Ex Parte Kaplan

Board of Patent Appeals and Interferences

Feb 1, 2010

10091311 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DIEGO KAPLAN
____________________

Appeal 2009-005562
Application 10/091,3111
Technology Center 2400
____________________

Decided: February 1, 2010
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Kyocera Wireless Corporation.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 11-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention concerns a system and method for selecting and
implementing optimal Short Message Service (SMS) message encoding in a
wireless communications device having SMS capabilities, wherein the
system includes an optimizing subsystem and an encoding subsystem. The
optimizing subsystem accepts an SMS message, identification of available
encoding formats, and information regarding wireless device resource
encoding requirements, such as memory usage, for the available encoding
formats. The optimizing subsystem evaluates the characters in the SMS
message to identify which of the available encoding formats are usable for
encoding the characters, determines a memory usage requirement, and
selects, as the optimal encoding format having the lowest memory usage.
The optimizing subsystem has an output to supply an optimizing signal
identifying the optimal encoding format. The encoding subsystem accepts
the SMS message and the optimizing signal, and encodes the message in the
optimal encoding format. The encoding subsystem also has an output to
supply the encoded SMS message to a wireless device memory circuit. The
memory circuit supplies the stored SMS message for presentation on a user
display or transmission by a transceiver (Spec. 5:4-22).
Claim 11 is exemplary:
11. A system for optimal Short Message Service
(SMS) character encoding in a wireless communications device
having SMS capabilities, the system comprising:
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an optimizing subsystem with an input to accept an SMS
message, an input to accept an evaluation control signal, and an
output to supply an optimizing signal responsive to SMS
message character encoding requirements prior to character
encoding of the SMS message; and
a character encoding subsystem with an input to accept
the SMS message, an input to accept the optimizing signal, and
an output to supply the SMS message in a character encoding
format responsive to the optimizing signal.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moskowitz US 5,249,220 Sep. 28, 1993
Wolf US 5,844,922 Dec. 1, 1998
King US 5,859,594 Jan. 12, 1999
Kim US 2001/0049289 A1 Dec. 6, 2001
Murray US 6,539,118 B1 Mar. 25, 2003
(filed Aug. 27, 1999)
Lee US 6,590,887 B1 Jul. 8, 2003
(filed Aug. 28, 1998)
Claims 11-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lee in view of Moskowitz.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lee in view of Moskowitz and Wolf.
Claims 19-21, 23, 24, and 28-30 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kim in view of Moskowitz.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Moskowitz and King.
Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim in view of Moskowitz and Murray.
Claim 25 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim in view of Moskowitz and Wolf.
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Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed September 26, 2007), the Reply
Brief (filed February 20, 2008), and the Examiner’s Answer (mailed
December 26, 2007) for their respective details.

