Ex Parte 7274926 et al

Board of Patent Appeals and Interferences

Apr 27, 2012

95001210 (B.P.A.I. Apr. 27, 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.
95/001,210 08/13/2009 7274926 60851-381252 1276
23370 7590 04/27/2012
JOHN S. PRATT, ESQ
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

HTC CORP.
Third Party Requester and Appellant

v.

IPCOM GMBH
Patent Owner and Respondent
________

Appeal 2011-010269
Inter partes Reexamination Control 95/001,210
United States Patent 7,274,926 B1
Technology Center 3900
____________

Before SCOTT R. BOALICK, KEVIN F. TURNER, and
JONI Y. CHANG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Third Party Requester HTC Corp. (hereinafter “Appellant”) appeals1
under 35 U.S.C. §§ 134(c) and 315(b)(1) the Examiner’s decision to not

1 See Appellant’s Appeal Brief filed January 18, 2011, hereinafter “App.
Br.,” at 1; see also Appellant’s Rebuttal Brief filed April 7, 2011, hereinafter
“Rebut. Br.”
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adopt Appellant’s proposed rejections of certain claims, as provided below.2
Patent Owner IPCom GmbH, (hereinafter “Respondent”) is a party to the
appeal under 35 U.S.C. § 315(a)(2) and disputes the Appellant’s
contentions.3
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination filed on behalf of Requester, on August 13, 2009, of United
States Patent 7,274,926 (“the '926 Patent”), issued to Josef Laumen et al. on
September 25, 2007, based on United States Application 10/089,623, that
was a national stage entry of Application No. PCT/DE00/02780, filed on
August 17, 2000.
With respect to the claims of the '926 Patent, claims 1-36 are subject
to reexamination, with claims 1-26 having been issued with the Patent and
claims 27-36 added through an amendment filed by Respondent (RAN 2).
That same amendment cancelled claims 2-4, 7-11, 14-20, and 22-26,
amended claims 1, 5, 12, 13, 21 (id.). The Examiner chose to not adopt any
of the rejections proffered by Appellant, thus confirming claims 1, 5, 6, 12,
13, 21, and 27-36.

2 See Right of Appeal Notice, mailed October 20, 2010, hereinafter “RAN;”
see also Examiner’s Answer, mailed March 11, 2011, hereinafter “Ans.”
3 See Respondent Brief filed February 18, 2011, hereinafter “Resp. Br.”
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The '926 Patent is not the subject of litigation, although related
European patents have been subject to litigation and oppositions as noted by
Appellant (App. Br. 1; accord Resp. Br. 1).
We heard oral arguments from the representatives of both Requester
and Patent Owner on October 5, 2011, a transcript4 of which is part of the
record.

THE INVENTION
The invention of the '926 Patent relates to a method of transmission
between at least one main stations and one terminal, and to a matching
device via a telecommunications network,. (Col. 1, ll. 6-8; Abs.).
Exemplary claim 1 on appeal reads as follows:
1. A method for transmitting messages between at least one
main station and a mobile terminal via a telecommunications network,
comprising:
providing a matching device between the at least one main
station and the mobile terminal, the mobile terminal connected to the
matching device via the telecommunications network, wherein the
telecommunications network comprises a mobile radio network;
controlling a message exchange between the at least one main
station and the mobile terminal using the matching device, the
message exchange being controlled in dependence upon at least one
input received from [one of :i)] the mobile terminal, [and ii) the at
least one main station] the at least one input including a transmission
format request, wherein the [entire] entirety of each message
transmitted to the mobile terminal via the telecommunications
network is transmitted in a transmission format that is determined in
dependence upon [a] the transmission format request made by [one of]
the mobile terminal [and the at least one main station]; [and]

4 Record of Oral Hearing (hereinafter “Oral Hr’g Tr.”)
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determining by the matching device whether the mobile
terminal is logged on or available in the telecommunications network;
and
matching, by the matching device, at least one characteristic for
transmission of [a] at least one message for the mobile terminal to the
at least one input, wherein the at least one characteristic is [at least
one of] a data type,[a data format and a transmission mode] and
wherein the at least one input indicates whether messages of said data
types are to be transmitted to the mobile terminal, stored in a storage
device, or forwarded to another system.
(Feb. 17, 2010 Amendment at 2.).

PRIOR ART REJECTIONS
The prior art references relied upon by Requester in the proposed
rejections that have not been adopted, are:
Rossmann 5,809,415 Sep. 15, 1998
Shaughnessy 5,928,325 Jul. 27, 1999
Boyle 6,138,158 Oct. 24, 2000
Schwartz 6,243,739 B1 Jun. 5, 2001
Bakshi 6,311,215 B1 Oct. 30, 2001

LaPorta EP 0 822 728 A2 April, 1998
Touminen (“Nokia”) WO 98/47270 Oct. 22, 1998

Recommendation X.430, Message Handling Systems: Access Protocol for
Teletex Terminals, CCITT, Malaga-Torremolinos, (1984) (hereinafter
“X.430”).
TSG-SA Working Group 1, 3G TS 22.140 version 0.1.0, Multimedia
Messaging Service (July 1999) (hereinafter “MSM0.1.0”).
TSG-SA Working Group 1, 3G TS 22.140 version 0.2.0, Multimedia
Messaging Service (September 1999) (hereinafter “MSM0.2.0”).

Numerous rejections, proposed against the claims prior to amendment,
were withdrawn by the Examiner (RAN 3-11). Rejections of the claims on
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the many bases were proposed in the Third Party Requester’s Comments to
Patent Owner’s Response to the Office Action, filed March 19, 2010
(hereinafter “Requester’s Comments”), which are memorialized in
Appellant’s Appeal Brief (App. Br. 4-6). None of these proposed rejections
was adopted by the Examiner (RAN 3-11).

ISSUES
Both Appellant and Respondent have asserted numerous arguments as
to whether the Examiner erred in not adopting rejections of certain claims,
which we detail in the analysis section below. Arguments which Appellant
and Respondent could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
Appellant cites many issues, detailing most the rejections proposed in
Requester’s Comments, designated A. through M. (App. Br. 4-6), but we
have only considered eight issues/rejections which we take to be
representative of all of the potential rejections considered by the Examiner
(RAN 3-11).
The issues arising from the respective positions of Appellant,
Respondent, and the Examiner, which we consider herein, are:
1. what is the proper interpretation of the disputed claim terms of the
instant claims?
2. whether the Examiner erred in not adopting the rejection of claims
1, 5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over MMS0.1.0?
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3. whether the Examiner erred in not adopting the rejection of claims
1, 5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over X.430 and MMS0.1.0?
4. whether the Examiner erred in adopting the rejection of claims 1,
5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over LaPorta and MMS0.1.0?
5. whether the Examiner erred in adopting the rejection of claims 1,
5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over Rossmann and MMS0.1.0?
6. whether the Examiner erred in not adopting the rejection of claims
1, 5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over Bakshi and MMS0.1.0?
7. whether the Examiner erred in not adopting the rejection of claims
1, 5, 6, 12, 13, 21, and 27-36 under 35 U.S.C. § 103(a) as being
obvious over Nokia and MMS0.1.0?
8. whether the Examiner erred in not adopting the rejection of claims
27 and 28 under 35 U.S.C. §112, first paragraph as lacking proper
written description?
9. whether the Examiner erred in not adopting the rejection of claims
27, 28, and 30 under 35 U.S.C. §112, second paragraph as being
indefinite?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Specification of the '926 Patent
FF1. The Specification of the '926 Patent discloses methods of
transmitting messages between main stations (1-3) and a terminal (5) via a
telecommunications network (10) using a matching device (15) (Abs.; Fig.
2). The matching device acts to convert messages to formats requested by
the terminal and vice versa (col. 5, l. 51 – col. 6, l. 4).
FF2. The Specification of the '926 Patent provides that a message
presented in a first data format may be converted into a second data format,
and provides examples of converting a graphic interchange format image
(GIF) into a joint picture expert group image (JPEG), or converting text
from one alphabet into another alphabet (col. 11, ll. 59-64).
FF3. The Specification of the '926 Patent also provides that a data
type may include fax, voice mail, email, and SMS (col. 9, ll. 11-14), and that
conversions between data types, such as fax to graphic and text to voice, can
be performed (col. 11, ll. 52-59).
FF4. The Specification of the '926 Patent further provides that the
transmission mode for sending messages from the device to the terminal can
be set, where the transmission mode may be a push mode or a pull mode
which decides which of the device and the terminal controls the sending of
the message (col. 7, l. 62 – col. 8, l. 20).
FF5. The Specification of the '926 Patent also provides the user of the
terminal can preselect which transmission mode is used for which message
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or which data type of message, as well as specifications specific to the
terminal (col. 7, l. 62 – col. 8, l. 20; col. 8, l. 66 – col. 9, l. 25).

MMS0.1.0
FF6. MMS0.1.0 discloses a Multimedia Message Service (MMS)
which can be used to transmit messages between at least one main station
(MME) and at least one terminal (MS), having a matching device (MM-SC)
which can store and forward messages (§§ 1, 4; Fig. 1). The messages are
stored in the server while the destination station becomes reachable to the
network (§ 4).
FF7. MMS0.1.0 details two different delivery modes, whereby
messages are directly delivered to the recipient, or the recipient is allowed to
download the messages, “based upon user preferences and terminal and
network capabilities” (§§ 5.2, 5.3). A user profile is used to specify user
defined restrictions, whereby messages are screened or forwarded or stored
on the server (§ 5.2).

X.430
FF8. X.430 discloses that a Teletex Access Unit (TTXAU)
provides Teletex terminals with access to a message transfer system
(P. 221; Fig. 1/X.430). The Teletex terminals register with the
TTXAU (P. 223), and can indicate preferred output modes, including
a “Retrieval” mode allows for message to be held until they are
retrieved by the terminal, or an “Auto-output” mode where the
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TTXAU tries to output the messages once they have been received (P.
237).

LaPorta
FF9. LaPorta discloses a two-way wireless messaging system with a
messaging center which receives, stores and forwards messages (Abs.).
Different end users receive a message in different formats based on criteria
setup by those users (col. 7, ll. 28-32), where the criteria can be based on the
message originator, time of day, and other factors (col. 7, ll. 33-41). LaPorta
also provides that information is synchronized by changes made to one copy
(col. 7, ll. 45-50), and that calendar reminders can be sent from a network-
based calendar server (col. 9, l. 18).

Bakshi
FF10. Bakshi discloses a system which determines whether an
entity that issued a message is pre-configured to receive a response
(Abs.). It accomplishes this through a transcoding server (34) which
provides any type of addition, deletion, or modification of data
transmitted to or from the network client (12) (col. 3, l. 54 – col. 4, l.
7; Fig. 2). The network client actively controls aspects of the
transcoding through changes to a header, where the end user may also
be permitted to provide preferences (col. 6, l. 53 – col. 7, l. 50; Fig. 3).

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Nokia
FF11. Nokia discloses a data service for a mobile
communications network where a server (IS) receives commands
from a terminal (1) and converts those commands into a format
compatible with at least one of the protocols of the other
telecommunications system (3) (Abs.; Fig. 1). The server obtains
information from the headers of protocol frames (p. 8, ll. 8-14), and
Nokia discloses that web page information can be converted into SMS
messages (p. 12, ll. 10-29). Nokia also provides that the part of the
web page containing relevant information can be identified using
predetermined criteria or based on criteria received from the mobile
station ( p. 16, ll. 1-8).

