Ex Parte Gosselin et alDownload PDFPatent Trial and Appeal BoardSep 23, 201612191904 (P.T.A.B. Sep. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/191,904 08/14/2008 Mark H. Gosselin 25315 7590 09/27/2016 LOWE GRAHAM JONES, PLLC 701 FIFTH A VENUE SUITE4800 SEATTLE, WA 98104 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. CQNT-1-1010 1736 EXAMINER HTUN,SANA ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 09/27/2016 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): patentdocketing@lowegrahamjones.com docketing-patent@lowegrahamjones.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK H. GOSSELIN and THOMAS P. MALISKA Appeal2015-005068 Application 12/191,904 Technology Center 2400 Before MAHSHID D. SAADAT, MELISSA A. HAAPALA, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-28, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b) We affirm. We designate the affirmance of claim 26 as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Cequint, Inc. (App. Br. 1.) Appeal2015-005068 Application 12/191,904 STATEivIENT OF THE CASE Introduction Appellants' disclosed and claimed invention "permits a user to experience applications for trial on the mobile handset for network applications and services ... as well as for applications which operate on the mobile handset." (Aug. 14, 2008 Specification ("Spec.") i-f 3.) Claim 1 is illustrative, and is reproduced below: 1. A method comprising: automatically activating one or more applications for trial for a caller identification feature by a trial software client (TSC) application on a mobile device in response to detecting a state of call handler software on the mobile device by the TSC application; displaying one or more messages on the mobile device by the TSC application in response to the detected state of said call handler software, at least one of said displayed messages comprising a request for adoption of the one or more applications for trial. Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner as evidence in rejecting the claims on appeal: Cohen et al. 2 ("Cohen") Bahr US 2004/0110494 Al June 10, 2004 US 7 ,046,997 B2 May 16, 2006 2 The Examiner cites to the issued patent, U.S. 7,873,390 B2 (iss. Jan. 18, 2011), in the rejections. (Final Office Action (mailed Feb. 27, 2014) ("Final Act.") 3.) 2 Appeal2015-005068 Application 12/191,904 Claims 1-28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cohen in view of Bahr. (See Final Act. 3-9.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner erred. We are not persuaded that the Examiner erred in rejecting the claims on appeal for the reasons discussed infra. Claims 1-24 and 28 With respect to claim 1, the Examiner finds Cohen teaches all the limitations of claim 1 other than the "application for a caller identification feature. However, [the Examiner finds that limitation] is considered obvious by the rationale found in Bahr." (Final Act. 4, emphasis omitted.) Appellants contend that Cohen neither teaches nor suggests "(1) 'one or more applications for trial[,'] (2) 'a trial software client (TSC),' [and (3)] much less the recited relationship between these components." (App. Br. 4.) One or More Applications for Trial The Examiner points to code 144 for the enhanced functionality in Cohen as the "one or more applications for trial." (Final Act. 3; Ans. 3.) Figure 1 of Cohen is reproduced below. 3 Appeal2015-005068 Application 12/191,904 F!G.1 Figure 1 depicts "a cellular phone in which there is embedded application software that includes functionality that can be turned on and off remotely." (Cohen, 3: 19-22.) Figure 1 shows "code 140 for the voice recognition application software, which [] includes code 142 for its basic functionality as well as code 144 for enhanced functionality, which in this case is speech-to- text functionality 144. The activation and/or deactivation of the speech-to- text functionality is controlled by a software switch 146." (Cohen, 4:27-35.) Cohen further describes the enhanced functionality (e.g., voice recognition software) is in an activated state for a predetermined trial period. (Cohen 5:5-9). Appellants contend that code 144 in Cohen is not "one or more applications for trial," however, Appellants have not offered persuasive argument that the Examiner's interpretation is either overbroad or unreasonable. (App. Br. 4--5.) Moreover, the Examiner's interpretation is consistent with the Specification that refers to applications and features interchangeably: 4 Appeal2015-005068 Application 12/191,904 For example, initiation of a trial may occur on receipt of an incoming call or on activation of the handset,for advanced caller identification features; or when the incoming call handler is inactive for a period of time, for audio-visual or Internet-based applications; or when the user accesses phone setup menus or the mobile handset caller directory, for trial of advanced device management applications; or on detection of a connection to the mobile data network, for the trial of network features. (Spec. i-f 3, emphasis added; see e.g., id. at i-fi-1 11 ("The feature at trial may be, for example, an advanced caller identification feature such as caller name, or city and state, display on the handset during incoming