Ex Parte 7,355,990 et al

Patent Trial and Appeal Board

Jun 3, 2013

95001241 (P.T.A.B. Jun. 3, 2013)

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.
95/001,241 10/02/2009 7,355,990 2187.020REX0 5321
93344 7590 06/03/2013
Flachsbart & Greenspoon
333 N. Michigan Avenue
27th Floor
Chicago, IL 60601-3901
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/03/2013 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
____________
SYBASE, INC.
Requester

v.

TELECOMMUNICATION SYSTEMS, INC.
Patent Owner and Appellant
____________________

Appeal 2012-012689
Reexamination Control 95/001,241
Patent US 7,355,990 B2
Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and STANLEY
M.WEINBERG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Owner appeals under 35 U.S.C. § 134(b) (2002) from the final
decision of the Examiner adverse to the patentability of claims 1-3, 5-12, 14-
21, and 23-35. Requester has not submitted any papers in this appeal.
Patent Owner’s representative attended an oral hearing on January 9, 2013.
We have jurisdiction under 35 U.S.C. § 315 (2002).
We affirm-in-part.
1

Invention
The '990 patent relates to wireless communication services that
include a short messaging service (SMS), which allows communication of
short messages, typically up to 160 characters. Each SMS network typically
includes a short message service center (SMSC), which acts as a store-and-
forward mechanism for delivery of short messages to a subscriber.
'990 patent, col. 1, l. 20 - col. 2, l. 5.
Figure 2 of the '990 patent is reproduced below.

1
The '990 patent is a continuation of the application that matured into
US 6,891,811. This appeal is related to inter partes reexamination
Appeal 2012-012688.
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Figure 2 is said to depict a mobile-to-HTTP gateway (MHG) 100 as a
“black box” that can be installed into existing systems to enable bi-
directional communication between a mobile device and one or more
Internet Protocol (IP) servers. '990 patent, col. 5, ll. 12-18.
The MHG may translate between standard wireless-protocol
commands (e.g., an SMPP protocol command from an SMSC) and HTTP
POST commands that are recognized and processed by an application server
on the Internet (e.g., a Web server). Id. at col. 5, ll. 37-41; col. 6, ll. 40-59.

Claims
Claims 1-28 are original patent claims. Dependent claims 29-35 are
proposed new claims. Claims 1-3, 5-12, 14-21, and 23-35 stand rejected.
Claims 4, 13, and 22 are confirmed. Claims 1, 9, and 20 are independent.
Claims 1 and 9 are illustrative.
1. A gateway, comprising:

a first communication path to accept a short message
from a mobile device;

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a translation module to insert said short message into an
Hypertext Transfer Protocol (HTTP) message;

a second communication path to push said HTTP
message to at least one Universal Resource Locator (URL); and

a return communication path to receive a return message
relating to said HTTP message.

9. A method of communicating between a wireless
device and an application program on an Internet Protocol
server, comprising:

sending a short message from said wireless device to said
Internet Protocol server;

routing said short message using a wireless protocol
message; and

pushing said short message to said Internet Protocol
server using a Hypertext Transfer Protocol (HTTP) message;
and

returning data back to said wireless device from said
Internet Protocol server through an HTTP stream established
with said HTTP protocol POST message.

Prior Art
Lohtia US 6,560,456 B1 May 6, 2003
Lonnroth US 6,826,597 B1 November 30, 2004
Chen US 7,020,685 B1 March 28, 2006
Nokia II WO 98/11744 A1 March 19, 1998
Nokia I WO 98/47270 A2 October 22, 1998

