Ex Parte Lazaridis et al

Patent Trial and Appeal Board

Dec 6, 2012

09783726 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIHAL LAZARIDIS and GARY P. MOUSSEAU
____________________

Appeal 2012-012222
Application 09/783,726
Technology Center 2400
____________________

Before: DAVID M. KOHUT, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012222
Application 09/783,726

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 102-109, 111, 112 and 122-129. Claims 1-101, 110 and 113-121
have been cancelled previously. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The claims are directed to a system and method for pushing
information from a host system to a mobile data communication device.
Claim 102, reproduced below, is illustrative of the claimed subject matter:
102. A method of pushing user data items from a messaging
host system to a wireless mobile data communication device
that is associated with a user having a mailbox at the messaging
host system, the method comprising:
receiving notifications at a redirector component
indicating receipt of user data items by the messaging host
system, wherein the notifications are received in response to
receipt of the user data items at the messaging host system;
processing the user data items by the redirector
component to add address information associated with the
wireless mobile data communication device; and
causing to continuously redirect the user data items to the
wireless mobile data communication device over a wireless
network without establishing a connection therewith.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Eggleston
Murota
US 5,764,899
US 6,289,105 B1
Jun. 9, 1998
Sep. 11, 2001
Appeal 2012-012222
Application 09/783,726

3
Software for Lotus cc:Mail Wireless, Communication Client Guide,
Motorola, 1995; hereinafter AirMobile Client.
AirMobile Wireless Software for Lotus cc:Mail, Communication Server
Guide, Motorola, 1995; hereinafter AirMobile Server.

REJECTIONS1
The Examiner made the following rejections:
Claims 102-104, 106-109, 111, 112,2 122 and 124-129 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over AirMobile Client and
Eggleston. Ans. 5.
Claims 105 and 123 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AirMobile Server, AirMobile Client, Eggleston and
Murota. Ans. 9.

APPELLANTS’ CONTENTIONS
1. The AirMobile Server and AirMobile Client references “[do] not
teach or suggest the claimed ‘push’ paradigm wherein a redirector
component causes to continuously redirect the user data items from the
messaging host system to the user's wireless mobile data communication
device.” App. Br. 12.
2. AirMobile Client’s disclosure of being “connected without
maintaining a session” (AirMobile Client 30), leads to the conclusion that
the reference “does not teach or suggest the feature of ‘causing to

1 Based on Appellants' arguments, we will decide the appeal of claims 102-
104, 106-109, 111, 122 and 124-129 based on claim 102 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
2 Although omitted from the listing of rejected claims, the rejection of claim
112 is detailed in the body of the rejection and acknowledged as rejected by
Appellants. See App. Br. 8 and Ans. 9.
Appeal 2012-012222
Application 09/783,726

4
continuously redirect the user data items… without establishing a connection
therewith’ as claimed.” App. Br. 13
3. Eggleston’s “sessionless mode” provides a “virtual session
connection” and, as such, is “[not] the same as or equivalent to the claimed
feature reciting ‘without establishing a connection herewith.’” App. Br. 20.
4. Expert Declarations submitted by Appellant in an interference
proceeding in a related application support a conclusion that “the
Eggleston/AirMobile communication system cannot reasonably be
characterized as a communication system that can support continuous
redirection of user data items as set forth in the claims on appeal.” App. Br.
27.
ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9-27),
the issue presented on appeal is whether the Examiner erred in concluding
that the combination of AirMobile Client and Eggleston teaches or suggests
a step of “causing to continuously redirect the user data items to the wireless
mobile data communication device over a wireless network without
establishing a connection therewith,” as required by independent claim 102.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Appeal 2012-012222
Application 09/783,726

