Ex Parte Ichihara

Patent Trial and Appeal BoardJan 30, 2013

11004814 (P.T.A.B. Jan. 30, 2013)

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. 11/004,814 12/07/2004 Masaki Ichihara 016891-0874 3833 22428 7590 04/19/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER GONZALEZ, AMANCIO ART UNIT PAPER NUMBER 2642 MAIL DATE DELIVERY MODE 04/19/2013 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 MASAKI ICHIHARA ____________ Appeal 2010-009870 Application 11/004,814 Technology Center 2600 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-009870 Application 11/004,814 2 ANALYSIS Appellant filed a Request for Rehearing on March 29, 2013 (“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal mailed on January 31, 2013 (“Decision”) affirming the Examiner’s rejection of claims 1-4, 6-8, 10, 11, 13-19 and 23. We have reconsidered our Decision, in light of Appellant’s arguments in the Request, and we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change our prior Decision for the reasons discussed infra. Appellant continues to contend that independent claims 1, 8, and 16 are not obvious because the combination of Hall, Granade, and Mahajan does not disclose the “feature of ‘means for sending a data upload program to the mobile communication terminal along with the WEB page’" (Request 5). In particular, Appellant argues that the “claimed features of independent claims 1, 8, and 16 should be accorded patentable weight” (id. at 6). We are not persuaded, however, that the Examiner erred in concluding that the claim limitation in dispute is rendered obvious by the combination of Hall, Granade, and Mahajan. As we previously explained, the Examiner “reasoned that the combination of references teaches this claim limitation because Granade discloses that a server uploads ‘a web page to be displayed on a mobile device’ and Mahajan ‘clearly explains that data upload to a mobile station is not limited to a single data type, but that other applications and programs can be uploaded’” (Decision 4 (citations omitted)). As we further explained, “[i]n response to the Examiner’s reasoning, Appellant argues that in Mahajan ‘the application programs are not data upload Appeal 2010-009870 Application 11/004,814 3 programs, but rather they are ‘games, ring tones, etc.’” (id. (citations omitted). We maintain our previous conclusion that Appellant’s arguments urging patentability are predicated on non-functional descriptive material, i.e., the data upload program that is sent and received. That is, we conclude that claims 1, 8, and 16 cannot be distinguished over the prior art on the ground that they require sending a data upload program instead of the application program taught by the prior art because the data upload program is mere non-functional descriptive matter. In other words, sending a data upload program instead of some other type of program does not affect or relate to any function recited in the other portions of the claims. Appellant also continues to contend that independent claims 23 is not obvious because the prior art does not teach that “the e-mail identifies a URL to access a WEB page by which the user of the mobile communication terminal can access the data stored at the server” (Request 9). In particular, Appellant argues that the “the recited feature is part of the actual function of the claimed "mobile communication terminal" which includes downloading data stored on the server, which is part of the utility of the disclosed invention” (id. at 10). We maintain our previous conclusion that Appellant’s arguments urging patentability are predicated on non-functional descriptive material, i.e., the content of an email. In particular, claim 23 does not require a user to access data on a server by accessing a WEB page identified by a URL in an email. It instead merely recites that the URL in the email could be used for that purpose. In other words, the email recited in claim 23 does not affect or relate to any function recited in claim 23. Appeal 2010-009870 Application 11/004,814 4 Accordingly, Appellant has not persuaded us that we misapprehended or overlooked any points in rendering our Decision. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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). DENIED tkl