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Owner’s Contentions

The Examiner has withdrawn some grounds of rejection that were
appealed. Ans. 3. Of the rejections that remain, Owner contends that the
Examiner erred in entering the following rejections against claims 1-3, 5-12,
14-21, and 23-35 (Ans. 4-7; App. Br. 6-8):
1. Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nokia I;
2. Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nokia II;
3. Claims 1-3, 6, 7, 9, 14, 16, 29-31, and 33 are rejected under 35
U.S.C. § 102(e) as being anticipated by Chen;
4. Claims 2, 8-12, 14, 16-18, 20, 21, 23, and 25-27 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Nokia I and the admitted
prior art (“AAPA”);
5. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Nokia I and Lonnroth;
6. Claims 15 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I, AAPA, and Lonnroth:
7. Claims 19 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I, AAPA, and Lohtia;
8. Claims 9, 14, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I and Chen;
9. Claims 10-12, 17, 18, 20, 21, 23, and 25-27 are rejected under 35
U.S.C § 103(a) as being unpatentable over Nokia I, Chen, and AAPA;
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10. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I, Chen, and Lonnroth;
11. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I, Chen, AAPA, and Lonnroth;
12. Claims 19 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia I, Chen, AAPA, and Lohtia;
13. Claims 2, 8-12, 14, 16-18, 20, 21, 23, and 25-27 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Nokia II and AAPA;
14. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Nokia II and Lonnroth;
15. Claims 15 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia II, AAPA, and Lonnroth;
16. Claims 19 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nokia II, AAPA, and Lohtia;
17. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen;
18. Claims 8, 10-12, 17, 18, 20, 21, 23, 25-27, 34, and 35 are rejected
under 35 U.S.C. § 103(a) as being unpatentable Chen and AAPA;
19. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen and Lonnroth;
20. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen, AAPA, and Lonnroth; and
21. Claims 19 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen, AAPA, and Lohtia.

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ANALYSIS
I. CLAIM INTERPETATION
Principles of Law
In this proceeding, the claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Office must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. Id. (citing
In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
There is a “heavy presumption” that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002).
“[T]he corresponding structure for a § 112 ¶ 6 claim for a computer-
implemented function is the algorithm disclosed in the specification.”
Aristocrat Techs. Austl. Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241,
1249 (Fed. Cir. 2005)). Moreover, “[f]or computer-implemented means-
plus-function claims where the disclosed structure is a computer
programmed to implement an algorithm, the disclosed structure is not the
general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.” Finisar Corp. v. The
DirectTV Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations and
internal quotation marks omitted).

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Translation Module
The '990 patent and related patent 6,891,811 were involved in a patent
dispute between the instant parties in the U.S. District Court for the Eastern
District of Virginia (Civil Action No. 2:09cv387). In an Order entered
December 23, 2009, the Court construed the claim term “translation
module” as a § 112, sixth paragraph limitation with function and
corresponding structure as follows:
Translation Module: “Function: to translate said short
message into on HTTP protocol message and/or to translate
said return results into a short message. Means: A combination
of hardware, firmware and/or software that translates a short
message into an HTTP protocol message and is capable of
creating a short message from an HTTP protocol message.”

Dec. 23, 2009 Order at 26.
Upon reconsideration, however, the Court determined that such a
construction would result in “pure functional” claiming. The Court
substituted a new construction.
The Court has reviewed the specifications, and identified the
algorithm disclosed therein. Accordingly, the Court ADOPTS
the following construction for "Translation Module" in the '811
and '990 Patents:
Function: to translate said short message into an HTTP
protocol message and/or to translate said return results
into a short message. Means: Poster 408---which
formulates an HTTP protocol POST command based on
the value of the esm_class in the SMPP message,
whereby:
(i) if the esm_class value equals '0', the POST command
includes the message body; and
(ii) if the esm_class value equals '16', the POST
command includes a
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resp_track_id and the message body"
and inserts return results if a resp_track_id is included in
a HTIP message from the web server to the gateway, by
prepending $R + resp_track_id + $M to the short
message before it is sent to the short message service
center---and equivalents thereof.

