Ex Parte Rouse et al

Patent Trial and Appeal Board

Sep 27, 2012

09750320 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW ROUSE, QUINTON ZONDERVAN,
THOMAS BENTLEY, TIMOTHY LAWSON, and
CHRISTOPHER HEROT
____________________

Appeal 2010-011595
Application 09/750,320
Technology Center 2600
____________________

Before THOMAS S. HAHN, DENISE M. POTHIER, and
JENNIFER S. BISK, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from final
rejections of claims 21, 22, 24-30, 32-35, 37-39, and 41-44. Claims 1-20,
23, 31, 36, and 40 are canceled (App. Br. 2).1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Final Action (mailed Sept. 8, 2008), the
Supplemental Appeal Brief (filed Jan. 11, 2010), the Examiner’s Answer
(mailed Apr. 15, 2010 (Ans.)), and the Reply Brief (Filed June 15, 2010
(Reply Br.)).
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We affirm-in-part, and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
STATEMENT OF CASE
Introduction
Appellants’ claim a system and method for enabling a mobile device
user to access server-based information over a wireless data network (see
generally Abstract). The below reproduced claim 21, with disputed
limitations emphasized, is exemplary of the appealed independent claims:
21. A method for enabling a wireless client device to
communicate with at least one server having one or more applications
residing thereon, the method comprising the steps of:
enabling the wireless client device to select an application
residing on the at least one server;
enabling the wireless client device to select at least one
application action associated with the selected application residing on
the at least one server;
executing the at least one selected application action on the at
least one server, the application action comprising one or more of
opening at least one file within the server, closing at least one file
within the server, editing at least one file within the server, or
searching at least one file within the server;
formatting at least one application output associated with the at
least one selected application actions based on a profile of the

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wireless client device and a user selection of one or more fields
associated with the at least one file; and
transmitting the formatted at least one application output to the
wireless client device.
Rejections
The Examiner relies upon the following prior art:2
Ulrich US 6,052,735 Apr. 18, 2000
Criss US 6,308,061 B1 Oct. 23, 2001
Kobayashi US 6,633,759 B1 Oct. 14, 2003
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 21, 22, 25-30, 32-35, 37-39, and 42-44 as obvious over
Kobayashi and Ulrich (Final Action 3-6); and
2. Claims 24 and 41 as obvious over Kobayashi, Ulrich, and Criss
(Final Action 7).
Appellants’ Pivotal Contentions
Appellants group independent claims 21 and 38 and assert their
patentability is premised on arguments directed to the above identified claim
21 disputed limitations (App. Br. 7-12; Reply Br. 4-7), which also are
recited in independent claim 38. Appellants particularly contend the
Examiner erred in the rejection because (i) Kobayashi and Ulrich, alone or in
combination, are asserted to fail to teach or suggest the disputed limitations