PRINCIPLES OF LAW
Claim interpretation necessarily precedes the addressing of questions
of patentability. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed.
Cir. 1997). Patent claims in a reexamination proceeding in the USPTO are
given their broadest reasonable interpretation consistent with the patent
disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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ANALYSIS
ISSUE 1
CLAIM INTERPRETATION
“Matching” Method Step & Device
Appellant argues that the Examiner has misinterpreted the claims
(App. Br. 8). Claim 1 provides that the message exchange is controlled in
dependence upon “at least one input,” which includes “a transmission format
request.” The claim does not provide a one-to-one correspondence between
the input and the transmission format request; rather the input includes the
transmission format request. Later, in claim 1, the matching device matches
“at least one characteristic for transmission” to the “at least one input.”
Independent claims 13 and 21 recite similar limitations. The Examiner takes
this to mean that the “at least one characteristic for transmission” is matched
with the “transmission format request” (RAN 6), but that is not what the
claim recites. It could be the transmission format request, or some other
portion of the input. Thus, while Respondent’s amendment requires the “at
least one characteristic” to be “a data type,” the “transmission format
request” is not so limited. As such, we find the Examiner’s apparent
interpretation of the independent claims (RAN 6) to have been made, at least
partially, in error.
That, of course, raises a central issue for this appeal: what is the
scope and definition for the claim term “transmission format request”?
Respondent suggests that a transmission format is “the format for
transmission of a message” (Oral Hr’g Tr. 24). However, such a simplistic
definition does not add clarity and is not helpful. Given that much of the
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discussion has focused on what may not be included in the transmission
format or transmission format request, it is essential to define the terms in
the context of the instant invention.
Appellant argues that the terms, transmission format and transmission
format request, are not used in the Specification of the '926 Patent, but only
in the claims (App. Br. 8), and we agree. The term “format” is used
variously in the Specification, and “data format” is perhaps best defined as
the way that the data of a message are arranged (FF2). A “data type” is a
categorization of the message, such that it can be distinguished, so that a
voice mail may be distinguished from an SMS message, for example (FF3).
A “transmission mode” determines which entity controls the sending of a
message (FF4).
Respondent argues that the terms “format,” “data type” and
“transmission mode” are all distinct (Resp. Br. 3), and we agree. However,
that does not imply that “transmission format” cannot include any of those
multiple attributes. The overall function of the invention described in the
Specification of the '926 Patent allows for messages to be converted to
particular formats (FF1), and goes on to disclose changing or setting the data
format, the data mode, and the transmission format (FF1-4). Absent any
specific guidance from the Specification, we conclude that one of ordinary
skill in the art would have understood a “transmission format request” as a
request that would specify how and in what form a transmitted message
should be received. Respondent has provided no persuasive evidence that
such an ordinarily skilled artisan would not consider the data format, the
data mode, and the transmission format, all disclosed in the Specification, as
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attributes that would control the how and in what form messages should be
received.
Respondent also argues that “[i]nterpreting ‘transmission format’ to
encompass ‘transmission mode’ is contrary to the plain and ordinary
meaning of the term and would be legally proper only if intrinsic evidence
reveals an express intent to impart a novel meaning to the term” (Resp. Br.
3). We do not agree. We conclude that limiting “transmission format” to
encompass only “transmission mode” would be unduly limiting, but taking
into account the factors applied in determining the delivery in the format
request would be in keeping with the functionalities of the system disclosed
in the Specification. Similarly, although Respondent cites exchanges made
with the original Examiner during the prosecution of the '926 Patent (Resp.
Br. 3), we do not find that they are persuasive that a “transmission format
request” could not include descriptors of transmission mode, or data type, or
data mode.
Respondent further argues that the amendments to the claims “deleted
‘transmission mode’ from the scope of the ‘at least one characteristic for
transmission’ thus making clear that the ‘transmission format’ does not
relate to ‘transmission mode’” (Resp. Br. 4). As discussed supra, the
changes made to “at least one characteristic for transmission” did not inure
to changes to the scope of the “transmission format,” where we discuss
further implications of Respondent’s amendment below.

