Ex Parte Buchhop et alDownload PDFPatent Trial and Appeal BoardJun 9, 201611419653 (P.T.A.B. Jun. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111419,653 0512212006 Peter K. Buchhop 71733 7590 06/13/2016 BANNER & WITCOFF, LTD 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 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. 007131.00046 9702 EXAMINER VU, MICHAEL T ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 06/13/2016 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): PTO-71733@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER K. BUCHHOP and ANNE B. FYK Appeal2014-007118 Application 11/419,653 Technology Center 2600 Before ALLEN R. MacDONALD, JON M. JURGOV AN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3, 4, 6-8, 10, 11, 13-16, 18, and 19. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 According to Appellants, the real party in interest is Bank of America Corporation. App. Br. 1. Appeal2014-007118 Application 11/419,653 THE INVENTION Appellants' invention relates to enhanced short message service ("SMS") for wireless devices. Spec. i-f 1. The enhanced messaging service allows for messages to be stored and encrypted. Spec. i-f 5. Exemplary independent claim 1 is reproduced below. 1. A method of processing a short message service (SMS) message compnsmg: encrypting the SMS message; storing the SMS message on a first storage device local to a wireless device; sending the SMS message to a wireless carrier SMS facility; and storing in XML format the SMS message from the first storage device on a second storage device that is remote from the wireless device, wherein said storing the SMS message on the second storage device comprises: connecting via a gateway server to an application server; and receiving a response from the application server that the storing of the SMS message is successful. REFERENCES and REJECTIONS 1. Claims 1, 3, 6, 8, 10, 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pei et al. (US 2003/0078032, Al, pub. Apr. 24, 2003 "Pei") and Anvekar et al. (US 7,221,951, B2, iss. May 22, 2007 "Anvekar"). Final Act. 4. 2. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pei, Anvekar, and Othmer (US 7,363,029, B2, iss. Apr. 22, 2008). Final Act. 8. 2 Appeal2014-007118 Application 11/419,653 3. Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pei, Anvekar, and Gress et al. (US 7,308,477, Bl, iss. Dec. 11, 2007 "Gress"). Final Act. 9. 4. Claims 15, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pei and Othmer. Final Act. 10. ANALYSIS I. Claim 1 The Examiner finds Pei teaches or suggests "receiving a response from the application server that the storing of the SMS message is successful," as recited in claim 1. Final Act. 5 (citing Pei i-fi-f l 0, 34). Specifically, the Examiner finds Pei "teaches that a short message must be authenticated via correctly decrypting the message. If the message decryption is UNSUCCESSFUL, the user is informed of the failure, which clearly reads on a RESPONSE being sent (albeit for unsuccessful reception) .... " Ans. 3. Further, the Examiner finds that the user is notified if the short message is successfully transmitted. Ans. 4--5 (citing Pei i-fi-f 10, 34). Along with these findings, the Examiner also finds Anvekar teaches "storing in XML format the SMS message." Final Act. 6 (citing Anvekar 5:58---6:39, Figs. 3 and 6B). Addressing the Examiner's findings, Appellants argue "[h ]owever, sending a second message to a user to indicate that a first message did not properly complete the steps of authentication and/or parsing is also not equivalent to 'receiving a response from the application server that the storing of the SMS message is successful,' as claimed." App. Br. 8. 3 Appeal2014-007118 Application 11/419,653 We are unpersuaded by Appellants' arguments. Pei discloses that decryption and/ or parsing of a message occurs after the message has been transmitted from the SMS Gateway. See Fig. 2. Thus, for decryption or parsing of an SMS message to take place, the message must have been received and stored at the Control Application Server. We, therefore, agree with the Examiner that a message that informs the user when decryption/parsing of the SMS message is unsuccessful, or when the SMS message has been transmitted successfully, along with the Examiner's finding that SMS message is stored in XML format, informs the user that the message has been stored successfully. We sustain the Examiner's rejection of independent claim 1 for the reasons stated above. We also sustain the Examiner's rejection of independent claims 8 and 15 for which Appellants repeat the same arguments presented for claim 1. See App. Br. 8-11. Finally we sustain the rejection of dependent claims 3, 4, 7, 10, 11, 14, and 18 for which Appellants make no arguments for separate patentability. II. Claim 6 The Examiner finds paragraphs 10 and 29 of Pei teach "sending the message comprises sending the message to a plurality of recipients," as recited in claim 6. Final Act. 6. Specifically, the reference to mobile phones in paragraph 10 of Pei is interpreted by the Examiner as teaching that a plurality of mobile phones can be involved in the process of sending and/or receiving messages. Ans. 8. Similarly, the description of allowing users to have their own user name and password indicates to the Examiner that multiple users can be supported by Pei. Ans. 8-9 (citing Pei i-f 29). Thus, the Examiner concludes, "the home owners (e.g. husband and wife) can 4 Appeal2014-007118 Application 11/419,653 [both] send commands to the appliances and both receive messages/reports/status that the command has been successfully performed." Ans. 9. Appellants argue there is no explicit teaching that "an SMS message be sent to more than one recipient." Reply Br. 7. We agree. Although Pei may teach that multiple users can send messages to their home appliances, it does not teach that a particular message is sent to multiple such home appliances or that a particular message from the home appliance is sent back to multiple users. Accordingly, we do not sustain the Examiner's rejection of dependent claim 6. For the same reasons we also do not sustain the Examiner's rejection of claims 13 and 19. III. Claim 16 The Examiner relies on paragraph 10 as teaching "if the result is unsuccessful, repeating the attempt to store the message,'' as recited in claim 16, by disclosing "that the SMS message is guaranteed delivery EVEN WHEN the receiver is powered off, which means that the system will temporarily store the message and repeat attempts to send/store that message since eventually it will be delivered." Ans. 9. Appellants argue that paragraph 10 of Pei "at best ... teaches the ability of the message to be stored in the short message service center until the message is able to be received" but does not teach "repeating the attempt to store the message." Reply Br. 8. We agree with Appellants. Although Pei states that a message is forwarded to a receiver even if the receiver is powered off, this implies, at best, that the message will be repeatedly sent to the receiver until the 5 Appeal2014-007118 Application 11/419,653 receiver successfully receives it. But we agree with Appellants that Pei does not teach that the attempt to store the message will be repeated if the receiver is powered off, as required by claim 16. Accordingly, we do not sustain the Examiner's rejection of claim 16. DECISION The Examiner's rejection of claims 1, 3, 4, 7, 8, 10, 11, 14, 15, and 18 is affirmed. The Examiner's rejection of claims 6, 13, 16, and 19 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation