Ex Parte Aarni et al

Patent Trial and Appeal Board

Sep 1, 2016

12468792 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/468,792 05/19/2009
10949 7590 09/06/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Ville Aarni
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
042933/454391 1607
EXAMINER
HEBERT, THEODORE E
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
09/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VILLE AARNI, MIIKKA SAINIO, DMITRY KOLESNIKOV,
NIKLAS VON KNORRING, and ATTE LAHTIRANTA
Appeal2015-005340
Application 12/468,792
Technology Center 2100
Before JOSEPH L. DIXON, SCOTT B. HOW ARD, and SCOTT E. BAIN,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Nokia Corporation, as the real party in interest. App.
Br. 3.
Appeal2015-005340
Application 12/468,792
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for providing device compatibility service. Abstract, Spec. i-f 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving a first query from a service indicating device
identification data related to a mobile communication device as
a term of the first query, wherein the first query is initiated and
formed by the mobile communication device and the device
identification data indicates a specific mobile communication
device;
initiating, by a processor, a second query into multiple
sources configured to present information about the mobile
communication device based on the indicated device
identification data; and
in response to the received first query, causing to be sent
to the service a response that indicates different data associated
with the device identification data based on a database of device
characteristics associated \'l1ith the service, \'I/herein the ser\rice
is adapted based on the device identification data and the
database of device characteristics is maintained by another
service.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Pearce et al. US 2006/0187868 Al Aug.24,2006
Aaltonen et al. GB 2,442,818 A Apr. 16, 2008
Phil Genera and Joshua Siegel, "Introducing Mobile Search with My
Location," Google Mobile Blog,
http://googlemobile.blogspot.com/2008/09 /introducing-mobile-search-with-
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Application 12/468,792
my.html (last accessed Aug. 15, 2016), (Sept. 11, 2008) (hereinafter
"Google").
REJECTIONS
Claims 1--4, 6, 7, 9-15, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Google in view of Aaltonen. Final Act.
3-17; Adv. Act. 2.
Claims 5, 8, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Google in view of Aaltonen and Pearce. Final Act.
17-22.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding claims 1-20.
Appellants argue the Examiner erred in finding Google teaches a
query including "device identification data [that] indicates a specific mobile
communication device," as recited in claim 1. App. Br. 8-9; Reply Br. 2-3.
More specifically, Appellants argue Google is silent as to what information
about the device, if any, is sent with the query. App. Br. 8. In response to
the Examiner finding Google teaches information identifying the device
must be provided to the cell-tower in order to receive a response to the
query, Appellants argue an alternate process in which device specific
information is not sent and the cell-tower transmits the response to the query
as a general broadcast to all devices:
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Application 12/468,792
Moreover, the Appeal Brief identified another scenario in
which the disclosures of Google could be implemented without
device identification data. A response to a query could be
broadcasted over a network and be made available to every
device in the network, while still returning the results to the
requesting device. Applicant notes that these arguments made
in the Appeal Brief are not addressed in the Examiner's
Answer. There is nothing in Google to preclude such an
implementation, and since Google does not otherwise expressly
indicate or suggest that device identification data is transmitted
from a device, the Office has made an improper assumption.
Reply Br. 3; see also App. Br. 8-9 (emphasis added).
The Examiner finds Google teaches or suggests the disputed
limitation. More specifically, the Examiner finds Google teaches that the
query includes device specific identification in order to insure that the
response is sent to the correct device:
Google teaches a mobile search query formed by the
mobile communication device which queries a service provider
who utilizes cellular tower location data to determine the
location of the communication device and returns that location
information to the communication device. [Google].
Therefore, in Google, a query is transmitted indicating the
identity of the specific device from the device to the service,
which then determines the location of the specific device via
inquiry to a cell-tower based location tracking service. Id.
Finally, the service returns information to the specific device
which is tailored to the specific device issuing the query. Id.
Thus, Google teaches device identification data which indicates
the specific device which issued the query.
Adv. Act. 2; Ans. 3--4 ("Further, the service would be unable to return the
information to the specific device without data that identifies the device.").
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Application 12/468,792
We are not persuaded by Appellants' arguments that the Examiner
erred. Given the concerns in Google over privacy issues (see, e.g., Google
("We take your privacy seriously."), it is unreasonable to read the reference
as suggesting that the response to the query would be a general transmission
to all devices in the area. Instead, we agree with the Examiner that a more
