Ex Parte Ichihara

Patent Trials and Appeals Board

Jan 30, 2013

11004814 - (D) (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 01/31/2013
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
01/31/2013 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
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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 APPEAL

Appeal 2010-009870
Application 11/004,814

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-4, 6-8, 10, 11, 13-19, 23 and 25 (App. Br. 4). Claims 5, 9, 12, 20-
22 and 24 were cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Exemplary Claim 1 follows:
1. A server for sending/receiving data from/to a plurality
of mobile communication terminals and a computer through a
network, the server comprising:

a database for storing data used by the respective mobile
communication terminal for each mobile communication
terminal; and

a controlling unit for controlling the server and for
controlling communication between the server and the mobile
communication terminal and communication between the server
and the computer,

wherein the controlling unit inputs data transmitted from
the computer to the database and transmits the data stored in the
database to the mobile communication terminal in response to a
request from the mobile communication terminal, the server
further comprising:

a WEB page database for storing a plurality of WEB
pages respectively corresponding to plural kinds of mobile
communication terminals;

changing means for changing a format of a WEB page to
be sent to a respective mobile communication terminal based on
mobile communication terminal model information of the
respective mobile communication terminal that is provided by a
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Application 11/004,814

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user of the computer during a login state between the computer
and the server; and

means for sending a data upload program to the mobile
communication terminal along with the WEB page,

wherein the format of the WEB page is changed to a
format suitable for the respective mobile communication
terminal, and is sent to the respective mobile communication
terminal.

Claims 1-4, 6-8, 10, 11, 13-19, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hall (U.S. Patent No. 6,356,543 B2) in
view of Granade (U.S. Patent Publication No. 2002/0103881 A1) and
Mahajan (U.S. Patent Publication No. 2004/0127205 A1) (Ans. 3-8).
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hall in view of Bridges (U.S. Patent Publication No.
2003/0186695) and Granade (Ans. 8-10).

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in concluding that the combination of
Hall, Granade, and Mahajan teaches “sending a data upload program to the
mobile communication terminal along with the WEB page,” as recited in
independent claim 1, and as similarly recited in independent claims 8 and
16?
2. Did the Examiner err in concluding that the combination of
Hall, Granade, and Mahajan teaches “data retrieved from the server and
provided to the mobile communication terminal is compared to data
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currently stored in the mobile terminal database prior to retrieving of the
data from the server, to determine whether or not any of the data currently
stored in the mobile terminal database is to be overwritten with the data
retrieved from the server”, as recited in dependent claim 25?
3. Did the Examiner err in concluding that the combination of
Hall, Bridges, and Granade teaches that an email received from a server
“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,” as recited
in independent claim 23?

ANALYSIS
Rejection of Claims 1-4, 6-8, 10, 11, 13-19, and 25 As Obvious Under 35
U.S.C. § 103(a) Over Hall, Granade, and Mahajan
Appellant contends that independent claim 1 is not obvious because
the combination of Hall, Granade, and Mahajan does not disclose the claim
limitation from claim 1 quoted above (App. Br. 16). In support of this
contention, Appellant argues that Mahajan does not disclose “the sending of
a data upload program to the mobile communication terminal along with the
WEB page” (id. (emphasis omitted)).
The Examiner, however, reasoned that the combination of references
teaches this claim limitation because Granade discloses that a server uploads
“a web page to be displayed in a mobile device” (Ans. 11) 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”
(id.). In response to the Examiner’s reasoning, Appellant argues that in
Mahajan “the application programs are not data upload programs, but rather
they are ‘games, ring tones, etc.’” (App. Br. 18).
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We conclude, however, that Appellant’s arguments urging
patentability are predicated on non-functional descriptive material, i.e., the
content of a program that is sent and received. The informational content of
non-functional descriptive material is not entitled to weight in the
patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(“Lowry does not claim merely the information content of a memory. . . Nor
does he seek to patent the content of information resident in a database.”).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative)
(Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006).
This reasoning is applicable here. Accordingly, we will sustain the
Examiner’s rejection of representative claim 1, and independent claims 8
and 16 that fall therewidth. See 37 C.F.R. § 41.37(c)(1)(vii). We will also
sustain the Examiner’s rejection of dependent claims 2-4, 6, 7, 10, 11, 13,
14, and 17-19 because Appellant did not set forth any separate patentability
arguments for those claims (see App. Br. 16-19). See 37 C.F.R. §
41.37(c)(1)(vii).
Appellant also contends that the Examiner erred in rejecting
dependent claim 25 as obvious because the combination of Hall, Granade,
and Mahajan does not teach the claim limitation emphasized above (App.
Br. 19-20). In support of this contention, Appellant argues that “the fact that
Hall teaches a URL locator functionality, and the fact that Granade teaches
mobile communication terminals with e-mail capability, and the fact that
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Mahajan teaches OTAF user's data overwriting/updating a database, falls
well short of the specific features recited in claim 25” (id. at 20).
The Examiner concluded, however, that
[w]hether the data retrieved from the server and provided to the
mobile communication terminal is compared to data currently
stored in the mobile terminal database prior to retrieving of the
data from the server, to determine whether or not any of the
data currently stored in the mobile terminal database is to be
overwritten with the data retrieved from the server, as argued
by the appellant constitutes the intended use of the product's
structural invention elements

(Ans. 12). We disagree with the Examiner. Claim 25 does not merely recite
a purpose or intended use for a structure but rather, positively recites
comparing the data received at the mobile with the data stored at the mobile.
Accordingly, we find error in the Examiner’s rejection of claim 25.

Rejection of Claim 23 As Obvious Under 35 U.S.C. § 103(a) Over Hall,
Bridges, and Granade
Appellant argues that the Examiner erred in rejecting independent
claim 23 as obvious because the combination of Hall, Bridges and Granade
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” (App. Br. 21 (emphasis omitted)). We conclude,
however, that Appellant’s arguments urging patentability of claim 23 are
predicated on non-functional descriptive material that is not entitled to
weight in a patentability analysis, i.e., the content of an email that is sent and
received. Accordingly, we find no error in the Examiner’s rejection of
independent claim 23.

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Application 11/004,814

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DECISION
We affirm the Examiner’s decision rejecting claims 1-4, 6-8, 10, 11,
13-19 and 23 under 35 U.S.C. § 103(a) and reverse the rejection of claim 25
under 35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART

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