Ex Parte Nevalainen

Patent Trial and Appeal Board

Oct 9, 2012

10561642 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIKKO NEVALAINEN
____________________

Appeal 2010-003759
Application 10/561,642
Technology Center 2400
____________________

Before, ERIC S. FRAHM, MICHAEL R. ZECHER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant has filed Request for Rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”) on August 7, 2012 requesting that we reconsider our
decision of June 21, 2012 (hereinafter “Decision”), wherein, we affirmed the
Examiner’s rejection of claims 1-8, 10, 12-20, and 22.

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OPINION
The Decision has been reconsidered in view of the Request and no
points are believed to be misapprehended or overlooked. Therefore, the
Decision is unchanged for the following reasons.
Claim 1 is exemplary and reads as follows [bracketed matter added]:
1. A method comprising:
[a] receiving, in a mobile terminal device related to a
user, a preference profile including identification data and
preference data related to at least another user, from a mobile
terminal related to said at least one other user;
[b] saving said received identification data and said
received preference data in a user database, said user database
containing preference data of at least a third other user;
[c] comparing, in the mobile terminal device which
received the preference profile, said received preference data
with the preference data contained in the user database for
determining users of substantially matching preference data,
wherein the comparison is based on a user-defined degree of
non-matching preference data included in preference data
related to the user;
[d] determining, in the mobile terminal device which
received the preference profile, a plurality of users having said
substantially matching preference data; and
[e] sending a notification, from the mobile terminal
device which received the preference profile, to each of said
mobile terminals related to said determined users.

With reference to the recited elements of claim 1, Appellant’s Appeal
Brief presents the following argument:
Taking claim 1 as exemplary, the claimed subject matter
provides for [a] receiving a preference profile from a mobile
terminal related to at least one other user; [b] saving the
received data, [c] comparing preference data, [d] determining a
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plurality of users matching the preference data, and [e] sending
a notification to each of the mobile terminals related to
determined users, where each of these operations is performed
“by the mobile terminal device which received the preference
profile.”

Br. 10 (bracketed matter added for emphasis, bolding omitted).

Appellant then argues that “claim 1 requires all of the functions to be
performed by the same single device.” Br. 11 (emphasis added). Thus,
Appellant contends that all five steps of claim 1 (steps [a], [b], [c], [d], and
[e]) are performed by the “same single device.”
As we explained in our Decision (page 7), claim 1 does not require the
“same single device” to perform all of the steps. In particular, the saving
step (element [b] in claim 1) is not performed in the same single device as
the remaining steps of claim 1. In other words, step [b] recites “saving said
received identification data and said received preference data in a user
database.” As explained in the specification, a network server 22 saves the
information in a user database. Spec. 9, 12-13. Thus, step [b] does not have
to be performed by the same device that performs steps [a], [c], [d], and [e]
and so “all” functions are not performed in the “same single device.” We
are still of the view that the invention set forth in claims 1-8, 10, 12-20, and
22 is unpatentable over the applied prior art based on the record before us in
the original appeal.
Next, in the Request, Appellant now contends that only four out of the
five steps recited in claim 1 are performed by a “single mobile terminal
device”:

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The prior art of record, taken singly or in combination, simply
does not disclose or suggest the use of a single mobile terminal
device for performing the functions of [a] receiving the
preference profile, [c] comparing, the received preference data
with the preference data contained in a user database, [d]
determining a plurality of users, and then [e] sending a
notification to each of mobile terminals related to the
determined users, so that a plurality of mobile terminal devices,
each connected to a wireless communications network, and
each being related to a user, may participate in the multiple
access online application, e.g., a gaming application.

Request 3-4 (bracketed matter added for emphasis).

According to the Appellant, steps [a], [c], [d], and [e] of claim 1 are
performed by the “single mobile terminal device.” In other words,
Appellant has omitted the saving step [b] in the list of functions that are
performed by the “single mobile terminal device.” This is a new argument
that was not raised in the Brief before the Board.
An argument presented for the first time in a Request but not
advanced in the Appeal Brief or appropriately furnished in a Reply Brief
(when one has been submitted) is not properly before the Board, at least in
part, because the Examiner is not afforded a timely opportunity to respond
and the Board is deprived of any such response that may have been supplied
by the Examiner to the belatedly presented new argument. See In re
Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986). “A party cannot wait until
after the Board has rendered an adverse decision and then present new
arguments in a request for reconsideration.” Cooper v. Goldfarb, 154 F.3d
1321, 1331 (Fed. Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731
(BPAI 1982), aff'd, 714 F.2d 160 (Fed. Cir. 1983) (table)).
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Since Appellant is presenting an argument not argued in the Brief on
Appeal, we decline to entertain it for the first time on rehearing. As stated in
37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the briefs before the
Board and evidence not previously relied upon in the brief and any reply
brief(s) are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) and (a)(3) of this section.” Because Appellant has not
pointed out why the new argument falls into the exceptions in 37 C.F.R.
§ 41.52(a)(2) and (a)(3), we decline to consider it.
Appellant focuses the Request on claim 1, and argues the patentability
of the remaining claims based on the same reasons presented for claim 1.
For the same reasons, we are not persuaded that in our Decision affirming
the rejection of claim 2-8, 10, 12-20, and 22 we misapprehended or
overlooked any points initially raised by Appellants in the Brief.

CONCLUSION
We have granted Appellant’s request for rehearing to the extent that
we have reconsidered our Decision of June 21, 2012, but we deny the
request with respect to making any changes therein.

DECISION
The request for rehearing is denied.
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).

REHEARING DENIED

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