Ex Parte Daymond et al

Patent Trial and Appeal Board

Dec 10, 2014

11545880 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW DAYMOND, UWE SCHWARZ, JENS BENNER,
OSSI POLLANEN, and JAN CHIPCHASE
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Appeal 2012-007882
Application 11/545,880
Technology Center 2600
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Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1–9, 11, 12, 14–20, 22, 23, 25–35, 37, and 40–46. Claims 10, 13, 21,
24, 36, 38, and 39 have been cancelled. (App. Br. 3). We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Nokia Corporation as the real party in interest.
(App. Br. 3.)
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THE INVENTION
The claims are directed to enabling a phone owner to lend a phone
to a borrower and to define a temporary limit for the use of the phone by
the borrower. (Abstract.) Claim 1, reproduced below, is illustrative of
this claimed subject matter:
1. A method comprising:
receiving, at a mobile device, an input indicating a
temporary limit for a network prepaid subscription of a
communication network;
in response to receiving the input, generating, by the
mobile device, instructions for the communication network to
create a temporary account associated with the network prepaid
subscription, where the instructions comprise the temporary
limit for the temporary account;
providing the instructions comprising the temporary limit
for the temporary account to the communication network; and
in response to providing the instructions, receiving, at the
mobile device, a confirmation message, from the
communication network, the confirmation message confirming
that the instructions comprising the temporary limit for the
temporary account has been received and processed.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barak et al. US 2002/0126820 A1 Sept. 12, 2002
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Kit Temple WO/2004/059964 A1 Dec. 18, 2003
(Examiner used first name to refer to reference)
Stefan Karlsson WO/03/094495 A1 Apr. 30, 2003
(Examiner used first name to refer to reference)
Hurst US 2003/0072425 A1 Apr. 17, 2003
Loureiro US 2002/0077108 A1 June 20, 2002
REJECTIONS
The Examiner made the following rejections:
Claims 1–8, 11, 12, 14–19, 22, 23, 25–30, 32–35, 37, and 44–46 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Barak,
Temple, Kit (hereafter, “Kit”) and Karlsson, Stefan (hereafter, “Stefan”).
(Ans. 5–11.)
Claims 9, 20, and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barak, Kit, Stefan, and Hurst. (Ans. 11–13.)
Claims 40–43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barak, Kit, Stefan, and Loureiro. (Ans. 13–14.)
ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 7–54),
the issues presented on appeal are:
First Issue: Whether Barak, Kit, and Stefan teach or suggest
“instructions . . . to create a temporary account” which “comprise the
temporary limit for the temporary account” as claimed in independent
claims 1, 5, 17, 28, 32, 33, 34, and 37.
Second Issue: Whether Barak, Kit, and Stefan teach or suggest a
“confirmation message confirming that the instructions comprising the
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temporary limit for the temporary account has been received and processed,”
as claimed in independent claims 1, 28, 33, and 37.
Third Issue: Whether Barak, Kit, and Stefan teach or suggest
“wherein the temporary limit is provided to the network with in-band
signaling containing a pre-determined part of a dial string, by including
temporary limit related information in the destination address of a message
or by inserting the temporary limit in the text of a message,” as claimed in
claim 8, and a similar limitation of claim 19.
Fourth Issue: Whether Barak, Kit, and Stefan teach or suggest “an
application configured to obtain configuration information from the
communication network and to correspondingly format the temporary limit
before providing of the temporary limit to the communication network,” as
claimed in claim 29.
ANALYSIS
First Issue
Appellants argue Barak, Kit, and Stefan do not teach or suggest
“instructions . . . to create a temporary account” which “comprise the
temporary limit for the temporary account” as claimed in independent
claims 1, 5, 17, 28, 32, 33, 34, and 37. (App. Br. 8–12, 14–23, 25–30, 32–
37.) The Examiner concluded Barak taught or suggested this limitation,
based on the disclosure in Barak whereby a “primary” user “interacts with
the server from his or her computer” to “assign[] user identifiers to
individuals” and “also assign particular call control limitations” to the user
identifier. (Ans. 5–6, 15–16; Barak ¶¶ 23–24.)
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Appellants argue Barak discloses first the primary user account is
established, and then once the account is established, the authorized person
may assign the call control limitations. (App. Br. 9–10.) Based on this,
Appellants argue “there is no disclosure or suggestion that ‘instructions to
create a temporary account’ ‘comprise the temporary limit for the temporary
account’ as in claim 1.” (App. Br. 10.) We do not find this argument
