Ex Parte Pakkala

Board of Patent Appeals and Interferences

Oct 28, 2009

09474819 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TIMO PAKKALA
____________
Appeal 2008-005999
Application 09/474,8191
Technology Center 2100
____________
Decided: October 29, 2009
____________
Before LEE E. BARRETT, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-14, 20-25, 27-35, 37-41, 43-48, 53-55, 57, 60, and 61.
Claims 15-19, 26, 36, 42, 49-52, 56, 58, and 59 have been canceled. We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm-in-part.

1 Filed December 29, 1999, titled "Systems for Customizing
Behaviors and Interfaces in Service Invocations." The real party in interest
is Nokia Corporation.
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STATEMENT OF THE CASE
The invention
The invention relates to personalizing and customizing user behaviors
and interfaces when accessing services over a network. A plurality of
terminals are configured to each transmit a transmission signal including an
identifier (ID) for identifying each of the terminals. Each of the terminals is
configured to independently access a Service Enabling server connected to
the network and upon accessing the Service Enabling server, a necessary
service requested by the user of the terminal requesting the service is
selected. Information related to the service is then placed in a form
compatible with the terminal (e.g., the display) using a terminal capability
file containing terminal profiles for specific terminal types. A user profile
stores user preferences and terminal types used by the user. See Abstract.

The claims
Claim 1 is reproduced below:
1. A communications service system for transmitting data
between terminals and through the Internet, comprising:
a Service Enabling server connected to the Internet for
receiving a request for a necessary service from a terminal of a
requesting user, said request including an identifier (ID) for
identifying a terminal type of the terminal, the Service Enabling
server comprising user profiles for a plurality of users and terminal
capability files containing terminal profiles for a plurality of specific
terminal types, each of the user profiles identifying preferences and
terminal types used by a respective one of the plurality of users,
wherein
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upon receiving the request by the Service Enabling server from
the terminal, the Service Enabling server retrieves from a server on
the Internet the necessary service requested by the requesting user,
and
the information relating to the necessary service is changed, by
the Service Enabling server, from a form that is output by the server to
a form that is compatible with the terminal of the requesting user, a
terminal type of the terminal used by the requesting user being
determined from a corresponding one of the user profiles based on the
ID and said form that is compatible with the terminal being
determined by looking up the determined terminal type of the terminal
used by the requesting user in the terminal capability files.

The references

Pepe US 5,742,905 Apr. 21, 1998
Wong US 6,185,288 B1 Feb. 6, 2001
(filed Dec. 18, 1997)
Kanevsky US 6,300,947 B1 Oct. 9, 2001
(filed July 6, 1998)
Dahm US 6,301,471 B1 Oct. 9, 2001
(filed Nov. 2, 1998)
Kotola US 6,321,257 B1 Nov. 20, 2001
(§ 102(e) date Jan 15, 1999)
Martin US 6,363,419 B1 Mar. 26, 2002
(filed Apr. 5, 1999)
Jamtgaard US 6,430,624 B1 Aug. 6, 2002
(based on Provisional Application filed Oct. 21, 1999)
Geiger US 6,463,534 B1 Oct. 8, 2002
(filed Mar. 26, 1999)
Langseth US 6,658,093 B1 Dec. 2, 2003
(filed Dec. 7, 1999)
Lonnroth US 6,826,597 B1 Nov. 30, 2004
(filed Dec. 6, 1999)

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The rejections
1. Claims 1, 7-9, 44, 60, and 61 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kanevsky and Wong.2
2. Claims 2, 6, 10, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanevsky and Wong, further in view of Kotola.
3. Claims 3, 24, 25, 28, 29, 31-33, 35, 53, and 54 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kanevsky and Wong, further in
view of Lonnroth.
4. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kanevsky and Wong, further in view of Dahm.
5. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kanevsky and Wong, further in view of Geiger.
6. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanevsky, Wong, and Kotola, further in view of Dahm.
7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanevsky, Wong, and Kotola, further in view of Geiger.
8. Claims 20, 21, and 45 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanevsky and Wong, further in view of Martin.
9. Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanevsky and Wong, further in view of Langseth.
10. Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanevsky and Wong, further in view of Jamtgaard.

2 The statement of the rejection in the Examiner's Answer mistakenly
refers to claims 61 and 62 rather than claims 60 and 61.
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11. Claims 34, 37-41, 43, 46-48, 55, and 57 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kanevsky and Wong, further in
view of Pepe.
12. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanevsky, Wong, and Pepe, further in view of Kotola.

