Ex Parte Chambers et al

Patent Trial and Appeal BoardDec 6, 2012

10951930 (P.T.A.B. Dec. 6, 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. 10/951,930 09/28/2004 Michael Dwayne Chambers CHAMBERS11-18-12 8712 50525 7590 12/07/2012 DUFT BORNSEN & FISHMAN, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 EXAMINER GENACK, MATTHEW W ART UNIT PAPER NUMBER 2644 MAIL DATE DELIVERY MODE 12/07/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL DWAYNE CHAMBERS, CYNTHIA FLORKEY, and RUTH SCHAEFER GAYDE ____________________ Appeal 2010-005295 Application 10/951,930 Technology Center 2600 ____________________ Before ROBERT E. NAPPI, DAVID M. KOHUT, and JOHN G. NEW, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005295 Application 10/951,930 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-10 and 12-20.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. INVENTION The invention is directed to a system and method for providing message prioritization in a store-and-forward data communication network. Spec. 2. Claim 1 is representative of the invention and is reproduced below: 1. A store-and-forward data communication system, comprising: a store-and-forward network having a priority system configured to receive a request from an originating communication device for the generation of a priority level for priority processing of said store-and-forward message received from said originating communication device; said generated priority level is based on the or other indicia of said originating communication device; an MSC is configured to receive the store-and-forward message from the originating communication device, wherein the received a store-and-forward message defines a request for immediate generation of a priority level for the received a store- and-forward message, said priority processing includes the immediate processing of said received request including the immediate generation of said priority level for the received store-and- forward message; said MSC is responsive to the receipt of said store-and- forward message to; store the received store-and-forward request in a queue based on said priority level, said MSC processes the store-and-forward message according to the position of said received message in a priority queue; 1 Claim 11 was previously cancelled. Appeal 2010-005295 Application 10/951,930 3 a communication network coupled to the MSC and adapted to receive the store-and-forward message from the MSC, and further adapted to transmit the store-and-forward message to a destination originating communication device based of the priority level granted to said received store-and- forward message; said destination communication device may be served by a system having another network node; and said store-and-forward system is responsive to the received a store-and-forward request to determine whether said store-and-forward system is in an emergency state; and said store-and-forward system controllably serves the received a store-and-forward message request with or without priority if said store-and-forward system is not in an emergency state. REFERENCES Bedwell Oren US 6,522,635 B1 US 6,795,541 B2 Feb. 18, 2003 Sep. 21, 2004 REJECTIONS AT ISSUE Claims 1-10 and 12-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Oren and Bedwell. Ans. 3-6. Appeal 2010-005295 Application 10/951,930 4 ISSUES2 1. Did the Examiner err in finding that the combination of Oren and Bedwell teaches or suggests the claimed invention? 2. Did the Examiner err in finding that the combination of Oren and Bedwell teaches or suggests: a. wherein the MSC queries a Service Control Point (SCP) for the priority level of the received store-and-forward message from said originating communication device? b. a Home Location Register (HLR) that provides the priority level or wherein the store-and-forward network includes both the HLR and a Visitor Location Register (VLR) that provide the priority level for a received request? 2. Did the Examiner err in finding it obvious to combine Oren and Bedwell? ANALYSIS 35 U.S.C. § 103(a) Rejections – Oren and Bedwell Claims 1, 12, and 18 Appellants contend that the combination of Oren and Bedwell fails to disclose every limitation required by the claims. App. Br. 10; Reply Br. 10. 2 We note that Appellants present arguments on pages 3-7 and 10-12 of the Reply Brief directed to Bedwell’s teachings, whether the combination of Oren and Bedwell has a reasonable expectation of success, and whether the references are non-analogous art. However, these arguments were presented for the first time in the Reply Brief and have not been considered as they are deemed waived. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address argument in Reply Brief that could have been presented in the principal Brief). Appeal 2010-005295 Application 10/951,930 5 Appellants argue that Oren is not a valid reference, because the reference’s drawings merely show a “plurality of empty circles” and do not disclose the claimed invention. App. Br. 10. The Examiner finds that Oren teaches nearly every limitation required by independent claim 1, and as similarly required by independent claims 12 and 18. Ans. 3-5. In addressing each element of the claim, the Examiner provides specific citations pointing to the reference’s specification as well as the figures. Ans. 3-5. The Examiner finds that Oren’s specification clearly describes the context in which the circles in Figs. 1 and 2 exist, including the transmission and processing of multimedia messages by a communication system, comprising an MSC, based on priority considerations. Ans. 8 (citing Oren, col. 3, ll. 41-48 and 63-65; col. 5, ll. 18-31 and 36-55). We agree with the Examiner’s findings, which are based on detailed factual findings that are supported by the references of record. Appellants contend that Oren does not teach or suggest priority service to all call requests, and instead provides priority service for messages only after a voice call attempt fails. App. Br. 11. The Examiner finds that each multimedia message generated in Oren’s system is capable of receiving priority processing. Ans. 9 (citing Oren, col. 5, ll. 47-55). Examiner also finds that none of the pending claims recite the requirement that controllable priority service be offered for every store-and-forward message request. Ans. 9. We agree with the Examiner’s findings. We also note that the features upon which Appellants rely (i.e., “provide controllable priority service for all store-and-forward message requests,” App. Br. 11) are not recited in the rejected claims. Although the claims are interpreted in light of Appeal 2010-005295 Application 10/951,930 6 the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Appellants further contend that Oren does