Ex Parte LI

Patent Trial and Appeal Board

Dec 19, 2012

11133755 (P.T.A.B. Dec. 19, 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.
11/133,755 05/19/2005 Benjamin Bin Li 098888-7871 9958
23524 7590 12/19/2012
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
BARQADLE, YASIN M
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
12/19/2012 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 BENJAMIN BIN LI
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Appeal 2010-007749
Application 11/133,755
Technology Center 2400
________________

Before JASON V. MORGAN, ERIC B. CHEN, and LARRY J. HUME,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 18 – 26, 28 – 31, and 33. Claims 1 – 17, 27, and 32 are
canceled. See Amend. After Fin. 2, 4, and 5 (Feb. 2, 2009). We have
jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.
Invention
The invention relates to a system and method for caching data in
wireless application protocol (WAP) enabled services and facilitates
dynamic creation of user-specific information to provide a customized
output. See Abstract.
Exemplary Claim (Emphases Added)
18. A system, comprising:
a user profile database that stores at least one user
profile containing output preference data with respect to at
least one of output content and output layout for a user of a
mobile device;
an object database for storing selected data from an
origin server;
a document converter coupled to the object database for
converting the selected data from an HTML [HyperText
Markup Language] file into an XML [eXtensible Markup
Language] file and storing the XML file in the object database;
and
a dynamic information composer coupled to the object
database and the user profile database, wherein the dynamic
information composer dynamically composes user-specific
information as a personalized, user-specific output based on
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segments of data from more than one XML file in the object
database and the user profile.
Rejections
The Examiner rejects claims 18, 19, and 21 – 26, 28 – 31, and 33
under 35 U.S.C. § 103(a) as being unpatentable over Li (US 6,345,279 B1;
Feb. 5, 2002; filed Apr. 23, 1999) and Lo (US 6,854,120 B1; Feb. 8, 2005;
filed Jan. 14, 2000). Ans. 3 – 10.
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Li, Lo, and Flom (US 2001/0054087 A1; Dec. 20, 2001;
filed Apr. 25, 2001; based on and claiming benefit to provisional application
60/199,690, filed Apr. 26, 2000). Ans. 10 – 11.
ISSUES
1. Did the Examiner err in finding that Li teaches or suggests “a user
profile database that stores at least one user profile containing output
preference data with respect to at least one of output content and output
layout for a user of a mobile device,” as recited in claim 18?
2. Did the Examiner err in finding that Li teaches or suggests
“dynamic information composer dynamically composes user-specific
information as a personalized, user-specific output based on . . . the user
profile,” as recited in claim 18?
3. Did the Examiner err in concluding that it would have been obvious
to combine the teachings and suggestions of Li and Lo because the proposed
modification would change the principle of operation of Li?
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ANALYSIS
Claim 18 is directed to a system comprising, among other things, “a
user profile database that stores at least one user profile containing output
preference data with respect to at least one of output content and output
layout for a user of a mobile device” and a “dynamic information composer
dynamically composes user-specific information as a personalized, user-
specific output based on . . . the user profile.”
The Examiner finds that Li, which is directed to methods and
apparatus for adapting multimedia content for client devices, teaches or
suggests these recitations. See Ans. 3 – 4 (citing, e.g., Li fig. 3 and col. 6, ll.
3 – 29). In particular, the Examiner finds: (1) that the listing of capabilities
320 and resources 330 of client profile 310 teaches or suggests the claimed
user profile, see Ans. 3 (citing Li fig. 3), and (2) that the rendering of
document 370 using client profile 310 teaches or suggests the claimed
dynamic composition, see Ans. 4 (citing Li fig. 3 and col. 6, ll. 3 – 29).
Appellant contends the Examiner erred because “Li actually teaches
device profiles that list the capabilities and resources of a device, such as
whether a device has audio and video capabilities.” See App. Br. 12
(emphasis added). Appellant argues that a “user profile” is different from the
“client profile” of Li because “each user of those devices may have different
preferences, and therefore each user may have a unique ‘user profile’ that
includes unique ‘output preference data,’ even though each user has the
same make and model device.” See Reply Br. 3. (Emphasis in original.)
However, Li teaches that the listing of resources 330 can include “the time a
client is ready, willing or able to wait to receive the complete document . . .
[and] money client is willing or able to pay for the document.” Li col. 6, ll.