calls."); 12 ("The user is asked if they wished to purchase the advanced calling feature as a network information service from one to many times during the trial period ... "); 19 ("For the trial of an application on the mobile device or of a network feature ... ").) Thus, we are not persuaded that the Examiner erred. Trial Software Client The Examiner points to software switch 146 in Cohen as the "trial software client." (Final Act. 3; Ans. 3.) Appellants contend that "the application on the mobile device in Cohen activates and deactivates itself- there is no component corresponding to the 'TSC' that performs such functions on behalf of another application in the manner recited in claim 1." (App. Br. 4.) Appellants have not offered persuasive argument that the Examiner erred. We agree with the Examiner's finding that software switch 146 of Cohen teaches or suggests the trial software client of claim 1. We further observe that Cohen teaches or suggests that "[t]he activation and/or deactivation of the speech-to-text functionality is controlled by a software switch 146." (Cohen, 4:34--35.) Cohen further describes if the trial period elapses without he customer signing up for the enhanced functionality, then 5 Appeal2015-005068 Application 12/191,904 a deactivation key is sent to the customer's phone turning off the enhanced functionality. (Cohen 5:24--28). "Jn Response to Detecting a State of Call Handler Software" We understand the Examiner's rejection to be based on the broadest reasonable interpretation of the term "in response to detecting a state of call handler software" to include the state of the call handler software device after activation. (Final Act. 3; Ans. 2-3.) Figure 2 of Cohen is reproduced below. F!G.2 Figure 2 depicts "a revenue-generating model that uses the technology illustrated by" Figure 1 (reproduced above). Appellants do not propose a different construction for this term, but instead argue that the activation of 6 Appeal2015-005068 Application 12/191,904 the enhanced feature in Cohen by the TSC is not in response to the state of the call handler software. (App. Br. 4--5.) Specifically, according to Appellants, the activation of the enhanced feature is in response to the activation of the phone, not in response to detecting the state of the call handler software. (Id. at 4; Reply 3.) Appellants have not offered persuasive argument that the Examiner's interpretation is either overbroad or unreasonable. We observe that the Specification states that "initiation of a trial may occur on receipt of an incoming call or on activation of the handset." (Spec. i-f 3; see also id. at i-fi-1 8 ("The trial software is launched, and the trial commences, based on an autonomous trigger, such as an incoming call or activation of the handset .. . "); 19 ("In one example, an application displaying caller information operates for the user on first use or activation of the mobile handset ... "); 21 ("For example, initiation of a trial may occur on receipt of an incoming call or on activation of the handset.) Figure 3 of the Specification, reproduced below, also shows the activation of the "trial software based on the TSC" upon activation of the mobile handset. 7 Appeal2015-005068 Application 12/191,904 lns.t{l/{ trial ~'lJj'fWR1'!?. diem (1~'l') Mt J#<)biht haflfket l)p1).>1 (Ucliwtiiw~ ·~f tlte nwbite hattd.•ti., ~;gfn n·i{l/ .s1~{twar,, b@<>.d 1>n ""' TSC '''iii(;";~-;p~-;;-;;~;.~-g~(~)""j~j~;;,;1~-g··· f" 108 hafldst:'1 u,~,·r <>.f t¥i.tJ r------------------------------ ------------------------------ Ew I I (J ! Se1HI tl"llH me.~$11Jt<1 to u.\-er , ! reg-.:fing purdta.\e <"Tj"LriJJl ! -~·~f~-ar~ applfc1ttifln ({)pti<>nal) JXC semt:s me:s:wge tv n.r.IW<"fl'k ! .Pfm~"MI" tndkattng ~·stir~'\' l!hfJke .F76".3 l\'() rsc .~emA· ·~a#on ~.<$~ Figure 3 "illustrates a flow diagram of an example process performed by the systems shown in FIGURE 1 and 2." Furthermore, "[a]nother device state condition that may be detected ... is the presence a connection to the mobile data network." (Id. at if 21.) Therefore, detecting a state of call handler software may include detecting the state of the call handler software device after activation or detecting the state of the call handler software device when a connection to the mobile data network is made (such as when a phone is activated). We agree with the Examiner's finding that Cohen teaches or suggests this limitation. 8 Appeal2015-005068 Application 12/191,904 With regard to claim 28, Appellants further contend that "even this overly broad interpretation of Cohen ... does not apply to dependent claim 28, which recites, 'wherein the state of the call handler software includes a state of receiving an incoming call.'" (Reply 3.) This is a new argument that is raised in reply and is deemed waived. See In re Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 183 7 (BP AI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("[p]roperly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."). For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 1. Accordingly, we sustain the 35 U.S.C. § 103 rejection of claim 1. Appellants do not make any separate, substantive patentability arguments regarding independent claims 12 and 21 and dependent claims 