Feb. 5, 2010 Order at 3-4.
In this proceeding, Owner asserts that the function of the “translation
module” of claim 1 is “to insert said short message into an Hypertext
Transfer Protocol (HTTP) message.” App. Br. 17. The corresponding
structure is asserted to be: “Poster 408 --- which formulates an HTTP
protocol message protocol POST command based on the value of the
esm_class in the SMPP message, whereby if the esm_class value equals '0',
the POST command includes the message body.” Id. The Examiner
counters that the corresponding structure is “not as limited as Appellant
suggests in the Brief.” Ans. 10.
We note that the District Court, Owner, and the Examiner agree to the
extent that the “translation module” of instant claim 1 is to be interpreted in
accordance with § 112, sixth paragraph. Even though the “translation
module” in claim 1 is interpreted as a “means-plus-function” limitation in
accordance with 35 U.S.C. § 112, sixth paragraph, the rule of “broadest
reasonable interpretation” of claim terms consistent with the disclosure still
applies. See In re Donaldson Co., 16 F.3d 1189, 1194 (Fed. Cir. 1994) (en
banc) (Section 112, sixth paragraph merely sets a limit on how broadly the
USPTO may construe means-plus-function language under the rubric of
“reasonable interpretation.”).

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Our reviewing court has also explained:
The first step in construing a means-plus-function
limitation is to identify the function explicitly recited in the
claim. The next step is to identify the corresponding structure
set forth in the written description that performs the particular
function set forth in the claim. Section 112 paragraph 6 does
not “permit incorporation of structure from the written
description beyond that necessary to perform the claimed
function.” Structural features that do not actually perform the
recited function do not constitute corresponding structure and
thus do not serve as claim limitations.

Asyst Techs, Inc. v. Empak, Inc., 268 F.3d 1364, 1369-70 (Fed. Cir. 2001)
(citations omitted).
We adopt the District Court’s final construction for the term
“translation module,” except for the second or alternative function of
translating the return message and the final clause with respect to
corresponding structure (“and inserts return results if. . .”), because return of
a message is not a function associated with the “translation module” of
claim 1. That is, the function of translating return results into a short
message is not a requirement of claim 1. The '990 patent describes the
corresponding structure (algorithm) for the translation module in part at
column 8, line 56 through column 9, line 20. Only new mobile originated
requests and/or menu responses are forwarded by the wireless Internet
gateway. '990 patent, col. 9, ll. 12-16. Of the SMPP messages that are
forwarded to MHG 100, the patent describes that a reference ID may or may
not be passed, depending on SMPP message type (id. at ll. 17-20).
Poster 408 converts the SMPP Message into an HTTP protocol
POST command. Id. at col. 12, ll. 1-8.
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Means for Pushing
Although the Examiner concedes that the “translation module” of
claim 1 is to be interpreted in accordance with 35 U.S.C. § 112, sixth
paragraph, the Examiner considers the “means for pushing” recited in
claim 20 not to be a “means plus function” limitation. In the Examiner’s
view, the limitation of “using a Hypertext Transfer Protocol (HTTP)
message” constitutes a sufficient act (or software structure) for performing
the specified function of “conveying said short message from said wireless
device to said Internet Protocol server.” Ans. 11.
While “using” a particular protocol is a limitation of the claim, the
“using” does not represent (algorithmic) structure sufficient to convey the
message to an IP server. As described, Poster 408 converts the SMPP
Message into an HTTP protocol POST command request to a specific URL.
'990 patent, col. 12, ll. 5-8. The content of the HTTP protocol POST
command, however, depends on the SMPP message type. Id. at col. 9, ll.
17-20.
We therefore find the corresponding structure for the “means for
pushing” in claim 20 to be essentially the same as that for the “translation
module” in claim 1. That is, the associated function of the “means for
pushing” is conveying the short message from the wireless device to the
Internet Protocol server, but an HTTP protocol must be used for conveying
the short message. The corresponding structure: Poster 408---which
formulates an HTTP protocol POST command based on the value of the
esm_class in the SMPP message, whereby:
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(i) if the esm_class value equals “0”, the POST command includes the
message body; and
(ii) if the esm_class value equals “16”, the POST command includes a
resp_track_id and the message body.