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Amendments to the Claims
The Examiner, in his reasons for not adopting the rejections, relies
upon the interpretation of “transmission format” and how Respondent’s
amendment of the claims narrowed its meaning (RAN 6). The Examiner
also points to remarks by Respondent that are alleged to disclaim aspects of
the “transmission format,” and the Examiner finds that Appellant’s
“interpretation would disregard these narrowing claim amendments and
arguments and is thus unreasonable” (id.).
It is not clear whether there has been actual disclaimer of the claimed
subject. The subject of disclaimer in reexamination has been discussed in
several cases, as it affects intervening rights. See generally Marine Polymer
Tech. v. HemCon, Inc., 102 U.S.P.Q.2d 1161, 1166-1170 (Fed. Cir. 2012).
However, in the instant case, Respondent, i.e., Patent Owner, alleges that
there has been no disclaimer:
MR. PAVENTO: I actually agree with what Respondent
said, in making the amendment, we did not intend to nor did we
limit the term "data format request" or "data format." I don't
read the Examiner's reasons for allowance as indicating that.
He was simply saying that you have taken "data format" and
"transmission mode" off the table, in terms of what is being
matched here. You have taken those out of the scope of your
claim.
(Oral Hr’g Tr. 18).
Additionally, from the Oral Hearing:
JUDGE TURNER: This amendment didn't do anything with
respect to -- any view that the Examiner had on transmission
format before should be the same before the amendment?
MR. PAVENTO: I believe so. If you actually look at our Brief
where he's paraphrasing from, I think he cites to it here in the
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passage you're looking at, page 10, I think, you would see we
didn't even argue we were limiting the term "transmission
format" or "transmission format request."
(Oral Hr’g Tr. 18).
To the extent that the Examiner relied upon such a disclaimer in
interpreting the claim limitation “transmission format” (RAN 6), such
reliance appears to have been made in error. Nonetheless, it appears that the
Examiner’s interpretation of the “matching” aspect of the independent
claims is in error, as discussed supra, such that we need not focus further on
the issue of possible disclaimer.

ISSUE 2
MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying MMS0.1.0 based on the Examiner’s misinterpretation of the
language of the claims (App. Br. 9). We agree with Appellant, as discussed
supra, and conclude that the Examiner erred in the interpretation of the
claims with respect to the instant rejection (RAN 9).
Additionally, the Examiner finds that the limitation “the at least one
input indicates whether messages of said data types are to be transmitted to
the mobile terminal, stored in a storage device, or forwarded to another
system” is not taught or suggested by MMS0.1.0 (id.). We disagree.
MMS0.1.0 provides for a user profile that causes messages to be screened or
delivered, as well as stored on the server (FF7). We find that this at least
teaches the cited functionalities of the claims.
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The Examiner also finds that whether a terminal is reachable, as
taught by MMS0.1.0, is not the same as whether the terminal is logged on or
available, because a terminal may be “‘reachable’ to some limited extent, but
not truly available for data communications” (RAN 9). We conclude that
the Examiner is interpreting “available” very narrowly, and do not find any
persuasive evidence that “available” and “reachable” are different in the
context of the instant claims. We find the “reachability” disclosed in
MMS0.1.0 to be sufficient (FF6). As such, for this additional reason, we
conclude that the Examiner erred in not adopting this rejection.

ISSUE 3
X.430 and MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying X.430 and MMS0.1.0 based on the Examiner’s misinterpretation of
the language of the claims (App. Br. 16). We agree with Appellant, as
discussed supra, and conclude that the Examiner erred in the interpretation
of the claims with respect to the instant rejection (RAN 6).
Additionally, the Examiner finds that the transmission format between
the TTXAU and the Teletex terminal is predefined and thus there would be
no need to send a transmission format request (RAN 6). Appellant argues
that X.430 discloses a transmission mode, and that is a part of a transmission
format request, in that either retrieval or auto-output are available options
(App. Br. 17). Respondent argues that all messages received at the TTXAU
and destined for the Teletex terminal will be of the same “interpersonal
message” type (Resp. Br. 8). We agree with Appellant.
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X.430 provides for multiple transmission modes (FF8), which goes to
how messages are transmitted to a terminal. This is congruent with our
interpretation of “transmission format,” and the registration of the terminals
in X.430 indicating their output mode preferences is equivalent to the
claimed “transmission format request.” While both the Examiner and
Respondent are correct, in that the format of the message remains the same
in X.430, the format of the transmission is alterable. For this additional
reason, the Examiner erred in not adopting the rejection applying X.430 and
MMS0.1.0.
Additionally, with respect to the claimed determination of whether a
mobile terminal is logged on or is available, the Examiner finds that this is
not the same as establishing a connection at a specified time as disclosed in
X.430 (RAN 6). However, in applying X.430 and MMS0.1.0, Appellant
asserts MMS0.1.0 as teaching or suggesting that aspect of the claims (App.
Br. 19), such that a lack of disclosure of the same by X.430 is not a proper
basis to not adopt the rejection.

