Ex Parte Ahlin et al

Patent Trial and Appeal Board

Jan 29, 2014

11960963 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ESKIL GUNNAR AHLIN and ERICA KATO MARCUS
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Appeal 2011-013573
Application 11/960,963
Technology Center 2400
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Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Eskil Gunnar Ahlin and Erica Kato Marcus (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C.
§ 103(a) claims 1-7, 9, 13-16, and 18-26 as unpatentable over Punaganti
Venkata (US 2006/0073812 A1, published Apr. 6, 2006) and Kahn (US
2006/0200740 A1, published Sep. 7, 2006) and claim 17 as unpatentable
over Punaganti Venkata, Kahn, and Casey (US 2005/0021425 A1, published
Jan. 27, 2005). Claims 8 and 10-12 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed invention and reads as
follows:
1. A method, comprising:
receiving, by a mobile device, an electronic message that
includes a web feed uniform resource locator (URL), where the
electronic message corresponds to one of an e-mail message, a
short message service message, a multimedia messaging service
message, an instant messaging and presence service message,
an Intemet Protocol multimedia subsystem instant messaging
service message, or an attachment to an e-mail message;
determining, by the mobile device, whether the web feed
URL includes a character string that identifies the web feed
URL as a web feed URL; and
associating, by the mobile device, the web feed URL
with a contact entry in the mobile device in response to
determining that the web feed URL includes the character string
that identifies the web feed URL as a web feed URL, where the
contact entry is an existing contact entry or a new contact entry.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
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ANALYSIS
Claims 1-7 and 19-26
Independent claim 1 requires, inter alia, “associating, by the mobile
device, the web feed URL with a contact entry in the mobile device.” App.
Br. 36, Claims App’x. Similarly, independent claim 19 requires, “one or
more instructions for associating the web feed URL link to a contact entry of
the device.” Id. at 40.
The Examiner found that that Punaganti Venkata discloses all the
limitations of independent claims 1 and 19, but does not disclose the above
recited limitations. App. Br. 4-5. Nonetheless, the Examiner found that
because Kahn discloses information regarding the owner of a relationship
XML feed, namely, “picture, contact information, link to feed” Kahn
discloses a “contact entry” as called for by independent claims 1 and 19.
Ans. 5 (citing to Kahn, paras. [0041], [0047], and [0048]).
Appellants argue that, “even if a relationship XML can be used to
define a relationship between a person and feed, this relationship would not
associate the feed to a contact entry, for that person, in a mobile device.”
App. Br. 15-16; see also App. Br. 29-33. According to Appellants, “[t]he
term ‘contact entry’ is more than simply, for example a ‘name of a person’”
but rather “imparts a meaning with context and/or use in the art.” Reply Br.
3. Appellants point to paragraph [0083] of the Specification, which states
that, “‘[f]or example, linker 605 may automatically associate the web feed
URL with a contact entry of a phone book in device 200.’” See id.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
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Cir. 2004). In this case, Appellants’ Specification states that, “the contact
entry may include contact information, such as the name of a person, a
telephone number of a person, and/or [] email [] of a person.” Spec. 16,
para. [0075]. Although we appreciate Appellants’ position that as
understood by a person of ordinary skill in the art a “contact entry” is a
“phone book in device 200,” we do not agree that this is an explicit
definition of the term “contact entry,” but merely an example. See Reply Br.
3; see also Spec. 19, para. [0083]. As such, in view of the foregoing and
because Kahn discloses information about the owner of the XML, that is, “a
picture of the person, her name , her contact information and links to her
feed and/or web page” (see Kahn, para. [0047]), we agree with the
Examiner that “[t]here is no basis in the [S]pecification[] for limiting the
contact entry in a way that would exclude the feed owner information as
taught by Kahn.” See Ans. 20. Furthermore, because the information
regarding the XML owner is received and displayed by Kahn’s browser on
Punaganti Venkata’s receiving mobile device, in contrast to Appellants’
position, we find that the combined teachings of Punaganti Venkata and
Kahn disclose associating the web feed URL with a contact entry in the
mobile device.
Appellants further argue that “KAHN is silent regarding . . .
determining that the web feed URL includes a character string that identifies
the web feed URL as a web feed URL.” App. Br. 14. We are not persuaded
by Appellants’ argument because as the Examiner correctly found,
paragraph [0040] of Kahn specifically discloses identifying whether a web
site is publishing a feed by determining whether the web feed URL contains
a character string such as “rss”. See Ans. 5, 20-21.
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Lastly, we note that because Kahn first identifies whether a web feed
URL is a web feed URL and then associates the web feed URL with its
XML owner, we are not persuaded by Appellants’ position that the
combined teachings of Punaganti Venkata and Kahn fail to disclose that
associating the web feed URL with a contact entry is in response to
determining whether a web feed URL is a web feed URL. See App. Br. 14
and 32.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claims 1 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Punaganti Venkata and Kahn.
With respect to dependent claims 2-7 and 20-26, Appellants do not
present any other arguments separate from the arguments set forth supra.
See App. Br. 17, 34. Accordingly, for the same reasons, we likewise sustain
the rejection of claims 2-7 and 20-26 over the combined teachings of
Punaganti Venkata and Kahn.

