Ex Parte Hong et al

Board of Patent Appeals and Interferences

Apr 26, 2012

10139301 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/139,301 05/03/2002 Seung-Heun Hong 678-0857 3834
66547 7590 04/27/2012
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
NGUYEN, DUSTIN
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
04/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SEUNG-HEUN HONG
and JOON-WOOK JUNG
____________________

Appeal 2010-002944
Application 10/139,301
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002944
Application 10/139,301

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 3, 4, and 6-11. Claims 2 and 5 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
According to Appellants, the invention relates to a wireless terminal
capable of accessing the Internet (Spec. page 1, lines 8-9).
Exemplary Claims
Claims 1 and 3 are exemplary claims and are reproduced below:
1. A method for transmitting data from a content
provider, when transmitting is requested by a first wireless
terminal and the data is transmitted to a second wireless
terminal, comprising the steps of:
accessing the content provider via the Internet by the first
wireless terminal;
sending a data transmission request to the content
provider by the first wireless terminal;
receiving a destination inquiry message which inquires
an IP (Internet Protocol) address of the second wireless terminal
from the content provider to the first wireless terminal;
providing the IP address of the second wireless terminal
to the content provider from the first wireless terminal; and
transmitting data corresponding to the data transmission
request from the content provider to the second wireless
terminal based on the IP address provided by the first wireless
terminal.

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Application 10/139,301

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3. The method of claim 1, wherein the content
provider sends a data transmission end message to the first
wireless terminal after completion of the data transmission.

Prior Art
Nakaoka US 7,266,590 B2 Sep. 4, 2007
Henderson US 7,233,408 B2 Jun. 19, 2007
Larsson US 7,028,102 B1 Apr. 11, 2006

Rejections
(1) Claims 1, 3, and 7-9 stand rejected under 35 U.S.C. § 103(a) over
Nakaoka and Henderson.
(2) Claims 4, 6, 10, and 11 stand rejected under 35 U.S.C. § 103(a)
over Nakaoka, Henderson, and Larsson.

Claim Groupings
In view of Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 3. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 103(a): 1, 3, and 7-9
Appellants assert their invention is not obvious over Nakaoka and
Henderson because the print portal in Nakaoka is different from the content
provider (App. Br. 5). Specifically, Appellants admit that Nakaoka discloses
a printer identification communication between the client and the print
portal, but assert that Nakaoka fails to disclose printer identification
communication between the client and the content provider as recited in
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claim 1. Id. Appellants assert that the contents provided by the content
provider are transmitted to the printing station, which executes an actual
printing operation. Id. Thus, Appellants assert that in Nakaoka two different
layered servers, one of which includes the print portal, mediate data between
the clients and the printing stations. Id. Appellants also assert that Nakaoka
does not disclose that the content provider sends a destination inquiry
message, which inquires an IP address of the second wireless terminal, to the
first wireless terminal. Id. Appellants lastly assert that Nakaoka does not
disclose that an IP address of the second wireless terminal is provided to the
content provider from the first wireless terminal. Id. Appellants thus assert
that Nakaoka fails to disclose a content provider that is accessed by a
wireless terminal, receives a data transmission request, sends a destination
inquiry message, receives an IP address of a second wireless terminal, and
transmits data to the second wireless terminal. Id.
Issue 1: Did the Examiner err in finding that Nakaoka teaches a
content provider that is accessed by a wireless terminal, receives a data
transmission request, sends a destination inquiry message, receives an IP
address of a second wireless terminal, and transmits data to the second
wireless terminal as provided in independent claim 1 of the appeal?