persuasive. The fact the primary account is first established, before the
separate creation of a temporary account, is not relevant to the claim
limitation. The claim is directed to operations with respect to establishing
temporary accounts — the claim assumes the original subscriber has already
obtained the basic subscription.
Moreover, apparently Appellants construe this claim element to limit
the term “instructions” so as to require the mobile device to generate a single
command or transmission in order to both create the temporary account and
impose the temporary limit. (E.g., App. Br. 10.) We do not agree the claim
element is so limited. Appellants have not provided a definition of
“instructions” to exclude an instruction followed by another instruction, or a
series of additional instructions. We agree with the Examiner’s conclusion
that the “interact[ion] with the server . . . to set up the account parameters”
disclosed in Barak taught or suggested this claim element. (Ans. 15; Barak
¶ 24.)
Appellants note the Examiner acknowledged that Barak does not
explicitly disclose that the accounts established by the primary user are
temporary. (App. Br. 11.) However, the Examiner correctly concluded
Barak taught or suggested that the created accounts could be temporary,
given the disclosure that an account could “deplete[] a budgetary limitation,”
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and “any other limitation may be added, removed, or modified at any time
by the primary.” (Ans. 15; Barak ¶ 24.) In addition, the Examiner
confirmed this conclusion by reference to Stefan, which disclosed
establishing temporary accounts in an analogous context. (Ans. 7; Stefan
p. 7, ll. 21–35.) We agree with the Examiner.
Second Issue
Appellants argue Barak, Kit, and Stefan do not teach or suggest a
“confirmation message confirming that the instructions comprising the
temporary limit for the temporary account has been received and processed,”
as claimed in independent claims 1, 28, 33, and 37. (App. Br. 12–14, 23–24,
30–31, 37–38.) The Examiner concluded this limitation was taught or
suggested by Kit, which discloses the use of a pre-paid “token” in the form
of a unique code, that a user transmits to a server via a mobile phone,
whereby the server responds by sending back “appropriate content.”
(Ans. 6–7; Kit p. 5, ll. 1–5, 15–20.)
Appellants argue Kit does not disclose a “‘pre-paid card.’” (App. Br.
13.) However, the card described in Kit specifically includes a “retail
price.” (Kit p. 7, l. 5.) Appellants also argue Kit does not disclose
establishing a temporary account. (App. Br. 14.) However, as discussed
above, that aspect of the claim is taught or suggested by Barak together with
Stefan. We agree with the Examiner’s conclusion that Barak, Stefan, and
Kit taken together taught or suggested this claim element.
Third Issue
Appellants argue Barak, Kit, and Stefan do not teach or suggest
“wherein the temporary limit is provided to the network with in-band
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signaling containing a pre-determined part of a dial string, by including
temporary limit related information in the destination address of a message
or by inserting the temporary limit in the text of a message,” as claimed in
claim 8, and a similar limitation of claim 19. (App. Br. 41–42, 46–48.)
We agree with the Examiner’s conclusion that the disclosure in Barak
that the primary user “interacts with the server from his or her computer” to
establish temporary accounts teaches or suggests the “inserting the
temporary limit in the text of a message” alternative of this claim. (Ans. 21–
22; Barak ¶ 24.)
Fourth Issue
Appellants argue Barak, Kit, and Stefan do not teach or suggest “an
application configured to obtain configuration information from the
communication network and to correspondingly format the temporary limit
before providing of the temporary limit to the communication network,” as
claimed in claim 29. (App. Br. 48–49.)
We agree with the Examiner’s conclusion that the disclosure in Barak
that the primary user “interacts with the server from his or her computer” to
establish temporary accounts, together with the disclosure in Kit of the
submission of token numbers to servers, also teaches or suggests this claim
limitation. (Ans. 24; Barak ¶ 24; Kit p. 4, ll. 25–30.)

CONCLUSIONS
As discussed above, we sustain the 35 U.S.C. § 103(a) rejection of
independent claims 1, 5, 17, 28, 32, 33, 34, and 37 and dependent claims 8,
19 and 29. Appellants raised no additional substantive arguments
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concerning the rejections of the remaining dependent claims. Accordingly,
we also sustain the rejection claims 2–4, 6, 7, 11, 12, 14–16, 18, 22, 23, 25–
27, 30, 35, and 44–46 in light of Barak, Kit, and Stefan; the rejection of
claims 9, 20, and 31 in light of Barak, Kit, Stefan, and Hurst; and the
rejection of claims 40–43 in light of Barak, Kit, Stefan, and Loureiro.

DECISION
The Examiner’s decision to reject claims 1–9, 11, 12, 14–20, 22, 23,
25–35, 37, and 40–46 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)(iv)(2011).

AFFIRMED

cdc