2- 11, 13-20, 22-24, and 28, but instead rely solely on their arguments with respect to claim 1. Therefore, we also sustain the 35 U.S.C. § 103(a) rejections of claims 2-24 and 28. Claims 25-27 Claim 25 recites "invoking deleting of the TSC application by the TSC application upon expiration of a trial period associated with the one or more applications for trial." The Examiner finds that Cohen teaches this 9 Appeal2015-005068 Application 12/191,904 limitation because "the enhanced feature would be tum[ed] off [and i]t is [the] intrinsic feature of mobile device or computer to allow user to delete the application software." (Final Act. 8.) Appellants concede that Cohen teaches or suggests disabling the application but contend that Cohen does not teach nor suggest deleting the application. (App. Br. 6.) Moreover, according to Appellants, "'allowing' a client to delete an application is not what is recited in the claim [and] Cohen in fact teaches against deleting" the application. (Id.) Appellants have not offered persuasive argument that the Examiner erred. In particular, Appellants do not present sufficient argument to adequately to traverse the Examiner's position that it would have been obvious to one skilled in the art that an intrinsic feature of a mobile device or user is to provide the user in the ability to delete an application, such as the trial application in Cohen that is disabled. Furthermore, we are not persuaded that the portion of Cohen (column 5, lines 58---62) cited to by Appellants teaches against allowing the user to delete the trial application as Appellants contend. The cited portion of Cohen states that "the carrier might periodically send to that former customer notices or advertisements about the continued availability of the enhanced functionality or even about improved later-developed version of it." (Cohen, 5:58-62.) The application, if already deleted, could be re-downloaded and re-installed and an "improved later-developed version" would certainly require re- downloading and re-installing. Thus, we are not persuaded that the Examiner erred. Claim 26 recites "deleting, by the TSC application a database associated with the one or more applications for trial while not deleting the 10 Appeal2015-005068 Application 12/191,904 one or more applications for trial upon expiration of the trial period. "3 The Examiner finds that Cohen teaches or suggests that "the [enhanced] functionality can simply remain [] beyond the trial period" and it would have been obvious to delete a database associated with the one or more applications for trial while not deleting the one or more applications for trial upon expiration of the trial period. (Final Act. 8; Ans. 5.) Appellants contend that Cohen "contains no reference to a database or the activities taken with respect to a database." (App. Br. 7.) Appellants have not offered persuasive argument that the Examiner erred. Bahr discloses configuration data that may be deleted to remove unused resources. (Bahr, 3:25--44.) We find this disclosure teaches or suggests deleting a database (configuration data) associated with the one or more applications without deleting the application. In view of the combined teachings of Cohen and Bahr, we determine that it would have been obvious to a person of ordinary skill in the art to delete a database containing data associated with a trial application even if the trial application is not deleted from the device. One of ordinary skill in the art would have understood this would reduce storage consumption in the mobile device of Cohen yet retain the possibility of obtaining further revenue if the user decides to re-subscribe to the trial application later, without requiring the user to re-download the trial application. Accordingly, we agree with the Examiner that the combination of Cohen and Bahr teaches or suggests the limitations recited in claim 26. However, because we add new reasoning and findings than those 3 In case of further prosecution, this claim should be reevaluated for recitation of deleting of the TSC application in the parent claim 25 and requiring the same (deleted) application to delete a database in the dependent claim 26. 11 Appeal2015-005068 Application 12/191,904 made by the Examiner, we designate the rejection of claim 26 as a new ground of rejection. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claims 25 and 26. Therefore, we sustain the 35 U.S.C. § 103 rejection of claims 25 and 26. As noted above, we designate the affirmance of the rejection of claim 26 as a new ground of rejection. Appellants do not make any separate, substantive patentability arguments regarding dependent claim 27, but instead rely solely on their arguments with respect to claims 1 and 25. Therefore, we also sustain the 35 U.S.C. § 103(a) rejection of claim 27. DECISION We affirm the decision of the Examiner to reject claims 1-28. We designate the affirmance of the rejection of claim 26 as a new ground of rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... 12 Appeal2015-005068 Application 12/191,904 ~L) Kequest rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 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 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation