Ex Parte Lo et al

Patent Trial and Appeal Board

Aug 30, 2016

13634987 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/634,987 09/14/2012
95866 7590 09/01/2016
Fleit Gibbons Gutman Bongini & Bianco P,L,
551 NW 77th street
Suite 111
Boca Raton, FL 33487
FIRST NAMED INVENTOR
Yvonne Lo
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.
l 400-122PUS 8706
EXAMINER
ALATA,AYOUB
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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
following e-mail address( es):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YVONNE LO, DEVY PRANOWO, CHRIS LIRA,
BLAIR COOPER, and ROBERTO DIAZ
Appeal2015-003686
Application 13/634,987
Technology Center 2400
Before MAHSHID D. SAADAT, JOHN D. HAMANN, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-23, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to email validation in mobile wireless
communications devices upon changes in configuration parameters, such as
1 Appellants identify Research in Motion Limited as the real party in
interest. App. Br. 1.
Appeal2015-003686
Application 13/634,987
when a user changes a "removable memory device" (e.g., a SIM card).
Spec. i-fi-13---6. Claims 1, 12, and 17 are independent. Claim 1, which is
illustrative of the invention, reads as follows:
1. An email server comprising:
a controller and a memory coupled thereto and
configured to
withhold sending queued email associated with a first
unique identification (UID) to a mobile wireless
communications device based upon a change to a second UID
associated with the mobile wireless communications device,
and
cooperate with the mobile wireless communications
device to prompt for entry of at least one user email access
credential, and responsive to validation of the at least one user
email access credential, sending the queued email to the mobile
wireless communications device.
Br. 12 (emphasis added).
THE REJECTIONS ON APPEAL
Claims 1---6, 10-13, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Backholm et al. (US 2006/0240804 Al; pub.
Oct. 26, 2006) ("Backholm") and Provo (US 2007 /0226303 Al; pub. Sept.
27, 2007). Final Act. 3-9.
Claims 7, 14, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Backholm, Provo, and Glickstien et al. (US 2008/0270547
Al; pub. Oct. 30, 2008). Final Act. 10.
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Appeal2015-003686
Application 13/634,987
Claims 8, 9, 15, 16, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Backholm, Provo, Glickstien, and Fasching
(US 2010/0325021 Al; pub. Dec. 23, 2010). Final Act. 11-12.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner
erred. We adopt as our own the findings and reasons set forth in the
rejections from which this appeal is taken and in the Examiner's Answer,
and highlight the following for emphasis.
Rejection of Claims 1-6, 10--13, and 17-20 Under 35 U.S.C. § 103(a)
Appellants argue claims 1---6, 10-13, and 17-20 as a group, with claim
1 being representative of the group. See 37 C.F.R. § 41.37(c)(iv).
Appellants contend the Examiner erred in finding the prior art teaches
"withhold[ing] sending queued email" associated with a first unique
identification (UID) to a mobile device based upon a change to a second
UID associated with the mobile device, as recited in claim 1. App. Br. 7-8.
We disagree with this contention.
The Examiner finds the disputed element in Provo. Final Act. 4--5;
Ans. 4--5. Provo teaches a wireless communications system that validates
email access by using a personal identification number (PIN) associated with
a subscriber account, and a device identification (ID) associated with a given
device. Provo i-fi-120, 28. Thus, as the Examiner finds, Ans. 4, the PIN in
Provo corresponds to the "first UID" in claim 1, and the device ID
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Appeal2015-003686
Application 13/634,987
corresponds to the "second UID." Provo teaches that when the PIN no
longer matches the device ID (i.e, has changed), the "email server" may "fail
to complete an email request from the given device until the account
information is reconciled/updated." Provo i-f 28; see also id. i-f 5; Final Act.
4.
Appellants assert "failing to complete" an email request, as taught in
Provo, is not the same as "withholding" sending queued email, as recited in
claim 1. App. Br. 7-8. The teaching of Provo, however, is that the email
request fails to complete "until the account information is
reconciled/updated," which suggests withholding an action (i.e., sending or
receiving email) until an event is completed (i.e., reconciling account
information), not a permanent failure as Appellants argue. Moreover, Provo
teaches the foregoing temporary email "failure" may occur as a result of "a
user upgrad[ing] to a new device and switch[ing] his SIM card," Provo i-f 28,
which is the embodiment repeatedly cited by Appellants in their
Specification. Spec. i-fi-1 6, 18, 31, Fig. 4. We, therefore, discern no error in
the Examiner's findings regarding Provo.
Appellants also argue the Examiner erred in finding one of ordinary
skill would have combined Provo with Backholm. App. Br. 9. Provo and
Backholm, however, both are directed to authentication in mobile email
systems, and as the Examiner finds, Ans. 5, both allow the "well known"
action of switching out a SIM card. Id. Accordingly, Appellants do not
demonstrate error in the Examiner's finding that one of ordinary skill would
recognize the usefulness of verification (and withholding email upon a
change in device identification, such as by change in SIM) as taught in
Provo, to the mobile communications system of Backholm. Id.
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Appeal2015-003686
Application 13/634,987
For the foregoing reasons, we sustain the rejection of claims 1-6, 10-
13, and 17-20 under 35 U.S.C. § 103(a) as unpatentable over Backholm and
Provo.
Remaining Re} ections
Dependent claims 7, 14, and 21 stand rejected as unpatentable over
Backholm, Provo, and Glickstien. Appellants argue the claims are
patentable for the same reasons as the claims from which they depend
(claims 1, 12, and 17, respectively). App. Br. 10. Because Appellants'
arguments did not persuade us regarding the independent claims, we also
sustain the rejection of dependent claims 7, 14, and 21.
Dependent claims 8, 9, 15, 16, 22, and 23 stand rejected as
unpatentable over Backholm, Provo, Glickstien, and Fasching. Appellants
argue the claims are patentable for the same reasons as the independent
claims. App. Br. 10. Because Appellants' arguments did not persuade us
regarding the independent claims, we also sustain the rejection of dependent
claims 8, 9, 15, 16, 22, and 23.
DECISION
The Examiner's rejections of claims 1-23 are 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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