Ex Parte Kahan et al

Board of Patent Appeals and Interferences

Oct 31, 2011

09832828 (B.P.A.I. Oct. 31, 2011)

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.
09/832,828 04/12/2001 Michal Kahan Q60535 1955
7590 11/01/2011
SUGHRUE, MION, ZINN,
MACPEAK & SEAS, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037-3213
EXAMINER
ENGLAND, SARA M
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
11/01/2011 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 MICHAL KAHAN and SHMUEL KERET
____________________

Appeal 2009-014731
Application 09/832,828
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014731
Application 09/832,828

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, 7, 8, 10, 11, 14-23, 26-31, 34-41, and 43-54 (App. Br. 4).
Claims 5, 6, 9, 12, 13, 24, 25, 32, 33, 42 and 55-57 have been canceled (id.).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention relates to a method and apparatus for
aggregating data items received from content providers to push to a mobile
terminal subscriber; wherein, a server formats the data items in accordance
with a mobile terminal subscriber’s provisioning profile to select out desired
data items for display on the mobile terminal or a client terminal (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for aggregating content from a server to
push to a mobile terminal of a subscriber, wherein the method
comprises:

transmitting from the server, a provisioning profile
associated with the subscriber to at least one outside
application, wherein each outside application executes on a data
item computer;

receiving at the server, data items from at least one
outside application executing on a data item computer, wherein
at least a portion of the received data items comprise
personalized information to be pushed to the subscriber
according to the provisioning profile associated with the
subscriber;
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arranging at the server, the received data items for
display according to a plurality of subscriber-selected
presentation rules, wherein each received data item is
associated with at least one presentation rule, and wherein each
received data item is associated with a generic action menu, an
application specific menu corresponding to the at least one
outside application executing on the data item computer, or
with both the generic action menu and the application specific
menu; and

pushing from the server, the arranged data items to the
mobile terminal of the subscriber.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gerace US 5,848,396 Dec. 08, 1998
Kim US 6,546,002 B1 Apr. 08, 2003
(filed on Jul. 07, 1999)
McNamar US 7,089,202 B1 Aug. 08, 2006
(filed on May 26, 2000)

Claims 1-4, 7, 8, 11, 14-17, 19-23, 26-29, 31, 34-41, 43-45, and 47-53
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kim in
view of McNamar.
Claims 10, 18, 30, 46, and 54 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kim in view of McNamar and Gerace.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
determining that the combination of Kim and McNamar teaches or would
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Application 09/832,828

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have suggested “pushing from the server, the arranged data items to the
mobile terminal of the subscriber” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Kim
1. Kim is directed to a mobile interface agent within a mobile
terminal connected to a network that is able to dynamically access
applications specific to a user; wherein, a profile manager uses profile data
to customize the data that the user receives at the mobile terminal from an
application server (Abstract; Figs. 3, 4, 8 and 15; col. 7, ll. 1-20 and col. 9,
ll. 23-45).
2. Data is sent based upon rules supplied by the user’s profile data
138b (Fig. 3; col.11 ll. 1-4).
McNamar
3. McNamar is directed to a push-based method and system for
internet banking that uses push technology to provide information, market
data and customized web page components to clients so that they receive the
information that they have preselected (col. 26, ll. 1-5).