ANALYSIS
We agree with the Examiner’s findings (Ans. 7-9). Appellants have
not provided an explicit definition of “content provider” in their
Specification. The Examiner has set forth a broad, but reasonable
interpretation of “content provider” in light of the Specification (id. at 7).
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Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
that “claims must be interpreted as broadly as their terms reasonably allow.”
“[T]he words of a claim ‘are generally given their ordinary and customary
meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (internal citations omitted). “[T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application.” Id. at 1313.
Appellants have not presented any persuasive evidence to convince us
that the Examiner’s interpretation of “content provider” is in error. Thus, we
adopt a broad, but reasonable interpretation of “content provider” in
accordance with the Examiner’s finding that content provider is a node or
server that provides content, i.e. data or information, for others to be a
content provider (Ans. 7).
We also adopt the Examiner’s findings and conclusions as our own
(id. at 7-9). In light of the interpretation of “content provider,” the Examiner
finds the printer portal of Nakaoka is a content provider (id.) and we agree.
We further emphasize that Nakaoka, as set forth by the Examiner (id.
at 4) teaches or at least suggests providing the address of the second terminal
to the content provider from the first wireless terminal (see col. 30, ll. 39-
41). We agree with the Examiner’s finding that “the second wireless
terminal” is disclosed in Henderson (i.e., printer module including a wireless
receiver). Ans. 4-5. We also note Appellants appear to be arguing the
references separately while the Examiner is relying on the combination of
Nakaoka and Henderson as teaching or at least suggesting the invention as
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recited in claim 1. We further agree with the Examiner’s findings that
Nakaoka teaches or at least suggests the content provider (printer portal)
sends a destination inquiry message with inquires an address of the second
terminal to the first wireless terminal (Ans. 9).
We also agree with the Examiner’s findings (id. at 8-9) that Nakaoka
teaches or suggests accessing by a wireless terminal, receiving a data
transmission request, sending a destination inquiry message, receiving an IP
address of a second wireless terminal, and transmitting data to the second
wireless terminal (id. at 4 and 9).
In the Reply Brief (page 2) Appellants, for the first time, present an
argument that Nakaoka does not disclose the specific message sequence of
Fig 1 of the Specification, and that the message sequence enables
“transmitting data from a content provider to a second wireless terminal
when requested by a first wireless terminal without the use of a designated
content provider Web page” (Reply Br. 2 (emphasis ours)). We find this
argument to be untimely. “Considering an argument advanced for the first
time in a reply brief . . . is not only unfair to an appellee but also entails the
risk of an improvident or ill-advised opinion on the legal issues tendered.”
McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir.
1986) (internal citations omitted). “The failure to raise all issues and
arguments diligently, in a timely fashion, has consequences.” Ex parte
Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision).

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Accordingly, we conclude that the Examiner did not err in rejecting
independent claim 1, independent claim 7, and dependent claims 8 and 9-not
separately argued, for obviousness over Nakaoka and Henderson.

ISSUE 2
35 U.S.C. § 103(a): 4, 10, and 11
Appellants do not separately argue independent claim 4 and
dependent claims 10 and 11, instead relying on the arguments set forth for
claim 1 (App. Br. 8 and 9). For the reasons set forth above with respect to
claim 1, the Examiner did not err in rejecting claims 4, 10, and 11.

ISSUE 3
35 U.S.C. § 103(a): Claims 3 and 6

ANALYSIS
With respect to claim 3 and 6, Appellants merely contend that claim 3
is allowable based on its dependency from claim 1 (App. Br. 6) and claim 6
is allowable based on its dependency from claim 4 (id. at 8). Appellants
further contend Nakaoka does not teach or suggest a data transmission end
message and the sending of such message from the content provider (id. at
7-9). Merely reciting the language of the claim and asserting that the
applied reference does not disclose the invention is insufficient to persuade
us of Examiner error. See 37 C.F.R. § 41.37(c)(vii); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); and Ex parte Belinne, No. 2009-004693, slip
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op. at 7-8 (BPAI Aug. 10, 2009) (informative decision), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf .
Here, we find Appellants’ arguments are conclusory in nature and fail
to address the thrust of the Examiner’s obviousness rejection. Moreover, in
both the Grounds of Rejection and Response to Arguments sections of the
Answer, the Examiner includes detailed explanations (including figures)
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness. (Ans. 5, 9). Appellants do not provide any
persuasive argument or evidence showing error in the Examiner’s findings
and conclusion.
Therefore, the Examiner did not err in rejecting claim 3 for
obviousness over Nakaoka and Henderson and in rejecting claim 6 for
obviousness over Nakaoka, Henderson, and Larsson. .

DECISION
The Examiner’s rejection of claims 1, 3, and 7-9 under 35 U.S.C.
§ 103(a) as being obvious over Nakaoka and Henderson is affirmed.
The Examiner’s rejection of claims 4, 6, 10, and 11 under 35 U.S.C.
§ 103(a) as being obvious over Nakaoka, Henderson, and Larsson 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) (2010).

AFFIRMED

msc