not teach or suggest various limitations of claim 1. App. Br. 11-12. However, Appellants merely state the claim language allegedly absent from the prior art without citing any evidence to distinguish the claimed invention from the prior art. As such, Appellants' statements are considered to be nothing more than general allegations of patentability and are not considered separate patentability arguments. See 37 C.F.R. §41.37(c)(1)(vii) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Claims 4, 5, and 9 Appellants also contend that the combination of Oren and Bedwell does not disclose an MSC or an SCP, as required by claim 4 and as similarly required by claim 5. App. Br. 12 and 15. The Examiner finds that Oren discloses the presence of an MSC. Ans. 11 (citing Oren, col. 1, ll. 49-56; col. 2, ll. 7-10; col. 3, ll. 41-48). The Examiner also finds that in order for Oren’s telephone system to offer multimedia services, the system must have a service control point (SCP). Ans. 6 and 11-12. That is, an SCP is merely a device in an intelligent network used to control a service offered by the network. Ans. 11. As such, the Examiner finds that since Oren’s MMS Appeal 2010-005295 Application 10/951,930 7 server is used to control the MMS service, the MMS server constitutes an SCP. Ans. 12. Appellants have not cited any evidence to rebut the Examiner’s findings. Thus, we agree with the Examiner. Appellants further contend that Oren does not teach or suggest a home location register (HLR) or visitor location register (VLR), as required by claim 9. App. Br. 12. The Examiner finds that a mobile telephone system must include HLRs and VLRs, because any mobile network must have a means for storing information associated with home subscribers and visitor subscribers in order to process calls. Ans. 6 and 12. Appellants have not cited any evidence to rebut the Examiner’s findings. We additionally note that Appellants’ disclosure of prior art SMS systems supports the Examiner’s finding that a HLR and a VLR are elements of a mobile communications network. Spec. 2, ll. 3-16, and FIG. 1. Accordingly, we agree with the Examiner. Appellants next contend that the combination of Oren and Bedwell is based upon hindsight reasoning and there is no evidence supporting the conclusion of obviousness. App. Br. 13; Reply Br. 8-9 and 12. We disagree and add the following for emphasis. First, as explained in In re McLaughlin: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Our review of the record establishes that the Examiner’s case for obviousness is only based on knowledge which was within the level of Appeal 2010-005295 Application 10/951,930 8 ordinary skill at the time of Appellants’ invention and does not include knowledge gleaned only from the Appellants’ disclosure. Second, the Examiner identifies the relevant portions of each of the references relied on throughout the Examiner’s Answer. See Ans. 3-6. To the extent that the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In this case, the Examiner’s conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record. See Ans. 3-15. Thus, we agree with the Examiner’s findings and conclusions. Appellants further contend that there is no motivation to combine the references. App. Br. 14; Reply Br. 9. We disagree. The Supreme Court stated that an explicitly stated motivation to combine the references is seen Appeal 2010-005295 Application 10/951,930 9 as “helpful insight,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), but that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 416. The Examiner relies on Oren for teaching all elements in claim 1 except for immediate priority level generation for a received message and determining whether the system is in an emergency state. Ans. 3-4. The Examiner applies Bedwell to show that it was known in the art to immediately set priority levels for store-and-forward messages and to determine an emergency state. Ans. 4-5. Both of the references pertain to switching and message processing. Ans. 8-9. Therefore, we agree with the Examiner (Ans. 5) and we consider the addition of Bedwell’s immediate priority level generation and emergency state determining features to Oren’s store-and-forward system with priority processing to be no more than a simple arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 420-21. We concur with the Examiner's findings and note that Appellants have not cited to any evidence to support the assertion that the combination of Oren’s priority- enabled store-and-forward system with Bedwell’s immediate priority level generation and emergency state determining features was “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Appeal 2010-005295 Application 10/951,930 10 Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Additionally, although not required, the Examiner finds a specific motivation for the combination of Oren and Bedwell. Ans. 5. Specifically, the Examiner finds that the combination would have been obvious in order to minimize congestion in the system. Ans. 5. We find the Examiner’s motivation to be reasonable, and Appellants fail to address the Examiner’s specific findings. Thus, we agree with the Examiner. Claims 2, 3, 6, 8, 13-17, and 19-20 Regarding dependent claims 2, 3, 6, 8, 13-17, and 19-20, Appellants merely restate various claim limitations and assert that the cited references fail to teach these limitations. App. Br. 15-18; Reply Br. 5-7. As such, Appellants' statements are considered to be nothing more than general allegations of patentability and are not considered separate patentability arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement Appeal which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). For all the reasons stated supra, we do not find Appellants’ arguments to be persuasive. Therefore, we sustain the Examiner’s rejection of claims 1-10 and 12-20. Appeal 2010-005295 Application 10/951,930 11 CONCLUSIONS 1. The Examiner did not err in finding that the combination of Oren and Bedwell teaches or suggests the claimed invention. 2. The Examiner did not err in finding that the combination of Oren and Bedwell teaches or suggests: a. wherein the MSC queries a Service Control Point (SCP) for the priority level of the received a store-and-forward message from said originating communication device. b. a Home Location Register (HLR) that provides the priority level or wherein the store-and-forward network includes both the HLR and a Visitor Location Register (VLR) that provide the priority level for a received request. 3. The Examiner did not err in finding it obvious to combine Oren and Bedwell. SUMMARY The Examiner’s decision to reject claims 1-10 and 12-20 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)(iv) (2011). AFFIRMED tj