Ex Parte Krco et al

Patent Trial and Appeal Board

Apr 29, 2016

13140243 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,243 10/20/2011
120491 7590 05/03/2016
Leffler Intellectual Property Law, PLLC
2010 Corporate Ridge
Suite 700
McLean, VA 22102
FIRST NAMED INVENTOR
Srdjan Krco
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0110-724 6679
EXAMINER
ZEWDU, MELESS NMN
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
info@leffleriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRDJAN KRCO and MATTIAS ELD
Appeal2014--008915
Application 13/140,243
Technology Center 2600
Before ST. JOHN COURTENAY III, CATHERINE SHIANG and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-19 and 21, which are all the claims pending in the
application. Claim 20 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Invention
The claimed invention on appeal is directed to "a network node, a
telecommunications network and a method for distributing an application,
Appeal2014--008915
Application 13/140,243
typically through a telecommunications network such as, non-exclusively, a
public land mobile network." (Spec. 1.)
Representative Claim
1. A network node comprising:
an input;
a processor; and
an output,
the processor being coupled to the input and the output;
the input and output both being connected to at least one
network;
[L 1] in which the processor is arranged so as to receive from
the input an executable application and an associated set of
requirements for the application; and
in which the processor is arranged to determine, on receipt of an
application and the associated set of requirements; a set of destination
network nodes which are reachable through at least one network to
which the output is connected based upon the requirements and to
send the application to the destination nodes through the output.
(Emphasis added regarding the contested limitation, labeled as L 1 ).
Rejection
Claims 1-19 and 21 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Wang et al. (US
7,283,539 B2; issued October 16, 2007), and Lundblade et al. (US 7,099,663
B2; issued August 29, 2006).
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Application 13/140,243
Contentions
Regarding the rejection of claim 1, Appellants particularly contend,
inter alia:
According to the Examiner, Wang's block 100 (see Fig. 2 and
details shown in Fig. 3A) corresponds to Appellants' claimed
"processor". The Examiner rightly acknowledges that Wang fails to
disclose Appellants' claimed "the processor [being] arranged so as to
receive from the input ... an associated set of requirements for the
application" but fails to observe that Wang also fails to disclose:
• the processor is arranged so as to receive from the input an
executable application (emphasis added)
In support of the rejection, the Examiner contends that the
above limitation is taught by Wang in the abstract and in column 3,
lines 54 - 67. This is not correct. To the contrary, the paragraphs relied
upon by the Examiner teach that the application resides somewhere
else and is not received by the Application Management System 100
(equated by the Examiner with the processor of claim 1 ). For
example, in column 3, lines 54 - 56, Wang teaches
The AMS 100 is used to manage the message-based
application 80 offered in the network 90 as well as to manage
the VASP 82 providing the application 80. The message-based
application 80 uses the message 84 sending and receiving
capability of the network 90 to receive service requests and
information from the subscriber 96 and to send service
information and content to the subscriber 96.
When a reader consults Wang's Fig. 1, it is clear that what the
AMS 100 receives is not the application 80 itself, but only messages
84 from the application 80. The AMS 100 can also send messages 84
to the application 80.
(App. Br. 5-6.)
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Appeal2014--008915
Application 13/140,243
The Examiner disagrees, and further explains the basis for the
rejection:
In that appellant is misunderstanding or mischaracterizing the phrase
"message based application". The message, according to the prior
art, is used as a vehicle to deploy third party applications to
subscribers. This is well stated in the background section of Wang's
reference as "with the introduction of messaging capability (e.g.,
Short Message Service (SMS) ---- a new vehicle for application
delivery has been created. Applications based on this messaging
infrastructure are being developed and deployed in numerous
communication networks. In an effort to maximize the number of
applications available to their subscribers, network operators are
embracing third party providers of these applications known as Value
added Service Providers (VASP)" (see background). Appellant's
reading and understanding of the prior art, "message based
application" is thus, different than the above definition or
characterization. That is[,] the message and the applications are
inseparable. That is, the SMS message is used, as a vehicle, to carry
and deploy the V ASP application to subscribers via AMS
(Application Management System). Examiner's citation of the
;;message based application;; as depicted in (fig. 2) is based on this
definition or characterization, which would have been clear had
applicant considered the reference as a whole.
(Ans. 8-9.)
ISSUE
Under § 103, did the Examiner err by finding the cited combination of
Wang and Lundblade would have taught or suggested at least limitation L 1,