reasonable interpretation of Google is that the query must include device
specific identification in order for the specific device to receive the response
to the query.
Even if Appellants' reading of Google was one of two reasonable
ways Google could have been implemented, we would still find Appellants'
argument unpersuasive. Absent "factual evidence of any critical
relationship ... , or of any difference in effect or result ... [ s ]uch [routine]
changes in design of the various features are no more than obvious
variations consistent with the principles known in that art." In re Rice, 341
F.2d 309, 314 (CCPA 1965). In other words, "[i]f a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Given the lack of
evidence or argument that including device specific identification with a
query would have been "uniquely challenging or difficult for one of ordinary
skill in the art, "see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418), we are not
persuaded that the Examiner erred.
Appellants also argue the Examiner did not find a reason to combine
the references. App. Br. 9-10. In the Appeal Brief, Appellants assert that
the Examiner's finding that the two references are analogous art is merely a
"general conclusory statement without a clear articulation of the rationale for
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combining the references in an effort to obviate the claims. Id. (citing KSR,
550 U.S. 398, quoting In re Kahn, 441 F.3d 977, 988 (CA Fed. 2006)). In
the Reply Brief, Appellants address the reasons given by the Examiner and
argue that Google does not provide a motivation for the proposed
modification:
However, Applicant submits that there is no suggestion
in Google to customize responses, and certainly no suggestion
of customizing responses based on the device making the
request. ...
There is no suggestion anywhere in Google that
customizing responses for a device is desired. There is no
suggested problem in Google that could be solved by
customizing responses based on a device.
Reply Br. 1-2 (emphasis omitted).
In the Final Office Action, the Examiner finds that a person of
ordinary skill in the art would have been motivated to modify Google in
light of 1A .. altonen:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to combine a
method for formulating a mobile device information query by
the device itself, as taught in Google with a system for mobile
device information, as taught in Aaltonen. Google teaches that
there may be a variety of devices attempting to query a service.
Id. Therefore, one having ordinary skill in the art would have
been motivated to combine a method for formulating a mobile
device information query by the device itself, as taught in
Google with a system for mobile device information, as taught
in Aaltonen, for the purpose of customizing the responses to the
queries depending on the devices making the request.
Final Act. 4--5 (emphasis omitted). The Examiner relied on substantially the
same finding in the Answer. See Ans. 4--5.
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Appellants did not address the Examiner's findings on a reason to
combine the references in the Appeal Brief. Instead, Appellants only
addressed those reasons in the Reply Brief without offering any good cause
for the delay. Compare App. Br. 9-10, with Reply Br. 1-2. Because
Appellants did not raise that argument in the opening brief and good cause
has not been shown why it should be considered, we will not consider this
argument. 37 C.F.R. §41.41(b )(2) (2014); Ex parte Borden, 93 USPQ2d
14 73, 14 7 4 (BP AI 2010) (Informative) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.").
Because Appellants did not identify any errors in the Examiner's
findings regarding a reason to combine in the Appeal Brief, the Board "will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection." Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). According, we summarily sustain the Examiner's findings on
a reason to combine.
However, even if we did consider the belated argument raised in the
Reply Brief, we would still sustain the Examiner's findings. Appellants rely
on an incorrect statement of law. In KSR, the Supreme Court rejected the
rigid application of the teaching, suggestion, or motivation ("TSM") test in
favor of a more expansive and flexible approach to the determination of
obviousness. KSR, 550 U.S. at 415. The Court further stated, "the 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." Id. at
418. Thus, to the extent Appellants' argument is premised on strictly
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applying the TSM test, it is not persuasive of Examiner error. Instead, we
determine that the statements relied on by the Examiner to reject claim 1
(Final Act. 4--5; Ans. 4--5) provide a "rational underpinning to support the
legal conclusion of obviousness." Kahn, 441 F.3d at 988, cited with
approval in KSR, 550 U.S. at 418.
According! y, we sustain the Examiner's rejection of claim 1, along
with the rejections of claims 9 and 17, which are argued on the same
grounds, and claims 2--4, 6, 7, 10-15, 18, and 19, which are not argued
separately.
With respect to dependent claims 5, 8, 16, and 20, Appellants merely
contend that because the additional reference used in the rejection of these
claims (Pearce) does not cure the shortcomings of the other references
applied against claim 1, the Examiner failed to make a prima facie case of
obviousness for these claims. App. Br. 10-11. Because we determine that
the rejection of claim 1 is not erroneous for the reasons discussed above, we
sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-2 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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