5
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.
“Push Paradigm”
In connection with contention 1, to the extent that Appellants’
arguments are based on a “‘push’ paradigm” (App. Br. 10), the push feature
is recited only in the preamble of the disputed claim and not otherwise
referenced in the body of the claim.
“Generally . . . the preamble does not limit the claims.” Allen Eng'g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed.Cir. 2002).
Nonetheless, the preamble may be construed as limiting “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed.Cir.2002), quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999). A preamble is not
regarded as limiting, however, “when the claim body describes a structurally
complete invention such that deletion of the preamble phrase does not affect
the structure or steps of the claimed invention.” Catalina, 289 F.3d at 809.
Furthermore, the preamble has no separate limiting effect if, for example,
“the preamble merely gives a descriptive name to the set of limitations in the
body of the claim that completely set forth the invention.” IMS Tech., Inc. v.
Haas Automation, Inc., 206 F.3d 1422, 1434-35 (Fed.Cir.2000). See also
Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010.)
The preamble of claim 102 merely gives a descriptive name to the
limitations set forth in the body of the claim that otherwise completely set
forth the invention and does not limit the structure of the claimed device. We
conclude that the preamble of claim 102 does not affect the steps of the
Appeal 2012-012222
Application 09/783,726

6
claimed invention and its recitations are not necessary to give meaning to the
claim. Therefore, the preamble does not limit the claim, and we will not give
it patentable weight.
For the reasons set forth supra, Appellants’ arguments that the
AirMobile Client disclosure describes a polling rather than a push system
(App. Br. 12) are not persuasive of Examiner error.
Furthermore, to the extent that Appellants argue that the alleged
failure of AirMobile Client to teach a “push paradigm” leads to a conclusion
that the reference further fails to teach or suggest a step wherein “a
redirector component causes to continuously redirect the user data items
from the messaging host system to the user's wireless mobile data
communication device,” (id) we find such argument unpersuasive of
Examiner error for several reasons. As an initial point, Appellants fail to
detail why a push paradigm is required to meet the disputed claim
limitations or why a polling paradigm (as alleged by Appellants to be taught
by AirMobile Client) would exclude satisfying the disputed claim language.
Nor do Appellants otherwise explain why the disputed claim language is not
met by the applied AirMobile Client reference. Still further, to the extent
that AirMobile Client discloses polling of an internal mail server to identify
new email messages, such polling does not diminish or otherwise detract
from the explicit disclosure that the retrieved messages are “pushed” out to
clients. AirMobile Client 30. Therefore, we are not persuaded by
Appellants’ contention of Examiner error. We instead agree with the
Examiner’s analysis and conclusion that AirMobile Client teaches or
suggests the disputed claim limitations. See Ans. 11.
Appeal 2012-012222
Application 09/783,726

7
Continuously Redirect Without Establishing a Connection
In connection with contention 2, Appellants argue that AirMobile
Client’s disclosure of being “connected without maintaining a session”
(AirMobile Client 30), leads to a conclusion that the reference “does not
teach or suggest the feature of ‘causing to continuously redirect the user data
items…without establishing a connection therewith’ as claimed.” App. Br.
13. The Examiner responds that AirMobile discloses a virtual wireless
communication channel and Eggleston discloses “that messages are
‘continuously redirected’ across the virtual channel without ‘establishing a
connection’, since the data is ‘delivered in a sessionless mode.’” Ans. 12
citing to Eggleston, col. 7, ll. 10-11. Thus, the asserted deficiency of
Airmobile Client is cured by Eggleston. Therefore Appellants’ contention
does not persuade us of error on the part of the Examiner because the
Appellants are responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Therefore we find Appellants’ contention 2 to be unpersuasive of
Examiner error.
Appeal 2012-012222
Application 09/783,726

8
Equivalence of Sessionless Mode to Without Establishing a Connection3
In connection with contention 3 above, Appellants fail to provide
persuasive argument or sufficient evidence supporting a conclusion that the
Eggleston disclosure of delivering data in a sessionless mode would NOT
have taught or at least suggested to one of ordinary skill the disputed
limitation of without establishing a connection.
We note that, during examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). In the
present case, Appellants have failed to provide a definition of “without
establishing a connection” or persuasive argument or sufficient evidence in
support of why disclosure of a sessionless mode according to Eggleston
would NOT teach or suggest such limitation. We therefore find the
Examiner’s position that Eggleston’s sessionless mode teaches or suggests
“without establishing a connection” to be reasonable and agree that the
combination of AirMobile Client and Eggleston teaches or suggests the
disputed limitation.
Furthermore, we agree with the Examiner that the disputed claim
language does not “preclude the client and server from establishing a