II. REJECTIONS
I. Claims 1-3, 5-8, 20, 21, and 23-35
Independent claim 1 recites the “translation module” that we have
interpreted supra. The Examiner “maintains that the translation module of
claim 1 does not even require formulating a POST message, especially since
a POST message is not claimed in claim 1 but a POST message is
specifically claimed in dependent claim 2.” Ans. 10. We agree with the
Examiner to the extent that dependent claim 2 may be read as requiring that
the HTTP protocol message is a POST message, as opposed to embracing an
equivalent (under § 112, sixth paragraph) of the disclosed algorithm that
does not use an HTTP POST message.
However, we agree with Owner that the Examiner appears to find that
the software in Nokia I, Nokia II, and Chen is the same as or an equivalent
of the claimed “translation module” because of identical function, rather
than addressing the respective disclosed algorithms. According to the
Examiner, the references “thus each teach an element that performs the same
function as the claimed translation module in substantially similar ways
(specifically, by constructing an HTTP message that includes the content of
a received short message).” Ans. 10-11. The function recited in claim 1,
however, is that of inserting the short message into an HTTP protocol
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message, but the associated structure is the algorithm described by the
'990 patent.
The Examiner also opines that “[t]he limitation in a means-plus-
function claim is the overall structure corresponding to the claimed function.
The individual components of an overall structure that correspond to the
claimed function are not claim limitations.” Id. at 11. The Examiner cites
no authority in support of the position. In a computer-implemented means-
plus-function context, individual components of the algorithm may be
required as corresponding to the claimed function. See Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1254-55 (Fed. Cir. 2005) (“The corresponding
structure limits the ‘time domain processing means’ to a two-step algorithm
in which the processor calculates generally nondiscrete estimates and then
selects the discrete value closest to each estimate, or structural equivalents
thereof.”) (emphasis added).
In any event, the rejections applied against claim 1 and its dependent
claims do not show that the applied references disclose the same or
equivalent structure as that corresponding to the “translation module.” We
do not sustain the rejections against claims 1-3, 5-8, and 29-35.
The “means for pushing” in independent claim 20, as we have noted
supra, is to be interpreted in accordance with 35 U.S.C. § 112, sixth
paragraph. As the rejections applied against claim 20 and its dependents fail
to show the same or equivalent structure as that corresponding to the “means
for pushing,” we do not sustain the rejections against claims 20, 21, and 23-
28.

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II. Chen
Figure 4 of Chen is reproduced below.

Figure 4 is said to be a block diagram of a system for using SMS to
provide a wireless device with access to hypermedia content on the Internet.
Chen col. 2, ll. 50-52. Web server 202 is a network server that provides
accessible hypermedia information to other computing devices on the
Internet 215. Wireless device 100 accesses the information in Web
server 202 via SMSC 212 and proxy server 108, which is coupled to Internet
215. Id. at col. 5, l. 66 - col. 6, l. 8. When wireless device 100 sends out a
“keyword” SMS message received by SMSC 212, the SMS message is
forwarded by SMSC 212 to proxy server 108. Proxy server 108 sends out a
proxy request on behalf of wireless device 100, to Web server 202, for
hypermedia content corresponding to the “keyword” in the SMS message.
Id. at col. 6, ll. 12-19.
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Owner alleges that “Chen is not enabling” and purports to incorporate
by reference the “reasoning” in the Appeal Brief in related Appeal 2010-
012688 (Control No. 95/001,240) that concerns patent 6,891,811. App.
Br. 38.
Owner’s attempt to circumvent the applicable page and word limits
for an appeal brief in an inter partes reexamination is not well taken. See
Decision on Petition, entered Aug. 18, 2011, denying entry of over-sized
brief. The bare allegation of non-enablement need not be addressed.
However, we will reproduce below why we considered Owner’s arguments
in the related appeal to be not persuasive.
Owner acknowledges in the related appeal that Chen discloses
sending a short message to the Chen proxy server (108; Fig. 4), but argues
that Chen’s Figure 3 presents a mere “black box” that receives a short
message from the wireless device.
Figure 3 of Chen is reproduced below.

