Ex Parte Erola et al

Patent Trial and Appeal Board

Mar 15, 2016

12447035 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/447,035 04/27/2010
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
03/17/2016
FIRST NAMED INVENTOR
EsaErola
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.
P5974USOO 1897
EXAMINER
TRUONG, DENNIS
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESA EROLA and VILLE WARSTA
Appeal2013-007830
Application 12/447,035 1
Technology Center 2100
Before CARLA M. KRIVAK, JEFFREY S. SMITH, and KIMBERLY McGRAW,
Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner's final
rejections of claims 1-15, 22-24, 34, and 35. App. Br. 5-10. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Nokia Corporation, Finland, as the real party in interest.
App. Br. 1.
Appeal2013-007830
Application 12/447,035
STATEMENT OF THE CASE
The present invention relates to methods for creating service provider
accounts for devices such as mobile phones. Spec. 1:1-14. Claim 1 is
representative of the subject matter appeal and is reproduced below.
1. A method comprising:
causing, at least in part, transmission of one or more parameters
associated with a device;
receiving a list of one or more service providers at the device,
the list being derived, using one or more of the parameters, from a set
of service providers;
facilitating user-selection via the device of at least one of the
service providers in the list; and
facilitating communication between the device and the selected
service provider to enable the user to create a service account with the
selected service provider from the device.
App. Br. 12 (Claims App'x).
REJECTIONS
The Examiner made the following rejections:
Claim 1 stands provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 11 of co-
pending Application No. 11/585,780. Final Act. 4--6.
Claims 1-15, 22-24, and 34--35 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kruis (US 2005/0015505 Al, published Jan. 20, 2005). Final
Act. 6-19.
ANALYSIS
DOUBLE PATENTING REJECTION
Appellants do not contest the provisional obviousness-type double patenting
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Application 12/447,035
rejection of claim 1. We note that arguments not made are considered waived. See
37 C.F.R. § 41.37(c)(l)(iv). Therefore, we proforma sustain the Examiner's
provisional obviousness-type double patenting rejection of claim 1.
REJECTION UNDER 35 U.S.C. § 102(b)
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. App. Br. 5-10. We disagree with
Appellants' conclusions. We adopt as our own the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and as set forth by
the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief.
We highlight and address specific arguments and findings for emphasis as follows.
Appellants argue Kruis fails to disclose "receiving a list of one or more
service providers at a device, the list being derived, using one or more parameters,
from a set of service providers," as recited in claim 1 and similarly in independent
claims 15 and 34. App. Br. 7. Appellants contend Kruis' teaching that the user
has the ability to transmit e-mails through any of multiple email services is not an
explicit or inherent teaching of the disputed limitation. Id.
This argument is not persuasive as it fails to address the full scope of the
Examiner's findings. See e.g., Final Act. 2-19. The Examiner also finds Kruis
discloses receiving a list of one or more service providers at a device. Final Act. 7,
citing Kruis i-f 105 ("device 102 displays a list of all of the primary and additional
services that have been integrated with the associated service"). The Examiner
further finds the list was derived using one or more parameters associated with the
device from a set of service providers. Final Act. 7, citing Kruis i-fi-147, 96, 98, 110
(discussing, inter alia, records for each device containing information relating to
the device's capabilities and services provisioned by multiple service providers).
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Appeal2013-007830
Application 12/447,035
The Examiner's findings and analysis are reasonable and support the finding of
anticipation.
Appellants also argue the Examiner erred in finding Kruis discloses "an
apparatus that is caused to perform 'receive one or more first parameters
associated with a device' and 'derive ... a list of one or more service providers
from a set of service providers using one or more of the first parameters,' as
recited in independent claim 34 and similarly in independent claims 1 and 15"
(App. Br. 8) as well as "receiving a contact record including at least a user-
service identifier identifying a user of the device for the created service
account, and storing the received contact record in a contacts database" as required
by dependent claim 11 (App. Br. 10).
However, Appellants do not provide any substantive arguments to support
their position or to rebut the Examiner's findings that Kruis discloses these
limitations. See e.g., Final Act. 2-3, 6-8, 13, and 15-19. Nor do Appellants
provide any analysis of the cited specific textual portions of the cited references
upon which the Examiner relies in the rejections. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating "the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art").
In view of the above discussion, we are not persuaded the Examiner has
erred and we sustain the Examiner's rejection of claims 1, 11, and 34. We also
sustain the Examiner's rejection of claims 2-10, 12-15, 22-24, and 35, which were
not argued separately.
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Application 12/447,035
DECISION
The Examiner's provisional obviousness-type double patenting rejection of
claim 1 is affirmed.
The Examiner's rejection of claims 1-15, 22-24, and 34--35 as anticipated 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)(l)(iv).
AFFIRMED
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