DISCUSSION
Independent claims 1 and 9
Contentions
The Examiner finds that the table defining display characteristics in
Kanevsky (col. 6, ll. 53-64) corresponds to a user profile (Final Rej. 3) and a
table capability file (id. at 4); i.e., "in Kanevsky, the 'terminal capabilities'
are included in the 'user profiles'" (Ans. 33). The Examiner finds that
Kanevsky describes the invention of claim 1 except that it does not disclose
that the server has separate user profiles and terminal capability files. Id.
The Examiner finds that Wong describes a multimedia call signaling system
which includes a terminal profile file and a user profile which contains
information on the user. Id. The Examiner concludes that it would have
been obvious to modify Kanevsky to provide separate terminal capability
files and user profiles as taught by Wong. Id. at 4-5.
Appellant argues: (1) there is no motivation to combine the Web page
adaptation system of Kanevsky with the call signal system of Wong; and
(2) the combined teachings fail to teach or suggest the claimed invention.
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Appellant notes that Kanevsky adapts Web pages to be displayed on
different displays, but argues that "Kanevsky fails to teach or suggest the
user profile and terminal capability files as recited in independent claim 1."
Br. 8. Appellant acknowledges that Wong discloses the use of terminal
profiles for each terminal owned by a user and a user profile at column 14.
Br. 8. However, it is argued, the purpose of Wong is to provide an
additional layer of signaling protocol for handling a call setup and "[s]ince
the signaling protocol for handling a call setup is not at all related to
retrieving information from a service on the Internet and adapting the
information to a specific terminal display, those skilled in the art would not
combine the teachings of Wong with the system of Kanevsky." Br. 8-9.
The Examiner responds that to the extent Appellant is arguing that
there is no motivation to combine because the reference are nonanalogous,
both references are at least reasonably pertinent to the problem of computer
communications. Ans. 31-32. The Examiner also responds that one skilled
in the art would have been motivated to replace a single file in Kanevsky
with separate files as taught by Wong to make it easier for the system to
maintain and support the files and the results are predictable. Id. at 34.
Appellant argues that even if the teachings of Wong were combined
with Kanevsky, the combined teachings still fail to teach or suggest "a
Service Enabling server connected to the Internet for receiving a request for
a necessary service," wherein the Service Enabling server changes a form of
the information output by a server to a form compatible with the terminal of
the requesting user, and "said form that is compatible with the terminal
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being determined by looking up the determined terminal type of the terminal
used by the requesting user in the terminal capability files," as recited in
independent claim 1. It is argued that "[t]he MCSS end system 80 of Wong
can not be considered to be a Service Enabling server because it does not
retrieve from a server on the Internet the necessary service requested by the
requesting user" but provides a service of handling outgoing and incoming
calls, and "[t]hus, if the MCSS end system 80 of Wong were combined with
the system of Kanevsky, then the MCSS end system 80 would provide an
additional function, i.e., call handling, to the system of Kanevsky." Br. 9
The Examiner responds that Wong is only relied on for teaching
storing user profiles and terminal capability files separately and Kanevsky
teaches the Service Enabling server. Ans. 34-35.

Issue
Has Appellant shown that the Examiner erred in concluding that it
would have been obvious to combine the terminal profile and user profile
files of Wong with the system in Kanevsky to arrive at the claimed
invention?

Principle of law
Obviousness requires that the differences between the subject sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious to one of ordinary skill in the art. 35 U.S.C.
§ 103(a).

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Facts
Kanevsky
Kanevsky relates to organizing viewing materials associated with
Web sites on visual display screens. Col. 1, ll. 6-11.
Kanevsky describes that displays for different client machines may
include different sized, shaped, and configured monitors (displays) and
windows. Col. 5, l. 57 to col. 6, l. 3. Kanevsky relates to adapting Web
pages to different display screens and windows sizes.
Kanevsky describes a display mode message that uniquely identifies
display characteristics. An adaptor server 107 stores tables that contain
display characteristics or parameters associated with a given display terminal
and each table can be identified by a unique mode number. A user's
machine transmits a mode number which is used to locate the display
characteristics in a table. Col. 6, ll. 53-64.
The adaptor server 107 transforms Web pages to adapt the content to a
form compatible with the user's display. Col. 7, ll. 25-41.

