Ex Parte Hook et al

Board of Patent Appeals and Interferences

Jul 9, 2010

09959496 (B.P.A.I. Jul. 9, 2010)

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.
09/959,496 02/08/2002 Michael Hook 038819.50507US 2125
7590 07/09/2010
Crowell & Moring LLP
Intellectual Property Group
P.O. Box 14300
Washington, DC 20044
EXAMINER
HASHEM, LISA
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
07/09/2010 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 MICHAEL HOOK, WALTER TUTTLEBEE,
and JOHN CUNDALL
____________________

Appeal 2009-010903
Application 09/959,4961
Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Roke Manor Research Limited.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010903
Application 09/959,496

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to a method of downloading software to
a mobile telecommunications device. A mobile telecommunications network
operator authorizes a broadcaster, distinct from the network operator, to
broadcast the software to users of the network. Individual users may then
elect to contact the network operator, causing said network operator to
enable the software such that said software is made available for use by a
user of the mobile telecommunications device (Spec. 1-2).
Claim 1 is exemplary of the claims on appeal:
1. A method for a mobile telecommunications network operator
distributing software to a mobile telecommunications device that is an
existing subscriber of said network operator, said method including the steps
of:
said network operator providing mobile telecommunications service
to said mobile telecommunications device via a mobile telecommunications
network;
said network operator causing a broadcaster, different from the
network operator, to broadcast application, service or information software;
said mobile telecommunications device receiving and downloading
said software;
a user of said mobile telecommunications device contacting said
network operator via the mobile telecommunications service provided by
said network operator; and
said network operator enabling said software via said mobile
telecommunications service, such that said software is available for use by a
user of said mobile telecommunications device.
Appeal 2009-010903
Application 09/959,496

3
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kozo JP 08-212065 Aug. 20, 1996
Fette US 6,052,600 Apr. 18, 2000
Birgerson US 6,138,009 Oct. 24, 2000
Tanaka US 6,256,509 B1 Jul. 3, 2001
Claims 1-7 and 11-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka in view of Kozo.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanaka in view of Kozo and Fette.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanaka in view of Kozo and Birgerson.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed October 31, 2008), the Reply Brief (“Reply Br.,” filed
March 19, 2009), and the Examiner’s Answer (“Ans.,” mailed March 4,
2009) for their respective details.

ISSUE
Appellants argue that neither Tanaka nor Kozo teaches a network
operator that operates a mobile telecommunications network in combination
with a broadcaster, separate from the network operator, that broadcasts
software to mobile telecommunication devices used by subscribers of the
mobile telecommunications network (App. Br. 7-8). According to
Appellants, in Tanaka, the same telecommunications network facilities that
accommodate communications with the mobile devices also provide the path
for transmitting the software to the mobile devices (App. Br. 8). Appellants
Appeal 2009-010903
Application 09/959,496

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further argue that contents provider 10 of Tanaka does not itself operate any
telecommunications network (App. Br. 9).
Appellants’ contentions present us with the following issue:
Does Tanaka teach a network operator providing mobile
communications service to a mobile communications device that is an
existing subscriber of the network operator?

FINDING OF FACT
The following Finding of Fact (FF) is shown by a preponderance of
the evidence.
Tanaka
1. Contents provider system 10 of Tanaka “generat[es] various
contents served as broadcast information” which must be transmitted by a
communications provider system to a plurality of user terminals through a
wireless communication apparatus 30 (col. 4, ll. 50-59).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416. “One of the
ways in which a patent’s subject matter can be proved obvious is by noting
that there existed at the time of invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-20.
Appeal 2009-010903
Application 09/959,496

5
ANALYSIS
The sole independent claim in this case (claim 1) requires a mobile
telecommunications operator to provide mobile telecommunications service
to a mobile telecommunications device to cause a broadcaster, different from
the network operator, to broadcast software to one or more mobile
telecommunications devices.
In rejecting claim 1 as obvious over Tanaka in view of Kozo, the
Examiner equates Tanaka’s contents provider system 10 with the network
operator, and equates communication provider system 20 with the
broadcaster (Ans. 4, 13).
We do not agree with the Examiner’s reading of Tanaka. The
Examiner asserts, without further evidence or explanation, that contents
provider system 10 “reads on the claimed ‘network operator’” (Ans. 13).
The Examiner does not provide, and we cannot find in Tanaka, an
explanation of how contents provider system 10 provides mobile
telecommunications service to a mobile telecommunications device, as
required by claim 1. Contents provider system 10 of Tanaka merely
“generat[es] various contents served as broadcast information” which must
be transmitted by the communications provider system to a plurality of user
terminals through a wireless communication apparatus 30 (FF 1). We have
also reviewed Kozo, Fette, and Birgerson, but find that none of these
references make up for the deficiencies of Tanaka.
Because Tanaka does not teach or suggest a network operator
providing mobile telecommunications service to a mobile
telecommunications device, within the meaning of independent claim 1, the
Examiner has failed to establish a prima facie case of obviousness for claim
Appeal 2009-010903
Application 09/959,496

6
1. As a result, we will not sustain the Examiner’s § 103 rejection of claim 1,
nor that of claims 2-16 dependent therefrom.

CONCLUSION
Tanaka does not teach a network operator providing mobile
communications service to a mobile communications device that is an
existing subscriber of the network operator.

ORDER
The Examiner’s rejection of claims 1-16 is reversed.

REVERSED

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