3 Appellants raise two additional contentions that are not relevant to our
analysis or decision including (i) similarities between the AirMobile and
Eggleston disclosures, both having originated from Motorola (App. Br. 14-
15); and (ii) the Examiner’s use, in addressing arguments previously
asserted by Appellants, of the phrase “regardless of the availability of the
wireless device” in association with the claim language “without
establishing a connection therewith” (App. Br. 15 and Ans. 12-13.)
Appeal 2012-012222
Application 09/783,726

9
connection at any time.” Ans. 12. Thus, it is irrelevant if the virtual session
of Airmobile and Eggleston is established prior to messages being identified
and redirected so long as redirection is performed without establishing a
connection whether or not a previously established connection has been used
and/or is maintained.
Appellants further argue that Eggleston’s “sessionless mode” provides
a “virtual session connection” and, as such, is “[not] the same as or
equivalent to the claimed feature reciting ‘without establishing a connection
herewith.’” App. Br. 20. We disagree. As explained supra, Appellants’
Specification has not provided a definition of a connection or what is meant
by “without establishing a connection.” Absent any such definition or
persuasive evidence to the contrary, the Examiner’s position that a
disclosure of a “sessionless mode” meets the disputed step limitation of
“without establishing a connection therewith” is reasonable. Furthermore, a
reasonable interpretation of claim 102 does not require the complete
omission of any and all previously established virtual connections, only that
the step of causing a redirection not include establishing a connection. See,
e.g., Ans. 14. Therefore, we are not persuaded of Examiner error by this
contention.
Expert Declarations
Appellants’ arguments based on the declarations of Andrew Seybold
and Brad Karp are also not persuasive of Examiner error for several reasons.
Initially and as previously indicated, we agree with the Examiner that the
declarations are not persuasive of error because “[t]he current claims do not
preclude establishment of a session at any time, only during redirection of
Appeal 2012-012222
Application 09/783,726

10
user data items.” Ans. 14. Furthermore, in addition to finding the Examiner’s
substantive analysis and conclusion to be reasonable, we decline to
substantively consider declarations prepared and submitted, not in
connection with the instant application, but in connection with an
interference conducted in a related application. Nor would it be appropriate
to consider declarations submitted as part of an Information Disclosure
Statement rather than pursuant to 37 CFR §1.132 such that the sufficiency of
the declarations has not been formally reviewed or addressed by the present
Examiner. For example, among potential deficiencies, the cited portions of
the Seybold Declaration are based on observations of an actual operating
AirMobile communication system rather than on the AirMobile or Eggleston
publication disclosures that were relied upon by the Examiner.
Furthermore, the declarations are directed to claims and language then
pending in the cited interference, and not to claims subject to the instant
appeal. While the claims of the two applications may utilize similar
terminology, the claims have not been shown to be substantively identical.
For at least these reasons we are unwilling to now entertain declarations on
appeal that were not submitted as such to the Examiner.

CONCLUSIONS
On the record before us, we conclude that the Examiner did not err in
rejecting independent claim 102 under 35 U.S.C. § 103(a) as being
unpatentable over AirMobile Client and Eggleston or in rejecting claims
103, 104, 106-109, 111, 112, 122 and 124-129, not separately argued.
Likewise, we conclude that the Examiner did not err in rejecting 105 and
Appeal 2012-012222
Application 09/783,726

11
123 under 35 U.S.C. § 103(a) as being unpatentable over AirMobile Server,
AirMobile Client, Eggleston and Murota.
DECISION
The decision of the Examiner to reject claims 102-109, 111, 112 and
122-129 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).

AFFIRMED

tj