Wong
Wong describes a multimedia call signaling methods for placing calls
of various types from a PSTN based terminal. Col. 1, ll. 38-41.
Call setup includes a calling presentation driver 120 which is
responsible for exchanging data between the Calling Agent 114 and an
appropriate one of the local network interfaces 109, 111, 113. Col. 4,
ll. 40-44. The calling presentation driver 120 has access to a terminal profile
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database 122 which contains information on the user's terminals 102, 104,
106 and to a user profile database 124 which contains information on the
user per se. The terminal profile for a selected one of terminals 102, 104,
106 is consulted by the presentation driver 120 to decide what type of
conversion is required if any, in passing data to and from the selected one of
the subscriber terminals 102, 104, 106. Col. 4, ll. 56-64.
The terminal profile includes information on the terminal capabilities
and the user profile identifies user terminals. Col. 14, l. 1 to col. 15, l. 44.

Analysis
Initially, we do not agree with the Examiner's finding that the tables of
display characteristics in Kanevsky (col. 6, ll. 53-64), which clearly
corresponds to the claimed "terminal capability files containing terminal
profiles for a plurality of specific terminal types," can be also considered to
correspond to the claimed "user profiles . . . each of the user profiles
identifying preferences and terminal types used by a respective one of the
plurality of users." There appears to be nothing in the tables that identifies
users or provides user preferences. Thus, we find one difference between
Kanevsky and the subject matter of claim 1 is that Kanevsky does not
describe "user profiles identifying preferences and terminal types used by a
respective one of the plurality of users." Since there is no user profile,
another difference is that Kanevsky does not determine a terminal type from
a user profile as recited in the limitation "a terminal type of the terminal used
by the requesting user being determined from a corresponding one of the
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user profiles based on the ID." Kanevsky directly uses a "unique mode
number," corresponding to the identifier (ID) for identifying a terminal type,
to look up a terminal type, instead of going first to a user profile.
Kanevsky's unique mode number is used to lookup terminal types as recited
in the limitation "said form that is compatible with the terminal being
determined by looking up the determined terminal type of the terminal used
by the requesting user in the terminal capability files." Although we point
out these differences, these differences are not argued.
The first issue then is whether one of ordinary skill in the art would
have been motivated to provide user profiles to identify terminal types of a
user in Kanevsky instead of directly looking up the terminal characteristics
in a table. Wong describes that a system may provide for terminal profiles
and user profiles where the user profile identifies the current terminal
associated with the user (col. 15, ll. 5-9). Wong describes that a terminal
profile for a selected terminal is consulted to decide what kind of conversion
is required in passing data to and from the terminals (col. 4, ll. 56-64).
Therefore, Wong would have reasonably suggested to a person of ordinary
skill in the art employing a user profile to indicate the terminal and
consulting a terminal profile file to indicate how the form of the information
must be changed to be compatible with a user's terminal. As noted by the
Examiner, the relevant teaching of Wong is the user profile and terminal
profile to convert the form of the information, not the call signaling system,
so the call signaling does not negate the motivation.
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The second issue is whether the combination of Kanevsky and Wong
contains all of the claim limitations. We find no missing limitations.
Appellant's argument that the combination would provide an additional
function of call handling does not address the proposed modification of
providing separate user profile and terminal capability file in Kanevsky
given the teachings of separate files in Wong.

Conclusion
Appellant has not shown that the Examiner erred in concluding that it
would have been obvious to combine the terminal profile and user profile
files of Wong with the system in Kanevsky to arrive at the claimed
invention. The rejection of claim 1 is affirmed. Appellant makes the same
arguments as to independent claim 9 (Br. 9-10) and therefore the rejection of
claim 9 is also affirmed.

Claim 35
The Examiner finds that Kanevsky, Wong, and Lonnroth disclose a
Service Enabling server including a list of selection identifiers for service
requests, the Service Enabling server replacing the name of the service
requests with the selection identifier and refers to column 6, line 53 to
column 7, line 9 of Kanevsky. Final Rej. 13.
Appellant argues that the Examiner erred in finding that columns 6-7
of Kanevsky describes the limitation of wherein "said Service Enabling
server includes a list of selection identifiers for service requests, said Service
Enabling server replacing the name of the service requests with the selection
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identifier in messages to the terminal to streamline the message forwarding
process" in claim 35. Br. 10. It is argued that this section deals with saving
a display mode as a mode number, which has nothing to do with using
selection numbers for particular service requests. Id. at 10-11.
The Examiner refers to the tables which contains display parameters
or characteristics associated with a display terminal which is identified by a
unique mode number. Ans. 36-37.
We agree with Appellant that the mode numbers in Kanevsky relate to
display parameters and do not relate to using selection numbers for
particular service requests. While the mode numbers might be a
replacement for names and similar in concept to replacing the name of a
service request with a selection identifier, the Examiner has not set forth any
obviousness reasoning to account for this difference. The rejection of
claim 35 is reversed.

Claim 20
The Examiner finds that the combination of Kanevsky and Wong does
not teach the limitations of claim 20. The Examiner finds that Martin
discloses providing an "auto-scroll" browser and concludes that it would
have been obvious to modify the combination of Kanevsky and Wong to
include an autoscrolling browser. Final Rej. 17.
Appellant argues that the Examiner erred in finding that the
autoscrolling feature of Martin meets the buffering limitation "wherein said
step of transmitting comprises buffering information, said step of buffering
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comprising sending the request to the Service Enabling server from one of
said plurality of terminals, sending from the Service Enabling server at least
a start of a message corresponding to the request, and placing a mark in the
Service Enabling server at an end of the message to indicate that the
message is continued in a next message to be sent from the Service Enabling
server, if further requested within a time limit" in claim 20. It is argued that
autoscrolling is not buffering. Br. 12.
The Examiner responds that autoscrolling requires buffering data so
that new information is presented when requested. Ans. 38-39.
Claim 20 appears to correspond to the mechanism for dealing with
messages longer than the size of one SMS message described in the
Specification at page 31, second paragraph.
Martin describes displaying content, such as advertisements, during
the time a mobile device is idle, i.e., "idle content display." Information is
arranged in "cards" grouped into a "deck" that is the smallest unit of HTML
information that can be exchanged between the wireless computing device
and the server. Col. 4, ll. 36-39. For example, in a 3-screen display, one
card per screen, each screen may be displayed for 30 seconds. Col. 8,
ll. 7-43. Martin describes that it is difficult to determine how much
information (e.g., text) will fit on a single small device screen and that it
would be optimal for the browser to "auto-scroll" the idle content without
user interaction. Col. 9, ll. 40-51. For example, the browser could display
the top portion of a first card (C1) for 2 seconds, then "auto-scroll" the
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content of card C1 vertically until the last line was viewable, and after 10
seconds navigate to the second card (C2). Col. 9, l. 60 to col. 10, l. 38.
While Martin appears to be doing somewhat the same thing of
breaking a message into several parts, each of which contains a card's worth
of information, we do not see how it meets the specific limitations of
claim 20. The Examiner only addresses the general buffering limitation and
does not explain how Martin teaches a "mark . . . at an end of the message to
indicate that the message is continued in a next message to be sent from the
Service Enabling server, if further requested within a time limit." It appears
that Martin automatically sends the message a card at a time and does not
use a mark to indicate that the message is continued. Thus, the Examiner
has failed to establish that Martin teaches the claimed limitation. The
rejection of claim 20 is reversed.

Claim 21
Appellant argues that the Examiner erred in finding that the
autoscrolling feature of Martin meets the limitation "wherein said step of
transmitting comprises buffering information, said step of buffering
comprising creating a message to be sent through the communications
network, wherein the message is too long to be sent at one time, specifying a
continuation mark for the message and sending a part of the message with
the continuation mark, sending a remaining part of the message omitting the
continuation mark, receiving the message parts at the Service Enabling
server and combining the message parts to create the message without the
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continuation mark, and sending the message to a destination in the
communications network" as recited in claim 21. It is argued that the
autoscrolling feature does not teach anything about sending the message in
sections or parts. Br. 13.
The rejection of claim 21 is reversed for the reasons discussed with
respect to claim 20.