IV. ANALYSIS
Claims 1-4, 7, 8, 11, 14-17, 19-23, 26-29, 31,
34-41, 43-45 and 47-53
Appellants do not provide separate arguments with respect to
independent claims 1, 14, 19, 34, and 47 (App. Br. 12-18). Appellants do
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not provide arguments with respect to dependent claims 2-4, 7, 8, 11, 15-17,
20-23, 26-29, 31, 35-41, 43-45 and 48-53. Accordingly, we select claim 1 as
being representative of the claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that “Kim and McNamar are wholly unrelated in
subject matter and technology, and one skilled in the art would not be
motivated to combine the teachings of a mobile interface agent with a
method for Internet banking to arrive at the claimed invention” (App. Br.
12). Appellants argue that “that the Examiner's analysis and rationale for the
combination of Kim and McNamar is merely conclusory, and is not
supported by the requisite ‘explicit analysis,’ ‘articulated reasoning’ or
detailed explanation as to why the claimed invention is obvious in view of
Kim and McNamar” (App. Br. 15). Appellants finally contend that
“McNamar is limited to only a cursory mention of the use of push
technology in an Internet banking system, and fails to provide any teaching
or suggestion of how the push technology works or whether it could be
implemented on another type of network or system” (id.).
However, the Examiner finds that “one of ordinary skill in the art
would see the advantage of including the push technology of McNamar in a
wide array of technologies used in a client based system” (Ans. 9). The
Examiner notes that the use of “[p]ush technology to pass down information
is especially well-known in the network communication field (both Kim and
McNamar reference networking subject matter)” (id.). The Examiner finds
further that “the features upon which applicant relies (i.e., ‘how the push
technology works or whether it could be implemented on another type of
network or system’) are not recited in the rejected claim[]” (id.).
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We agree with the Examiner that Appellants’ argument that McNamar
“fails to provide any teaching or suggestion of how the push technology
works or whether it could be implemented on another type of network or
system” is not commensurate in scope with the specific language of claim 1
(App. Br. 15; Ans. 9). In particular, claim 1 does not recite such “how the
push technology works or whether it could be implemented on another type
of network or system” as Appellants argue. Thus, we determine on this
Appeal whether the combined teachings of Kim and McNamar discloses
“pushing from the server, the arranged data items to the mobile terminal of
the subscriber” as specifically required by claim 1.
To determine whether the combined teachings of Kim and McNamar
teaches or would have suggested a method for aggregating content from a
server to push to a mobile terminal of a subscriber including “pushing from
the server, the arranged data items to the mobile terminal of the subscriber”
as recited in claim 1, we give the claim its broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). However, we will not read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Claim 1 does not place any limitation on what “pushing” means,
includes, or represents. Thus, we give “pushing from the server” its broadest
reasonable interpretation as transmission from the server, as consistent with
the Specification and as specifically defined in claim 1.
Kim is directed to a mobile interface agent within a mobile terminal
connected to a network that is able to dynamically access applications
specific to a user; wherein, a profile manager within a network server uses
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profile data to customize the data that the user receives at the mobile
terminal from the applications server (FF 1). Data is sent based upon rules
supplied by the user’s profile data (FF 2). We find that the server’s ability to
transmit customized data using the user’s profile represents the server’s
transmission of arranged data items to the mobile terminal (FF 1 and 2).
In addition, McNamar is directed to a push-based method and system
for internet banking that uses push technology to provide information,
market data and customized web page components to clients so that they
receive the information that they have preselected (FF 3). We find that the
use of push technology for transmission of data to client terminals also
represents transmission of arranged data items to the mobile terminal (FF 3).
Thus, we find that “pushing from the server, the arranged data items to the
mobile terminal of the subscriber” reads on Kim’s and McNamar’s servers
that provide data items to the mobile terminal of the user (FF 1-3).
We also agree with the Examiner’s explicit motivation that combining
the references would be obvious since one would be motivated to combine
“in order to obtain a server initiated push of a personalized information,
arranged at the server according to subscriber-selected presentation rules, to
the subscriber terminal” (Ans. 4). The Supreme Court has 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.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s finding that the combination
of Kim’s system and method for implementing a mobile interface agent that
dynamically accesses applications specific to a user with the method of
pushing data from a server to a client, produces a method that includes
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“pushing from the server, the arranged data items to the mobile terminal of
the subscriber” which would be obvious (Ans. 8-9; FF 1-3).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Kim in
view of McNamar; independent claims 14, 19, 34, and 47; and claims 2-4, 7,
8, 11, 15-17, 20-23, 26-29, 31, 35-41, 43-45 and 48-53 depending
respectively from claims 1, 14, 19, 34, and 47 which have been grouped
therewith.
Claims 10, 18, 30, 46, and 54
Appellants argue that claims 10, 18, 30, 46, and 54 is patentable over
the cited prior art for the same reasons asserted with respect to claim 1 (App.
Br. 18).
As noted supra, however, we find that the combined teachings of Kim
and McNamar at least suggest all the features of claim 1. We therefore
affirm the Examiner’s rejection of claim 10, 18, 30, 46, and 54 under 35
U.S.C. § 103 for the same reasons expressed with respect to parent claim 1,
supra.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-4, 7, 8, 10, 11, 14-23, 26-31, 34-
41, and 43-54 under 35 U.S.C. § 103(a) 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).

AFFIRMED
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