ISSUE
The Examiner finds that Lee discloses a mobile communication
device that implements SMS encoding (Ans. 4; FF 2). The Examiner finds
that Moskowitz discloses that binary bit character encoding formats are
evaluated in order to select the fewest binary bit character encoding format
for encoding transmitting message (Ans. 4; FF 3-5). The Examiner finds
that Moskowitz discloses supplying an optimization signal prior to encoding
the message (Ans. 11).
Appellant contends that the combination of Lee and Moskowitz does
not disclose an optimizing subsystem that produces an optimizing signal
responsive to the SMS message character encoding requirements prior to
character encoding of the SMS message (App. Br. 10-11). Appellant
contends that Moskowitz discloses a portable transmitter that requires that
the text message must be encoded in every available format (4-bit, 5-bit, 6-
bit, and variable length binary bit representations) prior to the transmitter
selecting which format results in the fewest bits (App. Br. 11; FF 3-5).
Appellant contends that the claim limitation requires character encoding and
that the combination of Lee and Moskowitz is improper since Lee teaches
signal encoding and Moskowitz teaches character encoding (App. Br. 11).
As such, Appellant contends that there is no reasonable expectation of
success when combining the references (App. Br. 12). Further, Appellant
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contends that the transmitter in Moskowitz does not encode a message in
response to an optimizing signal (App. Br. 12).
Appellant’s contentions present us with the following issue:
Did Appellant show that the Examiner erred in finding that the
combination of the cited prior art discloses a system for optimal SMS
character encoding having an optimizing subsystem that generates an
optimizing signal for controlling when a character encoding subsystem
supplies the SMS message in a character encoding format responsive to the
optimizing signal, wherein the optimizing signal is responsive to the SMS
message character encoding requirements prior to character encoding of the
SMS message?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns a system and
method for selecting and implementing optimal SMS message encoding in a
wireless communications device having SMS capabilities, wherein the
system includes an optimizing subsystem and an encoding subsystem. The
optimizing subsystem accepts an SMS message, identification of available
encoding formats, and information regarding wireless device resource
encoding requirements, such as memory usage, for the available encoding
formats. The optimizing subsystem evaluates the characters in the SMS
message to identify which of the available encoding formats are usable for
encoding the characters, determines a memory usage requirement, and
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selects, as the optimal encoding format having the lowest memory usage.
The optimizing subsystem has an output to supply an optimizing signal
identifying the optimal encoding format. The encoding subsystem accepts
the SMS message and the optimizing signal, and encodes the message in the
optimal encoding format. The encoding subsystem also has an output to
supply the encoded SMS message to a wireless device memory circuit. The
memory circuit supplies the stored SMS message for presentation on a user
display or transmission by a transceiver (Spec. 5:4-22).
Lee
2. Lee teaches digital mobile communication terminal with an
SMS function having an encoder/decoder 16, which is generally a chip
specifically designed for use in a CDMA or PCS terminal, that encodes the
signal generated by the CDMA or PCS terminal under the control of the
controller 10 and outputs the encoded signal to the RF module 15. In
addition, the encoder/decoder 16 decodes the signal input from the RF
module 15 by the CDMA or PCS terminal and outputs the decoded signal to
the controller 10. A keypad 12 is a user interface which includes a number
of numeric keys for dialing and function keys for performing various
functions. The keypad 12 generates key data to the controller 10 upon key
manipulation by the user. A display 13, preferably an LCD (Liquid Crystal
Display), displays display data under the control of the controller 10 (Fig. 1;
col. 2, ll. 39-52).
Moskowitz
3. Moskowitz teaches a hand-held portable facsimile transmitter
which is capable of communicating with a variety of different message
receiving hosts. The transmitter is provided with a technique for generating
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waveforms to communicate with foreign message receivers over a
communication channel by using a lookup table and software
implementation in combination with a telephone interface circuit. Also
provided is a versatile encoding protocol in which a message is optionally
converted to a 4-bit, 5-bit, or 6-bit sequence, or to a sequence of variable-
length bit-strings, the converted message is queued and regrouped as 4-bit
nibbles, and the nibbles are communicated by DTMF tones (Abstract).
4. Moskowitz discloses a communication system having a number
of different character coding representations from which the transmitter may
select. The transmitter encodes the message that is to be sent to the receiver
according to each format. The format that requires the fewest number of
binary bits to represent the entire message is selected as the character
encoding format. The transmitter may select from a number of character
coding representations using data compression techniques. The transmitter
may represent outgoing characters as 4-bit, 5-bit, 6-bit, and variable length
binary bit representations. Four-bit encoding may be utilized when the
characters in a message consist only of 16 often-used predefined characters,
typically numerals only (col. 12, ll. 1-18).
5. Moskowitz discloses that the transmitter will have to encode the
message according to the 5, 6, and variable-bit encoding methods and
determine which mode is the most efficient mode of transmission, i.e., which
mode requires the smallest number of binary bits to represent the message
(col. 13, ll. 40-45)
Wolf
6. Wolf discloses a method and apparatus for constructing high
rate trellis codes for PSK modulation that can be encoded and decoded using
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the encoder and decoder for a rate 1/2 punctured convolutional code. In
particular, the design of trellis encoders and decoders for 2k -PSK
modulation for rates (km-1)/km for k≥3 and m≥1 is provided (Abstract).
Kim
7. Kim discloses a method of transmitting and receiving graphic
data by an SMS message. To transmit a graphic SMS message, graphic
SMS messages are registered, a portable radio terminal is changed over to a
graphic SMS message selection mode upon receipt of an SMS message
editing key signal, a graphic SMS message is selected among the registered
graphic SMS messages, and the graphic data of the selected graphic SMS
message is edited and transmitted. An SMS message is identified as text
data or graphic data according to a one-byte header flag that discriminates
between text data and graphic data according to its pattern. The header
indicates whether the SMS data represents a line, a curved line, a polygon,
or text (Abstract; ¶¶ [0026-27]).
King
8. King discloses a selective call receiver (100) which comprises a
receiver (104) for receiving a message and a controller (112) having the
capability of determining the length of a received message. At least one of
at least two displays (110, 120) is selected to display the received message
according the received message length (Abstract).
Murray
9. Murray discloses an evaluator system which accepts input
textual messages in unknown languages and assesses which character sets,
corresponding to languages, match that message. Textual messages whose
individual characters are encoded in 16-bit Unicode of other universal
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format are parsed, and character sets which can express each character and
the accumulated correspondence are logged. When the character sets against
which the message is being tested only provide partial matches, the
invention can determine which offers the best fit, including by way of a
weighting function. The evaluation technology of the invention can be
applied to multipart documents, and to search engines and indices
(Abstract).