2 Effective filing dates for cited prior art precede Appellants’ earliest
effective filing date and are not at issue.
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(App. Br. 8-10; Reply Br. 4-6); and (ii) the Examiner failed “to provide
evidence establishing that it would have been obvious to one of ordinary
skill in the art to combine the teachings of Kobayashi and Ulrich in the
manner proposed . . . .” (App. Br. 8).
Appellants group dependent claims 24 and 41 and assert their
patentability is premised on arguments directed to their identically recited
limitations (App. Br. 14-15; Reply Br. 7-8), namely “the profile of the
wireless client device comprises one or both of at least one feature of the
wireless client device or a device type of the wireless client device.”
Pivotally, Appellants contend the Examiner erred because Kobayashi,
Ulrich, and Criss, alone or in combination fail to teach or suggest the above
limitations (App. Br. 14-15).
ANALYSIS
OBVIOUSNESS OVER KOBAYASHI AND ULRICH
A. Claims 21 and 38 and their dependent claims
The Examiner addresses the disputed limitations, in the Response to
Argument section of the Answer, with references to reproductions of
selected Kobayashi disclosures along with an associated Fig. 9 (Ans. 8-9).
The Examiner finds these disclosures and drawing teach (i) “a
communication system that allows [a] mobile communication device to
access application[s] or software on [a] server/computer by at least
starting/opening the software, such as e-mail or word process file[s];” and
(ii) “formatting at least one application output associated with at least one
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selected application[]” (Ans. 9). Appellants acknowledge the Examiner’s
findings and do not dispute them (Reply Br. 4-5). Based on our review of
the record, we agree with and adopt these findings from Kobayashi.
The Examiner next acknowledges that “Kobayashi does not teach that
. . . formatting is based on a profile of the mobile device and a user selection
of one or more fields associated with the at least one file” (Ans. 9). The
Examiner finds from the reproduced Ulrich’s disclosures directed to a user
setting “profile parameters” (Ans. 9-10) that Ulrich teaches a system to
allow a “user [to] remotely at least open [a] file on [a] server/computer and
transfer any data according to the user selected profile and format the data
such that it can be understood by [a] mobile device when the mobile device[]
receives it (see figure[s] 5A and 6)” (Ans. 10). Based on our review of the
record, we agree with and adopt these findings from Ulrich.
Appellants acknowledge that both Kobayashi and Ulrich teach
formatting, but contend that the references teach formatting for different
purposes (Reply Br. 6). Appellants contend Kobayashi’s disclosures are
directed to “alteration of visual content generated on a laptop to permit
display on a cellular telephone,” and Ulrich’s disclosures are directed to
“conversion of files so that they can be manipulated locally on the cellular
telephone” (id.). Appellants argue that:
Even if the conversion of electronic files described in the cited
sections of Ulrich is made . . . “based on a profile of the mobile device
and a user selection of one or more fields associated with the at least
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one file”, it would not have been obvious to one of ordinary skill in
the art to modify the cited sections of Kobayashi in performing a
completely different kind of operation (the alteration of visual
content).
(Id.).
What the Examiner has articulated as a reason for combining the
references is that “[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to combine [Kobayashi and
Ulrich] to properly forward attachment[s] to the destination with
compatibility” (Ans. 4). In the Response to Argument section of the
Answer, the Examiner further articulates that “[i]t would have been obvious
to one of ordinary skill in the art to combine the teaching of Ulrich with
Kobayashi’s system so that the received data would be compatible with the
mobile device and viewable by the user . . .” (Ans. 10). We conclude that
these articulations, in view of the record, adequately present reasoning with
a rational underpinning for why an ordinarily skilled artisan would
appreciate that combining Kobayashi and Ulrich provides a predictable
benefit, i.e., a capability for effectively transferring compatible formatted
data to a mobile device so that it also is viewable by a user. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). The record relied on for our concluding
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the Examiner adequately articulated reasoning with rational underpinning
include the above addressed citations to Kobayashi and Ulrich disclosures
that provide verifying evidence for the identified teachings (see Ans. 9-10),
which specify conforming data to accomplish effective transfer for viewing
and use on a receiving mobile device.
In concordance with this record and relevant to our concluding the
Examiner did not err in rejecting claims 21 and 38 is the Supreme Court’s
holding that “[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). The Court further has held that obviousness “analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Accordingly, Appellants’ arguments are found unavailing as to the
Examiner erring in combining references and concluding the combined
references teach or suggest the disputed limitations. In part, we find the
arguments unavailing because no persuasive evidence is found that identifies
(i) an unpredictable result from the combined references or (ii) a result as
being beyond the creative steps that an ordinarily skilled artisan would
employ. Consequently, we will sustain the rejection of claims 21 and 38.
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We also will sustain the rejection of their dependent claims 22, 26, 39, and
43 that are not separately argued.
Claims 24 and 41 are not listed for this rejection or addressed in the
statement of reasons (see Ans. 3-6). However, claims 25, 27, 42, and 44,
which respectively depend from claims 24 and 41 are listed and addressed in
the statement of reasons for this rejection (id.). Claims 25, 27, 42, and 44,
because of their dependencies, respectively by reference incorporate the
limitations of claims 24 and 41. 35 U.S.C. § 112, fourth paragraph. The
consequence of the Examiner’s rejection of claims 25, 27, 42, and 44 and
silence as to the incorporated limitations of claims 24 and 41 is that the
rejection fails to establish a prima facie case of obviousness.3 Appellants,
therefore, have no burden to traverse the Examiner’s reported rejection of
claims 25, 27, 42, and 44. Accordingly, we pro forma reverse the
Examiner’s reported rejection of claims 25, 27, 42, and 44.
Claims 28 and 33 and their dependent claims
Appellants group independent claims 28 and 33 and assert their
patentability is premised on arguments directed to identified limitations
(App. Br. 13), which are substantively recited in both claims (App. Br. 12-