Claim 34
The Examiner finds that Kanevsky and Wong do not teach requesting
a service using a first terminal and having information sent to a second
terminal of the user based on the user profile. The Examiner finds that Pepe
discloses a subscriber's preferred data for message delivery at column 14,
line 49 to column 15, line 31, and concludes that it would have been obvious
to modify Kanevsky to include delivery of information to a second terminal
given the teachings of Pepe. Final Rej. 20.
Appellant argues that the Examiner erred in finding that Pepe meets
the limitation of "requesting a service, by the requesting user, using a first
terminal, and sending in response to the request, by the Service Enabling
server, information related to the requested service to a second terminal of
the user instead of the first terminal based on the user profile which defines
the second terminal as an output terminal for that service" as recited in
claim 34. It is argued that Pepe merely discloses that a notification may be
sent to a second terminal, which does not teach or suggest that the requested
service is sent to another terminal. Br. 14. It is argued that Kotola discloses
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that a mobile station sends and receives a short message, which fails to teach
or suggest the limitation, id.; however, Kotola is not applied to claim 34.
Pepe describes that a user can have calls directed to his office or home
to be automatically forwarded to a rental portable phone. Col. 1, ll. 51-52.
Pepe describes that "[c]ertain data in a subscriber profile provides a
subscriber's preferred media for messages delivery and notification."
Col. 14, ll. 66-67. The Examiner does not explain where Pepe describes or
suggests requesting a service using a first terminal and having information
related to the requested service sent to a second terminal. The fact that Pepe
describes delivering messages to a preferred terminal does not meet the
whole limitation claimed, in particular, sending a requested service to
another terminal. Appellant has shown error in the Examiner's rejection.
The rejection of claim 34 is reversed.

Claim 22
The Examiner finds that Pepe discloses establishing and maintaining a
session, identifying a user requesting access to the session from a second
terminal (at col. 5, l. 41 to col. 6, l. 19), and joining the user from the second
terminal to the session (id.) as recited in claim 22. Final Rej. 25-26. The
Examiner finds that the combination of Kanevsky, Wong, and Pepe do not
teach converting the protocols and terminating access to the session from the
first terminal. The Examiner finds that Kotola describes a user sending a
transfer request to a server which returns a requested page and converting a
relevant part of the contents of the page into a short message. Id. at 26. The
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Examiner concludes that it would have been obvious to modify the
combination of Kanevsky, Wong, and Pepe to include converting the
protocols from the first terminal to the second terminal to continue the
session and terminating access to the session from the first terminal "since
Kotola suggests that it would be advantageous to render the various
information sources offered by Internet available to users of mobile stations
without any data transmission facilities." Id.
Appellant argues that the Examiner erred in finding that Pepe
discloses the sub-step of "joining the user from the second terminal to the
session" as recited in claim 22. It is argued that column 6, lines 11-18, of
Pepe referred to by the Examiner merely discloses that another terminal of
the user may be notified when a message is received. Br. 15. It is argued
that Kotola fails to teach the limitation because in the portion of Kotola
referred to by the Examiner, the mobile station sends and receives a short
message, which fails to teach or suggest the limitation. Id.
An example of the limitations in claim 22 is when a user has two
separate terminals and has started the session with one terminal and then
desires to continue the session with another terminal. Spec. 13, ll. 8-10.
Columns 5 and 6 of Pepe relied upon by the Examiner to teach the
sub-step of "joining the user from the second terminal to the session"
describes that a user may receive cross-media notification of incoming
messages, e.g., notification from a pager message that a voice mail message
was received, and media conversion, e.g., an e-mail message to be delivered
to a fax server. This does not teach joining a user from a second terminal to
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a session. The Examiner does not rely on Kotola for this limitation.
Accordingly, Appellant has shown error in the Examiner's rejection of
claim 22. The rejection of claim 22 is reversed.

Claims 2-8, 10-14, 23-25, 27-33, 37-41, 43-48, 53-55, 57, 60, and 61
Appellant argues that claims 2-8, 10-14, 23-25, 27-33, 37-41, 43-48,
53-55, 57, 60, and 61 are patentable because they are dependent on claims
which are patentable. Appellant does not argue the separate patentability of
these claims, so the rejections of these claims stand or fall with the rejections
of the claims from which they depend. Since we affirm the rejection of
independent claims 1 and 9, the rejections of claims 2-8, 10-14, 23-25,
27-33, 37-41, 43-48, 53-55, 57, 60, and 61 are affirmed.

CONCLUSION
The rejections of claims 1-14, 23-25, 27-33, 37-41, 43-48, 53-55, 57,
60, and 61 are affirmed.
The rejections of claims 20-22, 34, and 35 are reversed.

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Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

rwk

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