ISSUE 4
LaPorta and MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying LaPorta and MMS0.1.0 based on the Examiner’s misinterpretation
of the language of the claims (App. Br. 21). We agree with Appellant, as
discussed supra, and conclude that the Examiner erred in the interpretation
of the claims with respect to the instant rejection (RAN 7-8).
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Additionally, the Examiner finds that any attempt to modify LaPorta
to support a transmission format request would not be obvious (RAN 8).
However, as Appellant argues, LaPorta discloses a transmission format
request or equivalent (App. Br. 22), such that modification to meet that
aspect of the claims would not be necessary. We agree because LaPorta
discloses that different end users receive a message in different formats
based on criteria setup by those users (FF9). While Respondent argues that
“the ‘transmission format’ of a message does not refer to the contents of the
message” (Resp. Br. 9), we do not agree, based on the claim interpretation
discussed supra. For this additional reason, the Examiner erred in not
adopting the rejection applying LaPorta and MMS0.1.0.

ISSUE 5
Rossmann and MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying Rossmann and MMS0.1.0 based on the Examiner’s
misinterpretation of the language of the claims (App. Br. 26). We agree
with Appellant, as discussed supra, and conclude that the Examiner erred in
the interpretation of the claims with respect to the instant rejection (RAN 8).
As the Examiner provides no other basis for not adopting the rejection
applying Rossmann and MMS0.1.0, we conclude that the Examiner erred in
not adopting that rejection.

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ISSUE 6
Bakshi and MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying Bakshi and MMS0.1.0 based on the Examiner’s misinterpretation
of the language of the claims (App. Br. 31). We agree with Appellant, as
discussed supra, and conclude that the Examiner erred in the interpretation
of the claims with respect to the instant rejection (RAN 9-10).
Additionally, the Examiner finds that the transcoding functionality of
Bakshi is not provided by way of the input from the mobile terminals, but
instead from the transcoding server itself (RAN 9). We disagree. Bakshi
makes clear that the end user has control over preferences, such that the
transcoder server alone is not necessarily responsible for how data are
delivered (FF10). Respondent argues that transcoding of Bakshi does not
involve matching the data type of the message (Resp. Br. 12), but the
independent claims are not limited to handling messages solely by data type,
as discussed supra.
The Examiner also finds MMS0.1.0 fails to teach specific features
(RAN 10), but we have addressed those alleged deficiencies supra.

ISSUE 7
Nokia and MMS0.1.0
Appellant argues that the Examiner erred in not adopting rejections
applying LaPorta and MMS0.1.0 based on the Examiner’s misinterpretation
of the language of the claims (App. Br. 35). We agree with Appellant, as
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discussed supra, and conclude that the Examiner erred in the interpretation
of the claims with respect to the instant rejection (RAN 10-11).
Additionally, the Examiner finds that Nokia discloses that only a
single data type (SMS) is translated into WWW page content, and thus
Nokia has no need for a “transmission format request” since there are not
multiple data types (RAN 10). However, we find that Nokia allows for
mobile station users to select a criterion, such as a keyword, to determine
relevant information (FF11), which would change aspects of the information
received by the mobile station, and that would be equivalent to a
transmission format request.
The Examiner also finds MMS0.1.0 fails to teach specific features
(RAN 11), but we have addressed those alleged deficiencies supra.