PRINCIPLES OF LAW
On the issue of obviousness pursuant to 35 U.S.C § 103, 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 “[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.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
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one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); see also Para-Ordnance Mfg., Inc. v. SGS
Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Claims 11-17
Independent Claim 11 recites
an optimizing subsystem with an input to accept an SMS
message, an input to accept an evaluation control signal, and an
output to supply an optimizing signal responsive to SMS
message character encoding requirements prior to character
encoding of the SMS message; and
a character encoding subsystem with an input to accept
the SMS message, an input to accept the optimizing signal, and
an output to supply the SMS message in a character encoding
format responsive to the optimizing signal.
The Examiner finds that Lee discloses a mobile communication
device that implements SMS encoding (Ans. 4; FF 2). The Examiner finds
that Moskowitz discloses that binary bit character encoding formats are
evaluated in order to select the fewest binary bit character encoding format
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for encoding transmitting message (Ans. 4; FF 3-5). The Examiner finds
that Moskowitz discloses supplying an optimization signal prior to encoding
the message (Ans. 11).
Appellant contends that the combination of Lee and Moskowitz does
not disclose an optimizing subsystem that produces an optimizing signal
responsive to the SMS message character encoding requirements prior to
character encoding of the SMS message (App. Br. 10-11). Appellant
contends that Moskowitz discloses a portable transmitter that requires that
the text message must be encoded in every available format (4-bit, 5-bit, 6-
bit, and variable length binary bit representations) prior to the transmitter
selecting which format results in the fewest bits (App. Br. 11; FF 3-5).
Appellant contends that the transmitter in Moskowitz does not encode a
message in response to an optimizing signal (App. Br. 12).
We agree with Appellant that the combination of Lee and Moskowitz
does not disclose an optimization signal that signals an encoding unit to
encode the SMS message, wherein the optimizing signal is “responsive to
SMS message character encoding requirements prior to character encoding
of the SMS message” (emphasis added) as claim 11 requires (App. Br. 12).
We also agree with Appellant that the combination of Lee and Moskowitz
does not disclose selection of the optimum format prior to character
encoding as the claim requires (App. Br. 11). Moskowitz discloses that the
“transmitter encodes the message that is to be sent to the receiver according
to each format [, wherein t]he format that requires the fewest number of
binary bits to represent the entire message is selected as the character
encoding format” (FF 4 (emphasis added)). Moskowitz thus makes clear
that character encoding “according to each format” occurs prior to selection
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of the optimum format. The disclosure in Moskowitz is silent as to an
optimizing signal sent to the transmitter that triggers the selected character
encoding format (FF 3-5).
We find that the combination of Lee and Moskowitz does not teach all
the limitations of independent claim 11. Thus, we find error in the
Examiner’s rejection of claims 11-17 under 35 U.S.C. § 103(a) as
unpatentable over Lee in view of Moskowitz, and we will not sustain the
rejection.
Claim 18
We reversed supra the rejection of parent claim 11 under 35 U.S.C. §
103 as unpatentable over Lee in view of Moskowitz. The cited reference to
Wolf does not teach the limitations deemed to be absent from Lee and
Moskowitz. We therefore reverse the rejection of claim 18 under 35 U.S.C.
§ 103 as unpatentable over Lee in view of Moskowitz and Wolf for the same
reasons expressed with respect to claim 11.
Claims 19-21, 23, 24, and 28-30
Claim 19 recites “encoding a[n] SMS message using a[n] SMS