"in which the processor is arranged so as to receive from the input an
executable application and an associated set of requirements for the
application," within the meaning of representative claim 1? (Emphasis
added.)
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Appeal2014--008915
Application 13/140,243
ANALYSIS
The contested limitation of independent claim 1 recites, inter alia, the
receiving of an executable application by a processor from an input.
Similarly, independent claim 13 recites, inter alia, the sending of an
application to a distribution network node. The Examiner cites to Wang in
support of the rejection, specifically citing to the Abstract and column 3,
lines 54---67. (Ans. 3). Although the Abstract refers to managing and
providing a message-based application to a subscriber, we find neither of
the cited portions of Wang teaches or suggests sending or receiving an
application. Wang, at column 3, lines 26-32, instead describes:
The V ASP 82 provides an application 80 which is used by the
subscriber 96. The application 80 can provide services such as
personalized content, streaming media, games or other similar
services. Application 80 delivery takes the form of messages 84 being
passed between the subscriber 96 and the application 80 typically
running (executing) on an application server. (Underline added).
Wang explicitly discloses that application delivery consists of
messages being passed between the subscriber and the application. (Id.)
This message passing is depicted in Wang's Figure 1, where application 80
communicates via the network with subscriber 96, using bi-directional
messages 84.
The Examiner contends that SMS messages are "used, as a vehicle, to
carry and deploy the V ASP application to subscribers via [the] AMS
(Application Management System)," and that "[ o ]ne of ordinary skill in the
art would also understand that the VASP (value added) application, within
the context [of] Wang's reference, is executable by the subscriber device."
(Ans. 9, emphasis added.)
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Appeal2014--008915
Application 13/140,243
We find the Examiner's findings are not supported in Wang. Wang
expressly describes: "Application 80 delivery takes the form of messages 84
being passed between the subscriber 96 and the application 80 typically
running (executing) on an application server." (Wang, col. 3, 11. 29-32.)
Additionally, the Examiner's findings regarding what one of ordinary skill in
the art would have understood are unsupported by evidence in the record.
Therefore, we find a preponderance of the evidence supports
Appellants' argument (App. Br. 7) there is no teaching in Wang "in which
the processor is arranged so as to receive from the input an executable
application and an associated set of requirements for the application," as
recited in claim 1. Nor has the Examiner shown the aforementioned
deficiencies in Wang regarding the claimed executable application are
overcome by Lundblade. (Final Act. 3.)
Independent Claim 13
Remaining independent method claim 13 more broadly recites the
sending of an application to a distribution network node, as noted above.
However, as discussed above regarding claim 1, Wang sends messages, not
applications. (Wang, col. 3, 11. 29-32.)
Accordingly, for the aforementioned reasons, we reverse the
Examiner's obviousness rejection of independent claims 1 and 13 over the
combination of Wang and Lundblade. Because we have reversed the
rejection of each independent claim on appeal, we also reverse the§ 103
rejection of each associated dependent claim.
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Application 13/140,243
Conclusion
On this record, and by a preponderance of the evidence, we are
persuaded the Examiner erred in rejecting claims 1-19 and 21 under§ 103,
for at least the reasons argued on pages 5---6 of the Brief, as further discussed
above. 1 2
1 We direct the Examiner's attention to dependent claim 9 to determine
whether this claim meets the requirements of 35 U.S.C. § 112, i-f 4, for
failing to further limit the subject matter of claim 1. Claim 9 recites, "A
telecommunications network comprising a plurality of network nodes ...
according to claim 1 .... " (Emphasis added). However, claim 9 fails to
further limit the subject matter (structure) of apparatus claim 1, to which it
refers ("A network node comprising:"), because of claim 9's
"telecommunications network" that is outside the scope of the apparatus of
claim 1. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed.
Cir. 2006). ii.Jthough the Board is authorized to reject claims under 37
C.F .R. § 41.50(b ), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.
2 Claim 15 recites and refers to: "The method of claim 11 .... " However,
claim 11 is directed to an apparatus: "The telecommunications network of
claim 10 .... " We direct the Examiner's attention to dependent claim 15 to
determine whether claim 15 meets the requirements of 35 U.S.C. § 112, i-f 2.
See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005); see also In re Katz Interactive Call Processing Patent Litigation,
639 F.3d 1303, 1318 (Fed. Cir. 2011). In each of these cases, the Federal
Circuit held claims indefinite for combining two classes of invention.
Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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Application 13/140,243
DECISION
We reverse the Examiner's rejection of claims 1-19 and 21 under
§ 103(a).
REVERSED
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