ISSUE 8
Lack of Written Description Under 35 U.S.C. §112, First Paragraph
Claims 27 & 28
With respect to claims 27 and 28, Appellant argues that since claim 1,
from which the other claims depend, recites that “the at least one
characteristic is a data type,” and that both claims 27 and 28 further limit the
at least one characteristic to further include “a transmission mode,” there is
no support in the Specification for “a data type including a transmission
mode” (App. Br. 39). Respondent argues that the Specification of the '926
Patent provides that the “at least one input” can also indicate a transmission
mode (Resp. Br. 15). We agree with Respondent. In terms of written
description, we find adequate support for the at least one characteristic to
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include a transmission mode (FF5). We do not find the claims to require
more. As such, the Examiner did not err in not adopting the rejection of
claims 27 and 28 under 35 U.S.C. §112, first paragraph.

ISSUE 9
Indefiniteness Under 35 U.S.C. §112, Second Paragraph
Claims 27, 28, & 30
With respect to claims 27 and 28, Appellant argues that since claim 1,
from which the other claim depend, recites that “the at least one
characteristic is a data type,” the language of claims 27 and 28 is improper
and indefinite since both claims further limit the at least one characteristic to
further include “a transmission mode,” which already limited by claim 1 to
only be a data type (App. Br. 39). We disagree. While Appellant is correct
that the use of “is” requires the characteristic to be a data type in claim 1, the
language of claims 27 and 28, reciting “further includes,” further limits the
independent claim, and specifies an additional limitation to the “at least one
characteristic.” We do not find that the language of claims 27 and 28
requires the data type to include a transmission mode, as Appellant has
alleged (id.). Thus, the Examiner did not err in not adopting the rejection of
claims 27 and 28 under 35 U.S.C. §112, second paragraph.
With respect to claim 30, Appellant argues that the claim is indefinite
because the limitation “the data storage device” lacks proper antecedent
basis (App. Br. 39). We agree and conclude that the Examiner erred in not
adopting the indefiniteness rejection of claim 30.

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CONCLUSIONS
We conclude that 1) the Examiner erred in the Examiner’s
interpretation of the disputed claim terms of the instant claims. We further
conclude that the Examiner erred in not adopting: 2) the rejection of claims
1, 5, 6, 12, 13, 21, and 27-36 over MMS0.1.0; 3) the rejection of claims 1, 5,
6, 12, 13, 21, and 27-36 over X.430 and MMS0.1.0; 4) the rejection of
claims 1, 5, 6, 12, 13, 21, and 27-36 over LaPorta and MMS0.1.0; 5) the
rejection of claims 1, 5, 6, 12, 13, 21, and 27-36 over Rossman and
MMS0.1.0; 6) the rejection of claims 1, 5, 6, 12, 13, 21, and 27-36 over
Bakshi and MMS0.1.0; 7) the rejection of claims 1, 5, 6, 12, 13, 21, and 27-
36 over Nokia and MMS0.1.0; and 9b) the rejection of claim 30 under 35
U.S.C. §112, second paragraph, as being indefinite.
We also conclude that the Examiner did not err in not adopting 8) &
9a) the rejections of claims 27 and 28 under 35 U.S.C. §112, first and second
paragraphs.
While our analysis has focused on specific representative proposed
rejections and the Examiner’s finding with respect to those rejections, errors
in those findings may implicate the Examiner’s decision to not adopt other
rejections.

DECISION
The Examiner’s decision to not adopt the proffered rejections of
claims at issue over prior art is reversed.5

5 See Bd.R. 41.77(b) (reversal of determination not to reject is denominated
a new ground of rejection).
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
Requests for rehearing in this inter partes reexamination proceeding
are governed by 37 C.F.R. § 41.79.
This decision also contains new grounds of rejection pursuant to 37
C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner . . . .
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record . . . .
Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.

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If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.

REVERSED

ack

cc:
FOR PATENT OWNER:
JOHN S. PRATT, ESQ
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
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ATLANTA, GA 30309

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PERKINS CHOIE LLP
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