character encoding format to generate an encoded SMS message; and prior
to encoding the SMS message, selecting the SMS character encoding format
based on a wireless device resource requirement of the encoded SMS
message.”
The Examiner finds that Kim discloses a method for generating
encoded SMS message for transmitting over the network, wherein the SMS
system encoding disclosed in Kim inherently includes character SMS
encoding format (Ans. 7). The Examiner finds that Moskowitz discloses
that binary bit character encoding formats are evaluated in order to select the
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fewest binary bit character encoding format for encoding transmitting
message (Ans. 7).
Appellant contends that the message disclosed in Moskowitz must be
encoded prior to the selection of the format that yields the least bits (App.
Br. 13). Appellant contends further that Kim does not teach or suggest
selecting a character encoding format; rather, Kim discloses a system for
encoding graphics in an SMS message and discusses indicating whether the
SMS data represents graphics or text (App. Br. 14; FF 7).
We agree with Appellant that Moskowitz does not disclose that the
optimum format is selected prior to character encoding the SMS message as
required by the claim. Specifically, Moskowitz discloses that the
“transmitter encodes the message that is to be sent to the receiver according
to each format [, wherein t]he format that requires the fewest number of
binary bits to represent the entire message is selected as the character
encoding format” (FF 4, emphasis added). Moskowitz thus makes clear that
character encoding “according to each format” occurs prior to selection of
the optimum format.
We find that the combination of Kim and Moskowitz does not teach
all the limitations of claim 19, as well as claim 28, which includes similar
limitations. Thus, we find error in the Examiner’s rejection of claims 19-21,
23, 24, and 28-30 under 35 U.S.C. § 103(a) as unpatentable over Kim in
view of Moskowitz, and we will not sustain the rejection.
Claims 26 and 27
We reversed supra the rejection of parent claim 19 under 35 U.S.C. §
103 as unpatentable over Kim in view of Moskowitz. The cited reference
does not teach the limitations deemed to be absent from Kim and
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Moskowitz. We therefore reverse the rejection of claims 26 and 27 under 35
U.S.C. § 103 as unpatentable over Kim in view of Moskowitz and King for
the same reasons expressed with respect to claim 19.
Claim 22
We reversed supra the rejection of parent claim 19 under 35 U.S.C. §
103 as unpatentable over Kim in view of Moskowitz. The cited reference
does not teach the limitations deemed to be absent from Kim and
Moskowitz. We therefore reverse the rejection of claim 22 under 35 U.S.C.
§ 103 as unpatentable over Kim in view of Moskowitz and Murray for the
same reasons expressed with respect to claim 19.
Claim 25
We reversed supra the rejection of parent claim 19 under 35 U.S.C. §
103 as unpatentable over Kim in view of Moskowitz. The cited reference
does not teach the limitations deemed to be absent from Kim and
Moskowitz. We therefore reverse the rejection of claim 25 under 35 U.S.C.
§ 103 as unpatentable over Kim in view of Moskowitz and Wolf for the
same reasons expressed with respect to claim 19.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding that the
combination of the cited prior art discloses a system for optimal SMS
character encoding having an optimizing subsystem that generates an
optimizing signal for controlling when a character encoding subsystem
supplies the SMS message in a character encoding format responsive to the
optimizing signal, wherein the optimizing signal is responsive to the SMS
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message character encoding requirements prior to character encoding of the
SMS message.

ORDER
The Examiner’s rejection of claims 11-30 is reversed.
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).

REVERSED

babc

KYOCERA Wireless Corp.
P.O. BOX 928289
San Diego, CA 92192-8289