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20 – 29. Readiness or willingness to wait or pay are user preferences that
may be unique to the user of a mobile device; these preferences are not mere
features of a device make and model. Furthermore, because these
preferences describe what kind of document the user is ready, willing, or
able to receive (e.g., whether a long-loading or expensive document is
acceptable), these preferences relate to output content. Therefore, we agree
with the Examiner that Li teaches or suggests “a user profile database that
stores at least one user profile containing output preference data with respect
to at least one of output content and output layout for a user of a mobile
device,” as recited in claim 18.
Appellant further argues that since “Li says nothing at all about a
‘user profile’ or any ‘preference data,’ and therefore cannot possibly teach
‘dynamically compos[ing]’ user-specific information as a personalized,
user-specific output.” Ans. 14. (Emphasis added.) Since, as discussed
above, Li teaches a “user profile containing output preference data,” we are
not persuaded of error in the Examiner’s rejection. Appellant also argues
that “Li actually teaches composing several documents, and then selecting
the one that best matches the characteristics of the mobile device, based on
the device profile” and that “selecting a document out of several is clearly
distinguishable from ‘dynamically compos[ing] user-specific information as
a personalized, user-specific output.’” Reply Br. 5. However, the content
adaptation process 350 of Li “uses the client profile 310 to select from
among the InfoPyramids 280 the versions 374 that best satisfy the particular
client profile. These selected versions are rendered into a document 370
which is an adaptation (i.e., customization) of the original multimedia
document 100.” Li col. 6, ll. 42 – 47.
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Appellant does not persuasively distinguish between dynamic
composing to produce user-specific output and selecting versions to render a
customized document. Moreover, the content adaptation process 350 of Li
uses the client profile 310, which contains the listing of resources, in
selecting the versions. As discussed above, this listing of resources includes
user preferences. Thus, Li teaches or suggests dynamically composing
(rendering) user-specific information (a customized document) based on a
user profile. Therefore, we agree with the Examiner that Li teaches or
suggests “dynamic information composer dynamically composes user-
specific information as a personalized, user-specific output based on . . . the
user profile,” as recited in claim 18.
Claim 18 further recites “a document converter coupled to the object
database for converting the selected data from an HTML file into an XML
file and storing the XML file in the object database.”
The Examiner finds that Li does not teach this recitation. See Ans. 4.
The Examiner therefore relies on Lo, which is directed to accessing an
enterprise resource planning (ERP) application over the Internet using
strongly typed declarative language files, to teach or suggest this recitation.
See Ans. 5 (citing Lo col. 2, ll. 52 – 58 and col. 15, ll. 22 – 33). In particular,
the Examiner relies on the teaching in Lo that HTML report forms are stored
in the form of XML files. Lo col. 2, ll. 54 – 55. The Examiner finds that this
teaches or suggests conversion of HTML-to-XML and storage of the XML,
and that it would have been obvious to an artisan of ordinary skill to modify
Li by adding Lo’s HTML-to-XML conversion to provide an industry
standard interface for accessing a variety of database objects retrieved from
the Internet. See Ans. 5 (citing Lo col. 15, ll. 22 – 33); see also Ans. 16.
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Appellant contends the Examine erred because “the proposed
modification would fundamentally change the principle of operation of Li.”
App. Br. 15. Specifically, Appellant argues that Li’s “transcoding process
would have to be replaced . . . in order to meet the claim recitation of
‘converting the selected data from an HTML file into an XML file,’ as
recited in claim 18.” App. Br. 15. However, Appellant does not provide
evidence that persuasively shows that Lo’s HTML-to-XML conversion
would need to replace Li’s transcoding process, rather than being added to
Li’s method or apparatus. Appellant’s assertions amount to unsupported
attorney argument, and therefore we give them little weight. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100
F.3d 135, 139 – 140 (Fed. Cir. 1996). Therefore, we do not find error in the
Examiner’s reliance on the combined teachings and suggestions of Li and
Lo.
Accordingly, we affirm the Examiner 35 U.S.C. § 103(a) rejection of
claim 18, as well as the rejections of claims 19 – 26, 28 – 31, and 33, which
are not argued separately with sufficient specificity. See App. Br. 16 – 17.
DECISION
The Examiner’s decision to reject claims 18 – 26, 28 – 31, and 33 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

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