Ex Parte Zilliacus et al

Patent Trial and Appeal BoardFeb 19, 2014

10777284 (P.T.A.B. Feb. 19, 2014)

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. 10/777,284 02/11/2004 Martin Zilliacus 004770.00261 5467 22907 7590 02/19/2014 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER DOAN, DUYEN MY ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 02/19/2014 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 MARTIN ZILLIACUS and GABOR KASZONYI ____________________ Appeal 2011-011383 Application 10/777,284 Technology Center 2400 ____________________ Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and JILL D. HILL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011383 Application 10/777,284 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 23-49 and 53-103. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to an apparatus and associated method for downloading an application with a variable lifetime to a mobile terminal. Claims 23, 41, 45, 53, 74, and 86 are independent. Claim 23 is reproduced below: 23. A method comprising: connecting a first mobile terminal to an application database through a cellular communication network, the application database containing at least one application having a variable selectable lifetime; receiving a user-specified choice of the at least one application for downloading to the first mobile terminal; providing the application database with information identifying a user of the first mobile terminal; receiving a user-specified selection of a variable lifetime for the chosen application, during which lifetime the chosen application is executable; downloading the chosen application from said application database to the first mobile terminal; and storing indicia of the selected lifetime for the chosen application and of the information identifying the user, wherein the stored indicia corresponds to the selected lifetime during which the chosen application is further executable at mobile terminals accessible by the user. Appeal 2011-011383 Application 10/777,284 3 PRIOR ART Stefik Griswold Ishida McCormack Lin Forbes Kim US 5,715,403 US 5,940,504 US 2002/0002042 A1 US 6,360,255 B1 US 6,366,791 B1 US 6,381,742 B2 US 6,546,002 B1 Feb. 3, 1998 Aug. 17, 1999 Jan. 3, 2002 Mar. 19, 2002 Apr. 2, 2002 Apr. 30, 2002 Apr. 8, 2003 GROUNDS OF REJECTION 1. Claims 23-26, 28, and 38-40 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold and Ishida. 2. Claim 27 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, and McCormack. 3. Claim 29 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, and Official Notice. 4. Claims 30-36 and 41-44 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, and Kim. 5. Claim 37 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Kim, and McCormack. 6. Claims 45, 46, 48, 49, 53-55, 57-59, 65-69, 73, 86-88, 90-92, 98-100, 102, and 103 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, and Stefik. 7. Claims 47, 60-62, 71, and 93-95 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, and Forbes. 8. Claims 56 and 89 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, and McCormack. Appeal 2011-011383 Application 10/777,284 4 9. Claims 63-64, 70, 72, 96, and 97 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, and Kim. 10. Claims 74-76, 78, 79, 82, 85, and 101 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, and Lin. 11. Claim 77 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, Lin, and McCormack. 12. Claims 80, 81, 83, and 84 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Griswold, Ishida, Stefik, Lin, and Kim. OPINION Claims 23-26, 28, and 38-40 Claim 23 requires “receiving a user-specified selection of a variable lifetime for the chosen application.” App. Br. 37. The Examiner finds that “Ishida teaches user specified the life-time (see Ishida par 0005).” Ans. 4. The Examiner determines that it would have been obvious to “incorporate the teaching of Ishida to Gris [sic] because they're analogous art. A person would have been motivated to modify Gris [sic] with Ishida for the purpose of providing the end user with [the] flexibility of specify[ing] their own use term for the application.” Ans. 5. Appellants argue that because “Ishida merely describes erasing message data after an expiration of a period preset by a user (see Ishida, paragraph [0005]). There would be no apparent reason to modify the software license management system like Griswold with a radio selective calling apparatus of Ishida.” App. Br. 22. Appellants further argue that “providing ‘the user with flexibility’ is inapposite to the teachings of Griswold . . . insofar as it deviates from enforcing the licensor's license and/or instructions.” Id. Appeal 2011-011383 Application 10/777,284 5 In addition, Appellants argue that Ishida’s paragraph [0005] “merely discloses erasing message data from a calling apparatus after an expiration of a period preset by a user, not ‘receiving a user-specified selection of a variable lifetime for the chosen application,’ as recited in claim 23. App. Br. 22-23. In response to these arguments, the Examiner finds that “Griswold discloses the concept of transmitting and managing license product such as software, music, video, etc. in a telecommunication network.” Ans. 23. The Examiner additionally finds that “Ishida teaches allowing the user to set the valid time period for the data in a telecommunication network.” and that “[b]oth of Griswold and Ishida [are] concern[ed] with data communication in general in a telecommunication network, therefore they're analogous art.” Id. Then, the Examiner concludes that one of ordinary skill in the art “would come up with the claimed invention using Griswold's concept of transmitting and managing license product [sic] and the user setting the valid time period of the data in Ishida for the obvious purpose of allowing the user control over license product [sic] that he/she is purchasing.” Ans. 23. The Examiner’s findings and conclusion do not address Appellants’ arguments. The Examiner has not explained why one of ordinary skill in the art would modify Griswold’s licensing management system and method which is designed “for recording the use of a licensed product, and for controlling its use in accordance with the terms of the license” to give the user (i.e. licensee) flexibility. Griswold, Abst. Nor, has the Examiner explained how Ishida discloses “receiving a user-specified selection” as required by claim 23. Appeal 2011-011383 Application 10/777,284 6 The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Federal Circuit has stated that “rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this instance, the Examiner’s reasoning lacks rational underpinning. Accordingly, the Examiner fails to set forth a prima facie case of obviousness. For these reasons, we do not sustain the Examiner rejection of claim 23, and claims 24-26, 28, and 38-40 which depend therefrom. Claims 27, 29-37, 41-49, and 53-103 Claims 27, 29-37, 41-49, and 53-103 stand rejected as unpatentable over the combined teachings of Griswold, Ishida, and one or more of McCormack, Official Notice, Kim, Stefik, Lin, and Forbes. The Examiner’s application of these references does not cure the deficiencies in Ishida discussed supra. Accordingly, we do not sustain the Examiner’s rejection of claims 27, 29-37, 41-49, and 53-103. DECISION The Examiner’s rejection of claims 23-49 and 53-101 is REVERSED. REVERSED Vsh