Ex Parte Heiska

Board of Patent Appeals and Interferences

Nov 24, 2009

09699863 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JUKKA HEISKA
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Appeal 2009-000271
Application 09/699,863
Technology Center 2400
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Decided: November 24, 2009
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Before LEE E. BARRETT, LANCE LEONARD BARRY, and JOHN A.
JEFFERY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 8-23. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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INVENTION
The invention at issue on appeal provides Wireless Application
Protocol (WAP) data to wireless terminals connected to a data network via
WAP gateways. Characteristics of each wireless terminal are uploaded to a
central content converter. Content provided by a content server is routed
through the data network to the central converter for adjustment according to
the characteristics and routed back through the data network to a particular
wireless terminal. (Abstract.)

ILLUSTRATIVE CLAIM
8. Apparatus for providing data services to mobile devices in a
system comprising a data network, at least one content server
accessible via the data network, at least one gateway for
accessing the data network, a mobile telephone network for
communicating between the mobile devices and said at least
one gateway, and a content converter separate from the at least
one gateway, separate from the at least one content server, and
connected to the data network, the apparatus comprising:
a data store associated with the content converter for
storing indications of the characteristics of each terminal
device;
receiving means at the content converter for receiving
content for a particular mobile terminal from said at least one
content server, said at least one content server being connected
to the data network so that said content converter is directly
accessible by said at least one content server through the data
network bypassing said at least one gateway;
logic for adjusting content for the particular mobile
terminal in the content converter according to the stored
characteristics of the mobile terminal; and
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sending means for routing the adjusted content through
the data network to said at least one gateway for forwarding to
said particular mobile terminal.

PRIOR ART
LI 6,901,437 B1 May 31, 2005
(filed Oct. 6, 2000)
CARLINO WO 00/39666 Jul. 6, 2000

REJECTION
Claims 8-23 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Li and Carlino.

ISSUE
The Examiner admits that "Li does not explicitly disclose . . . routing
the adjusted content through the data network to said at least one gateway
for forwarding to said particular mobile terminal." (Supp. Answer 3.) She
makes, however, the following findings.
Carlino discloses . . . sending means for routing the adjusted
content through the data network to said at least one gateway
for forwarding to said particular mobile terminal [Carlino --
Figure 1 and Page 33 lines 19-23 - Wireless gateway (14),
shown in figure 1, both receives requests and sends
converted document to mobile device, i.e. mobile phone].
(Id.at 4.) The Appellant argues that "[t]he combined teachings of Li and
Carlino fail to teach or suggest that adjusted content is sent over the data
network." (App. Br. 5.) Therefore, the issue before us is whether the
Appellant has shown error in the Examiner's finding that Carlino discloses a
converter that receives original content via a data network, converts the
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original content, and sends the converted content to at least one gateway via
the same data network.

LAW
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).

FINDINGS OF FACT (FFS)
1. Carlino's "FIG. 1 is a block diagram illustrating an exemplary
content conversion system (p. 11); the Figure follows.

Figure 1: an exemplary content conversion system
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2. "[T]urning to FIG. 1, a wireless gateway 14 services requests for
electronic documents from the first wireless device 12 and sends converted
electronic documents back to the first wireless device 12. A content
converter application 16 converts content of an electronic document to a
format usable on the fast wireless device 12 (e.g., a device with a smaller
display)." (Carlino, p. 14.)

ANALYSIS
Carlino discloses a content converter 16 that receives an original
electronic document (FF 2) via a data network 20 inter alia. As shown in
Figure 1 of the reference, "the computer network 20 is the World-Wide-Web
on the Internet." (Carlino, p. 14.) The converter 16 then converts the
original document to a format for a wireless device 12. (FF 2.) The
converter 16 sends the converted document to a wireless gateway 14 for
forwarding to the device 12. (FF 1 and 2.)

We agree with the Appellant, however, that "[t]here is no disclosure[,]
teaching or suggestion that the converted content is sent from the content
converter 16 to the gateway 14 over the data network [20]." (Appeal Br. 8.)
To the contrary, Figure 1 shows that the converter sends the converted
document to the wireless gateway 14 via a direct connection depicted as an
arrow pointing down from the converter to the gateway.

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CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellant has shown error in the Examiner's finding that Carlino discloses a
converter that receives original content via a data network, converts the
original content, and sends the converted content to at least one gateway via
the same data network.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

DECISION
We reverse the rejection of claims 8-23.

REVERSED

erc

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