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Figure 3 is said to be a high-level block diagram of a computer system
representative of proxy server 108. Chen col. 5, ll. 11-13. The computer
system includes a processor 31, ROM 32, RAM 33, mass storage device 34,
network interface 35, an SMS interface 36, and a number of input/output
devices 37-1 through 37-N, all of which are connected to system bus 36. Id.
at ll. 13-30.
Chen’s network interface 35 provides communication between the
computer system and other computer systems on the landnet 112, which may
be any device suitable for enabling the computer system to communicate
data with a remote processing system over a conventional data
communication link. Chen col. 5, ll. 31-39. SMS interface 36 provides data
communication between the computer system and the SMSC. SMS
interface 36 may be the same or similar type of device as network
interface 35. Id. at ll. 40-45.
We agree with the Examiner that Chen discloses many additional
details regarding the receipt of SMS messages by proxy server 108. .
Owner alleges, however, that “the cited portions of Chen do not disclose
processing of the SMS messaging protocol in any respect.”
Owner does not explain, however, what “processing” of the SMS
messaging protocol needs to be further described in Chen. The '990 patent
teaches that SMS networks and short message service centers (SMSC) were
conventional and widely used. E.g., '811 patent, col. 1, l. 14 - col. 4, l. 35.
The '881 patent’s description of existing SMS networks is consistent with
that of Chen’s. See Chen, col. 1, l. 19 - col. 2, l. 10. Moreover, the
'881 patent teaches that an SMS network used terms and protocols mainly as
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defined by the North American standard IS-41. Col. 2, ll. 12-17. An SMSC
typically included a storage subsystem to store short messages that had
failed to be delivered. The SMSC typically further included various
interfaces to receive short messages from various sources and protocols,
including the Short Message Peer-to-Peer SMPP protocol via Transmission
Control Protocol/Internet Protocol (TCP/IP), since some of the various
sources of the short messages could be gateways to other networks.
'811 patent col. 2, ll. 18-32. In particular, the SMSC could include a
gateway/interworking block that enables the SMSC to communicate with the
rest of the SMS network 500 (Fig. 6 “Prior Art”), using standard signaling
protocols. Id. at ll. 33-47. For example, the SMSC may send a request for
routing information to the home location register (HLR), which sends
routing information back to the SMSC based on stored information that
includes the availability of the wireless subscriber and his or her mobile
switching center (MSC). Id. at col. 3, ll. 41-51.
Owner submits that Chen purports to transport SMS messages from a
wireless device to a proxy server, but does not acknowledge the
“complicated message manipulations” needed to do this using short message
protocols such as SMPP. However, a patent specification need not disclose
what is well known in the art. Lindemann Maschinenfabrik GmbH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing
In re Myers, 410 F.2d 420 (CCPA 1969)). “A patent need not teach, and
preferably omits, what is well known in the art.” Spectra-Physics, Inc. v.
Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987). “Not every last detail
is to be described, else patent specifications would turn into production
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specifications, which they were never intended to be.” In re Gay, 309 F.2d
769, 774 (CCPA 1962). Chen did not need to “acknowledge” the
manipulations needed to transport SMS messages between devices, because
such techniques were already well known in the art. See '811 patent, col. 2,
ll. 22-30; col. 4, ll. 42-46. See also Lohtia, col. 8, ll. 13-25; col. 9, ll. 22-36
(“SMPP over TCP/IP circuit”).
Chen describes transfer of a short message -- a small amount of data --
between two computer systems (proxy server 108 and SMSC 212; Fig. 4).
Communication between the wireless device 100 and proxy server 108 is via
the carrier infrastructure, which includes SMSC 212. Chen, col. 6, ll. 6-11.
Owner has not demonstrated that one of ordinary skill in the art would be
unable to effect the transfer of a small amount of data between two computer
systems without undue experimentation, using existing protocols for
transferring a small amount of data between computer systems.
We also agree with the Examiner that Chen does not describe a
“technological contradiction,” as alleged by Owner. Chen at column 4
describes wireless Airnet 104 as supporting wireless access protocol (WAP).
Col. 4, ll. 7-21. However, Chen does not describe using WAP (or an
associated microbrowser) for transfer of short messages. See Chen, col. 2,
ll. 11-25.
In view of the foregoing, we are not persuaded that Chen represents a
non-enabling reference.

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III. Chen and Claims 9, 14, 16
Owner argues, in response to the § 102(e) rejection of claim 9 over
Chen, that Chen fails to disclose conveying “the same” short message that
was received from a wireless device to an Internet Protocol server using an
HTTP protocol POST message because Chen teaches transcoding the
received short message before conveying the transcoded entity. App. Br. 36.
Although Owner submits arguments that Chen fails to disclose
“inserting” the text of a short message from an SMSC into an HTTP
protocol message (App. Br. 33-35), claim 9 does not recite “inserting.”
Claim 9 recites “pushing” the short message from the wireless device to the
Internet Protocol server using an HTTP protocol message.
The words “inserting” and “pushing” are not synonymous. The
transitive verb “insert” has been defined to mean:
1 a: to set (something) in : put or thrust in: INTRODUCE
» inserting the scions in hardy stocks«
» insert a key noiselessly in a lock«

b: to put or introduce into the body of: INTERPOLATE
» inserted a few words of description«

c: to set in and make fast (as a piece of fabric)
» insert a patch in a pair of torn trousers«
» insert a decorative medallion in a tooled leather cover«
esp: to insert by sewing between two cut edges
» inserting bands of lace on the front of the blouse«.

Webster’s Third New International Dictionary, Unabridged 1993.
On the other hand, the term push “[i]n networks and the Internet
[means] to send data or a program from a server to a client at the instigation
of the server.” Microsoft Computer Dictionary, 5th Ed. at 541 (Mar. 15,
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2002). The word is compared to “pull,” which means the process of
retrieving data from a network server. Id. at 540.
Thus, an interpretation of “pushing” the short message from the
wireless device to the Internet Protocol server, consistent with the
'990 patent specification, requires no more than transferring the short
message from the wireless device to the Internet Protocol server without a
request (being “pulled”) from the server, which operates as a client in the
process of receiving the pushed message. The word “push” does not require
that the short message is copied letter for letter or bit for bit, unchanged,
when transferred.
Chen describes transcoding the text of an SMS request to a character
set that is expected when communicating with external applications. Chen,
col. 7, ll. 33-41. However, the same SMS message (e.g., “QUOTE PHCM”)
entered by the user of the wireless device is contained in the text/plain
content of the HTTP POST message that is sent to the IP server application.
Id. at col. 7, ll. 20-31; col. 8, ll. 3-21. Thus, regardless of whether the
“transcoding” might not copy or reproduce the identical sequence of bits that
make up the short message, as apparently argued by Owner, the information
content of the short message and the HTTP POST message is identical. A
proper interpretation of “pushing” the short message, as used in claim 9,
does not distinguish over conveying of the short message as described by
Chen.
We agree with the Examiner, therefore, that claim 9 is properly
rejected under 35 U.S.C. § 102(e) as being anticipated by Chen. Claims 14
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21
and 16, not separately argued, fall with claim 9. See App. Br. 37-38; 37
C.F.R. § 41.67(c)(1)(vii).

IV. Chen, AAPA and Claims 10-12, 17, 18
Claim 10 further limits the method of claim 9 such that the wireless
protocol is “SMPP.” For substantially the same reasons that we are not
persuaded of error in the rejections of claim 10 over the Nokia references
and AAPA (Part VII, infra), we are not persuaded of error in the rejection of
claim 10 over Chen and AAPA. We agree with the Examiner that it would
have been obvious to use a documented, well-known, and widely used
wireless protocol (SMPP) in the wireless portion of an SMS system.
Claims 11, 12, 17, and 18, not separately argued, fall with claim 9.

V. Chen, Lonnroth and Claim 15
Claim 15 further limits base claim 9 in requiring that the short
message is conveyed to “a plurality of” Internet Protocol servers using
respective HTTP POST messages. Lonnroth teaches (col. 7, l. 55 - col. 8,
l. 18) that HTTP messages may be sent to a plurality of Web sites in order to
efficiently request information from different sources. Owner’s argument
(App. Br. 42) that the “nature and content” of the HTTP requests are not
disclosed by Lonnroth is not responsive to the applied combination of Chen
and Lonnroth. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). We are
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22
not persuaded of error in the § 103(a) rejection of claim 15 over Chen and
Lonnroth.

VI. Nokia I, Nokia II, AAPA and Claim 9
Owner submits that Nokia II is “almost identical” in substance to
Nokia I. App. Br. 22. Nokia I describes an SMSC that uses HTTP and
HTML protocols over the Internet. Nokia I at 14. As an example, when a
wireless user wants to receive information on bus timetables from a Web
page, the user sends the short message “BUS” to the SMSC. Id. at 15. The
user may send an inquiry “BUS 65A” in a short message and receive a
timetable for the bus, via the SMSC, from the Web server. Id. at 14-18.
Nokia II provides a similar disclosure. Nokia II at 9-12.
The Nokia references do not specify the particular HTTP or HTML
protocols that are used between the SMSC and the Web servers. The
rejections turn to the '990 patent’s disclosure that the HTTP POST message
was a well-known and documented HTTP protocol for the transfer of data at
the time of invention. See '990 patent, col. 6, l. 50 - col. 7, l. 20.
2

We agree with Owner (App. Br. 26) to the extent that the use of HTTP
POST messages in the context of an SMS network or with an SMSC does
not qualify as admitted prior art. However, the Nokia references already
described the use of HTTP protocols over a network by an SMSC. We agree
with the Examiner that one of ordinary skill in the art would look to pre-
existing protocols for transfer of data, as opposed to striving to improve that

2
We observe that “said HTTP protocol POST message” lacks proper
antecedent basis in claim 9.
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23
which already existed. In other words, it would have been obvious to use an
existing HTTP protocol to effect the transfer of data between the SMSC and
the Web servers. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
We also disagree with Owner (App. Br. 27-28) to the extent that a
“reasonable expectation of success” cannot be attributed to the use of a
documented, well-known, and widely used protocol such as the HTTP POST
message.
We therefore are not persuaded that the Examiner erred in rejecting
claim 9 under § 103(a) over the Nokia references and AAPA.

VII. Nokia I, Nokia II, AAPA and Claims 10-12, 14, 16-18
Claim 10 incorporates the method of claim 9, further limiting the
wireless protocol to be “SMPP.” Owner argues that in the rejections over
the Nokia references and AAPA, the Examiner has overlooked that “Nokia I
and II use GSM networks (a European standard that already contained fully
functioning SMS capacity) and it is entirely unpredictable what would
happen when embellishing Nokia I or II with the unneeded functionality
inherent in SMPP protocols.” App. Br. 28-29. Owner makes the statement,
however, with knowledge that the Examiner has pointed out that the SMPP
protocol is compatible with GSM networks. See Action Closing Prosecution
(ACP) 86-87; Ans. 16; related 6,891,811 patent Appendix A (col. 13 et seq.,
cols. 20-22) (SMPP Specification § 2.1).
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24
Further, for reasons similar to why we agree with the Examiner that it
would have been obvious to use an HTTP POST message as an HTTP
protocol, we agree that it would have been obvious to use a documented,
well-known, and widely used wireless protocol (SMPP) in the wireless
portion of an SMS system.
We are not persuaded of error in the rejections of claim 10 under
§ 103(a) over Nokia I, Nokia II, and AAPA. Claims 11, 12, and 16-18, not
separately argued, fall with claim 9.
Claim 14, which also depends from claim 9, recites that the short
message is sent to a predefined address. We agree with the Examiner
(Ans. 17) that claim 14 does not specify or otherwise require that the short
message be sent to a predefined address of the IP server. Accordingly,
Owner’s arguments (App. Br. 29-30) that rely on something not required by
claim 14 are unavailing.

VIII. Nokia I, Nokia II, AAPA, Lonnroth and Claim 15
As Owner relies on unpersuasive arguments, already considered, in
response to the rejections over the Nokia references, AAPA, and Lonnroth,
we sustain the rejections of claim 15. See 37 C.F.R. § 41.67(c)(1)(vii).

IX. Nokia I, Nokia II, AAPA, Lohtia and Claim 19
Owner acknowledges that the Examiner added Lohtia to the
combinations of Nokia I, Nokia II, and AAPA for its teaching of using the
IS-41 protocol for the return data to the wireless device. App. Br. 31.
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25
Owner submits, however, that “Lohtia has no mention of return data, or of
the IS-41 protocol being used for messages to the wireless device.” Id.
The Examiner points out (Ans. 18) that the Nokia references disclose
conveying return data from an SMSC to a wireless device, while Lohtia
teaches that IS-41 can be substituted for (i.e., was interchangeable with)
GSM. Lohtia col. 7, ll. 47-49.
We agree with the Examiner that the evidence establishes that one of
ordinary skill in the art would have found it obvious to use the IS-41
protocol in accordance with the requirements of claim 19. We are not
persuaded of error in the Examiner’s rejections of claim 19 as obvious over
either of Nokia I and Nokia II, in combination with AAPA and Lohtia.

X. “Remaining Rejections”
Owner does not demonstrate error in the “remaining rejections”
applied against claims 9 and its dependent claims over the combinations that
include Nokia I and Chen. App. Br. 32. Nor does Owner demonstrate error
in the rejection of claim 19 as obvious over the combination of Chen,
AAPA, and Lohtia. See App. Br. 42-43; Ans. 26.

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26
XI. Summary/Conclusion
We sustain the Examiner’s rejections under 35 U.S.C. §§ 102(e) and
103(a) against claims 9-12 and 14-19. We do not sustain any of the
rejections applied against claims 1-3, 5-8, 20, 21, and 23-35.

DECISION
The Examiner’s decision adverse to the patentability of claims 9-12
and 14-19 is affirmed.
The Examiner’s decision adverse to the patentability of claims 1-3, 5-
8, 20, 21, and 23-35 is reversed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED-IN-PART

ak

Patent Owner:

Flachsbart & Greenspoon
333 N. Michigan Avenue
27
th
Floor
Chicago, IL 60601-3901

Third Party Requester:

Sterne Kessler, Goldstein & Fox, PLLC
1100 New York Avenue, NW
Washington, DC 20005

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Reference Shelf
Webster's Dictionary : Full Text
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1 insert vb -ED/-ING/-S

[L insertus, past part. of inserere, fr. in- 2in- serere to join, bind together more at SERIES]
vt

1 a : to set (something) in : put or thrust in: INTRODUCE
» inserting the scions in hardy stocks«
» insert a key noiselessly in a lock«
b : to put or introduce into the body of: INTERPOLATE
» inserted a few words of description«
c : to set in and make fast (as a piece of fabric)
» insert a patch in a pair of torn trousers«
» insert a decorative medallion in a tooled leather cover«
esp : to insert by sewing between two cut edges
» inserting bands of lace on the front of the blouse«
2 : to attach or fix in a particular position in the course of natural growth --- used only in past part.
»the meristem is inserted between more or less differentiated tissue regions
- Katherine Esau«
vi

of a muscle : to be in attachment to the part to be moved
»retraction is accomplished by two fairly thick bands of retractor muscles which insert on the lophophore
and originate in the body wall
- Mary Rogick«

Copyright © Webster's Third New International Dictionary, Unabridged, Copyright © 1993 Merriam-Webster, Incorporated.
Published under license from Merriam-Webster, Incorporated.

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