Claim 9
Dependent claim 9 adds the limitation of “linking the web feed URL
to the contact entry that corresponds to the sender information.” App. Br.
37, Claims App’x. Similarly, independent claim 13 requires, inter alia, “a
processor to execute the instructions to . . . associate the web feed URL link
to a contact entry associated with a sender of the electronic message.” Id. at
38.
The Examiner found that because Kahn discloses “linking the web
feed URL to the contact entry that corresponds to the sender information
(paragraph [0047], lines 1-6) . . . the feed viewer associates the contact
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information of the sender of the feed to the links of the feed).” Ans. 8
(citing to Kahn, para. [0047]). In other words, the Examiner is interpreting
Kahn’s display of contact information about the XML owner as the claimed
“contact entry” of the sender. See Advisory Action, (mailed December 10,
2010, page 2).
Appellants argue that although Kahn discloses “using relationship
XML to define relationships between people and a feed” Kahn fails to
disclose “using relationship XML to associate a feed with a contact entry
that corresponds to sender information.” App. Br. 19.
We agree with Appellants’ position because Kahn only associates the
web feed with the contact information of the web feed owner and fails to
mention the sender of the web feed. Although we appreciate that Kahn’s
relationship XML displays contact information about people, such as the
owner of a web feed or acquaintances, i.e., friends, nonetheless, this does not
mean that such a person is also the sender of the web feed. Rejections based
on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). In this case, the Examiner’s interpretation of Kahn’s owner of a web
feed as the sender of an electronic message that contains a web feed requires
speculation on the Examiner’s part. Hence, we do not sustain the rejection
of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Punaganti Venkata
and Kahn.

Appeal 2011-013573
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Claims 13-16 and 18
Similar to dependent claim 9, independent claim 13 requires, inter
alia, “a processor to execute the instructions to . . . associate the web feed
URL link to a contact entry associated with a sender of the electronic
message.” App. Br. 38, Claims App’x (emphasis added). For the reasons
set forth supra, we also do not sustain the rejection of independent claim 13
and its dependent claims 14-16 and 18 over the combined teachings of
Punaganti Venkata and Kahn.
Claim 17
Claim 17 depends from independent claim 13. The addition of Casey
does not remedy the deficiencies of Punaganti Venkata and Kahn as
discussed above. Therefore, for the same reasons, we do not sustain the
rejection of claim 17 over the combined teachings of Punaganti Venkata,
Kahn, and Casey.

SUMMARY
The Examiner’s decision to reject claims 1-7 and 19-26 under 35
U.S.C. § 103(a) as unpatentable over Punaganti Venkata and Kahn is
Affirmed.
The Examiner’s decision to reject claims 9, 13-16, and 18 under 35
U.S.C. § 103(a) as unpatentable over Punaganti Venkata and Kahn is
Reversed.
The Examiner’s decision to reject claim 17 under 35 U.S.C. § 103(a)
as unpatentable over Punaganti Venkata, Kahn, and Casey is Reversed.

AFFIRMED-IN-PART
rvb