not rely on Kinnunen alone to
teach the features in claims 2, 4, 13, and 15, but finds Tsampalis in combination
with Kinnunen teach storing addresses for different media types or applications.
Ans. 5-6. Other than a mere assertion that the combination does not teach the
claimed combination (Br. 6), Appellant does not rebut the Examiner‟s finding
regarding the collective teachings of Kinnunen and Tsampolis – a position we find
reasonable.
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As for claims 3, 5, 14, and 16, Appellants state that “Kinnunen and/or
Tsampalis do not rely on the claimed instant send addresses or functions.” Br. 6.
We disagree. As stated above when addressing claim 1, Kinnunen teaches the
claimed instant send address and instant send function, and we need not address
whether Tsampalis cures the alleged deficiencies.
With respect to the remaining dependent claims rejected upon these grounds,
the Examiner makes similar findings regarding the disclosure of Tsampalis. (Ans.
5-6). Appellant argues: “Dependent claims 2 - 6, 9 - 11, and 13 - 23 all depend
directly or indirectly from independent claims 1 and 12. Because Kinnunen does
not anticipate the independent claims[,] dependent claims 2 - 6, 9 - 11, and 13 - 23
are not obvious over Kinnunen in view of Tsampalis.” Br. 6. Because Appellant
does not rebut the Examiner‟s finding, we sustain the rejection of claims 2-6, 9-11,
and 13-23 as obvious.

THE REJECTION OF DEPENDENT CLAIMS 7 AND 8 AS OBVIOUS OVER KINNUNEN,
TSAMPALIS, AND MARINO
The Examiner finds that Marino discloses a soft key disposed on the mobile
terminal and a voice recognition circuit configured to recognize an instant send
voice command. (Ans. 8). Appellant does not rebut this finding. Appellant
merely argues “[b]ecause Kinnunen does not anticipate independent claim 1, from
which claims 7 and 8 indirectly depend, claims 7 and 8 are not obvious over
Kinnunen in view of Marino.” Br. 6. Because Appellant does not rebut the
Examiner‟s finding, we sustain the rejection of claims 7 and 8 as obvious.
2

2
Should prosecution continue, note Marino discusses U.S. Patent
Application Publication No. 2003/0184793, now U.S. Patent No. 7,916,322, that
“describes techniques for uploading content (such as a digital photograph) from a
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DECISION
The Examiner‟s decision rejecting claims 1-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

kis

content upload device to the content server over a communication network and for
automatically forwarding the content from the content server to one or more
remote destinations. A user of the content output device may cause the content
upload device to upload the content to the server by initiating a single action, such
as pressing a single button on the content upload device and without providing
information identifying the user to the content upload device.… It will be
appreciated however, that while the content is transferred with the depression of a
single button, the determination of how, where and with whom the content is
transmitted is made automatically based upon the profile.” (Marino ¶ 0007).