Ex Parte Bengtsson et al

Patent Trial and Appeal Board

Jun 26, 2014

11736018 (P.T.A.B. Jun. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/736,018 04/17/2007 Henrik BENGTSSON PS06 1723US2 3037
58342 7590 06/26/2014
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
SAMS, MATTHEW C
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
06/26/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRIK BENGTSSON, JOHAN APELQVIST,
and PER ASTRAND
____________

Appeal 2011-011536
Application 11/736,018
Technology Center 2600
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-5, 7-18, and 20-27. Br. 2; Ans. 2. Claims 6 and 19
are canceled. Response to Final Office Action, Oct. 25, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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REJECTIONS
The Examiner rejected claims 1, 3-5, 7, 14, 16-18, and 20 under 35
U.S.C. § 103(a) as unpatentable over U.S. Pub. No. 2003/0055977 A1 to
Miller and U.S. Patent No. 7,356,567 B2 to Odell. Ans. 3-7.
The Examiner rejected claims 2 and 15 under § 103(a) as unpatentable
over Miller, Odell, and U.S. Pub. No. 2004/0068567 A1 to Moran. Id. at 7-
8.
The Examiner rejected claims 8-13 and 21-27 under § 103(a) as
unpatentable over Miller, Odell, and U.S. Pub. No. 2003/0088676 A1 to
Smith. Id. at 8-11.

ANALYSIS
Appellants address all claims collectively. Br. 4-7. We select claim 1
as representative, such that all claims stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The contentions on appeal, as set forth by the Appeal Brief and
Examiner’s Answer, present an issue of whether the rejections’ applied
combinations of Miller and Odell teach or suggest a claimed “surrogate
device.” This issue is raised by two of Appellants’ contentions, addressed
separately below.
First Contention
Appellants argue:
With the system presently claimed, an instant messaging
(IM) session can be handed off to a surrogate device that is not
a pre-selected device. . . . For example, the user can type into
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the web browser interface of the PC the network address of the
chat server and then identify her mobile device by its phone
number and/or pin number. The handoff controller recognizes
that the PC has connected to the server for purposes of serving
as a surrogate for the mobile device and redirects the IM
session to the PC.
. . . .
Odell et al. teaches transferring an IM session from a first
IM controller on a first device to a second IM controller on a
second device, where the user is signed on concurrently to the
first IM controller of the first device and the second IM
controller on the second device. In Odell et al., the transfer
cannot be initiated if the user is signed on to only one instant
messaging controller. . . .
Br. 5-6. In the omitted portions shown by ellipses, Appellants provide
another encompassed example of the claimed surrogate device and a further
description of Odell’s noted teaching.
The Examiner responds:
Odell teaches the ability to select the device from which the IM
session is transferred from (Fig. 3B [320, 325a & 325b], Fig.
3C [320, 325a & 325b], Fig. 4B [435a & 435b]), which the
Examiner views as identifying information of a mobile device.
(i.e. laptop & PDA, Col. 7 line 12 through Col. 8 line 17 and
Col. 8 line 60 through Col. 9 line 32)
Ans. 13.
We agree with the Examiner’s response, particularly insofar that
Odell’s Figure 3B interface clearly teaches the claimed surrogate device’s
interface as recited. Claim 1 requires:
wherein the surrogate device includes a web browser
interface permitting information identifying the mobile device
to be input and transmitted to the application server, and based
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on such identification information, the hand-off controller is
able to recognize that the surrogate device has connected to the
application server and intends to participate in the application
session in place of the mobile device.
Since the Figure 3B interface’s selection of the transferring device (menu
320) results in transfer of the IM session from a mobile device to the
surrogate device, the identifying information logically enables a handoff
controller to recognize that the surrogate device is (i) presently connected to
the corresponding IM server (e.g., via a confirmation), and (ii) intends to
handle the IM session in place of the mobile device. Otherwise, the network
would not implement the handoff. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (“[A]nalysis 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.”); In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
Contrary to Appellants’ argument, the surrogate device need not
identify the transferring mobile device before being “signed on
concurrently” and/or accordingly becoming a “preselected” surrogate device
option, as contended, because the argument is not commensurate in scope
with the language of claim 1. For similar reasons, nor must the surrogate
device identify the transferring mobile device before “participat[ing] in the
[IM] application session,” as partly recited. Rather, as reflected above, the
surrogate device need only identify the transferring mobile device such that
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“the hand-off controller is able to recognize that the surrogate device has
connected to the application server and intends to participate in the
application session in place of the mobile device.” There is simply no claim
restriction within the above recitation – or the independent claim 1 as a
whole – requiring either the surrogate device’s connection to the IM server
or participation within the IM session to be initiated by the surrogate
device’s input of the identifying information.
Second Contention
Appellants also argue:
There is no disclosure whatsoever in Odell et al. that a
web browser interface of the surrogate device is used to input
and transmit information identifying the mobile device to the
application server to initiate the transfer of the IM session.
Br. 6.
The Examiner responds:
Odell teaches the controller [ ] can be a “browser application”
or a “microbrowser application.” (Col. 4 lines 1-3) Therefore,
the Examiner concludes that all of the “exemplary
implementations” of the instant messaging controller and
controller interface (including Col. 7 line 12 through Col. 8 line
17 (transfer initiated on the surrogate device) and Col. 8 line 60
through Col. 9 line 32 (transfer initiated on the surrogate
device) as examples) are implementable on a web browser of
the surrogate device.
Ans. 12.
We agree with the entirety of the Examiner’s response. Odell’s
invention, including the Figure 3B interface, is executed by “controllers” of
the mobile and surrogate devices. Odell, col. 7, ll. 12-17. As stated by the
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Examiner, the “controller” can be a web browser. Id. at col. 4, ll. 1-9.
Given these considerations, the Examiner reasonably inferred that the Figure
3B interface is disclosed as a web browser interface.

DECISION
For the foregoing reasons, the Examiner’s decision rejecting claims 1-
5, 7-18, and 20-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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