3 The Examiner has the initial burden to set forth the bases for all rejections
so as to put an Applicant on notice of the reasons why the scope of each
rejected claim is not patentable – the so called “prima facie case.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (the initial burden is on the Examiner “to
produce the factual basis for its rejection of an application under sections
102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)).
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14). Appellants particularly contend the Examiner erred in the rejection
because Kobayashi and Ulrich, alone or in combination, fail to teach or
suggest the identified limitations (App. Br. 13-14), and because the
Examiner failed “to provide evidence establishing that it would have been
obvious to one of ordinary skill in the art to combine the teachings of
Kobayashi and Ulrich in the manner proposed . . . .” (App. Br. 13).
The identified limitations for claims 28 and 33, as well as Appellants’
contentions and arguments directed to these limitations, are substantively
similar to those addressed supra for claims 21 and 38. Accordingly, for the
reasons discussed supra, we will sustain the rejection of independent claims
28 and 33, and we also will sustain the rejection of their dependent claims
29, 30, 32, 34, 35, and 37 that are not separately argued.

OBVIOUSNESS OVER KOBAYASHI, ULRICH, AND CRISS
The Examiner acknowledges that Kobayashi does not teach or suggest
limitations recited in dependent claims 24 and 41 (Ans. 7), namely “the
profile of the wireless client device comprises one or both of at least one
feature of the wireless client device or a device type of the wireless client
device.” The Examiner does not address whether Ulrich teaches or suggests
these limitations. Despite the Examiner’s silence, as noted supra for the
rejection over Kobayashi and Ulrich, both the Examiner and we find Ulrich
teaches a user setting “profile parameters” so as to allow the “user [to]
remotely at least open [a] file on [a] server/computer and transfer any data
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according to the user selected profile and format the data such that it can be
understood by [a] mobile device when the mobile device[] receives it (see
figure[s] 5A and 6)” (Ans. 10).
Nonetheless, the Examiner for this particular rejection additionally
turns to Criss and identifies finding the subject limitations as being taught in
this reference (Ans. 7, 10-11), which Appellants dispute (App. Br. 14-15;
Reply Br. 7-8). In response, the Examiner identifies that “Criss teaches that
packet information comprising [a] Version ID of software, memory, and
mode is sent to the server see figure 5a . . .” (Ans. 10). The Examiner
further identifies that “[t]his packet information is same as the feature of the
mobile device in which [sic] provides to the server such that the server
understands the capacity of the mobile device before the server transfer[s]
data information to the mobile device for upgrade” (Ans. 11).
Appellants respond with pivotal contentions that:
FIG. 5A of Criss provides an illustration of package definition files
stored in a host computer that represent features of the software
that is to be installed on the mobile device, not features of the mobile
devices [c. 10, ll. 1-54]. In particular, the supposed "capacity" in the
package definition file relied on in the Answer appears to refer to “an
indication of the total memory occupied by the operating
software associated with the package name” [c. 10, I1.20-23]. Again,
this is a feature of the software, and not a feature of a mobile device.
(Reply Br. 7.)
On reviewing the record, and in particular the Appellants’ cited Criss’
disclosures, we find Criss teaches stored software definition files (see also
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col. 4, lines 51-57); we do not find Criss teaches or suggests wireless client
device’s profile features as the Examiner contends. For the foregoing
reasons, we will not sustain the rejection of claims 24 and 41 as being
obvious over Kobayashi, Ulrich and Criss.
In accord with the discussion supra concerning claims 25, 27, 42, and
44 being respectively dependent from claims 24 and 41, we also conclude
the Examiner erred in not listing claims 25, 27, 42, and 44 with this rejection
and identifying them with the articulated findings and reasoning directed to
claims 24 and 41. Accordingly, we pro forma do not sustain rejection of
claims 25, 27, 42, and 44 as being obvious over Kobayashi, Ulrich, and
Criss.

NEW GROUND OF REJECTION
Using the authority under 37 C.F.R. § 41.50(b), claims 24, 25, 27, 41,
42, and 44 are rejected under 35 U.S.C. § 103(a) as being obvious over the
combination Kobayashi and Ulrich.
In making this rejection we incorporate by reference our above
discussions and conclusion sustaining the obviousness rejection of
independent base claims 21 and 38 from which claims 24, 25, 27, 41, 42,
and 44 respectively depend.
The limitations of both claims 24 and 41 cover a “profile of the
wireless client device compris[ing] one or both of at least one feature of the
wireless client device or a device type of the wireless client device.”
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Arguably, what information (e.g., device’s feature or device type) the profile
contains is non-functional descriptive material that is not given patentable
weight. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential). In
such case, the cited prior art need teach nothing more than a profile
containing data.
Nevertheless, presuming that information the profile contains is given
patentable weight, neither the Examiner nor Appellants have identified any
meanings for these limitations other than their customary term meanings in
light of the Specification, which we find does not distinguish from
customary term meanings (Spec. 31:15 – 32:2; see App. Br. 6). Accordingly,
we apply customary term meanings. As addressed supra, we agree with and
adopt the Examiner’s findings from the reproduced Ulrich’s disclosures
directed to a user setting “profile parameters” (Ans. 9-10; see Ulrich col. 14,
ll. 15-19). , Such profile parameters that are understood by a mobile device
(see id.) teach and suggest the device’s profile comprises a feature of the
wireless client device. Without this suggestion, the parameters would not be
understood by the mobile device.
Additionally and in particular, we agree with and adopt the
Examiner’s finding that Ulrich teaches a system to allow a “user [to]
remotely at least open [a] file on [a] server/computer and transfer any data
according to the user selected profile and format the data such that it can be
understood by [a] mobile device when the mobile device[] receives it (see
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figure[s] 5A and 6)” (Ans. 10). Based on this undisputed record, we
conclude Ulrich teaches or suggests, when combined with Kobayashi, the
limitations of claims 24 and 41.
With respect to the limitations of claims 25, 27, 42, and 44, we agree
with and adopt the undisputed Examiner’s findings and conclusions (Ans. 5,
6).
We conclude the limitations of claims 24, 25, 27, 41, 42, and 44,
based on the record, are obvious over Kobayashi and Ulrich.

CONCLUSIONS
1. The Examiner did not err under 35 U.S.C. § 103(a) in the rejection of
claims 21, 22, 26, 28-30, 32-35, 37-39, and 43 as being obvious over
Kobayashi and Ulrich.
2. The Examiner erred under 35 U.S.C. § 103(a) in the rejection of
claims 25, 27, 42, and 44 as being obvious over Kobayashi and
Ulrich.
3. The Examiner erred under 35 U.S.C. § 103(a) in the rejection of
claims 24, 25, 27, 41, 42, and 44 as being obvious over Kobayashi,
Ulrich, and Criss.
4. A new ground of rejection under 37 C.F.R. § 41.50(b) is entered as
to claims 24, 25, 27, 41, 42, and 44 being obvious under 35 U.S.C.
§ 103(a) over Kobayashi and Ulrich.

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DECISION
The Examiner’s decision rejecting claims 21, 22, 26, 28-30, 32-35,
37-39, and 43 is affirmed. The Examiner’s decision rejecting claims 24, 25,
27, 41, 42, and 44 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection.., shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in which
event the proceeding will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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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
37 C.F.R. § 41.50(b)

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