Ex Parte Kaplan

Patent Trial and Appeal Board

Feb 21, 2013

11112035 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte DIEGO KAPLAN
____________

Appeal 2010-010551
Application 11/112,0351
Technology Center 2600
____________

Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5, 6, 13, 14, 17-19, 21, and 22. Claims 2-4, 7-12, 15,

1 Although Appellant identifies Kyocera Wireless Corporation as the real
party in interest in the Appeal Brief, we note that Kyocera Wireless
Corporation has assigned this application to Kyocera Corporation.
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16, and 20 are cancelled. App. Br. 5.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
INVENTION
Appellant’s invention relates to wireless communication devices and
methods that allow such devices to send binary messages to recipient
wireless communication devices. See generally Spec. ¶ [18]. For example,
such wireless communication devices may maintain a database of recipient
devices that includes the capabilities of the recipient devices to receive
binary messages or portions thereof and may determine recipient devices’
capabilities prior to sending binary messages. Id. Claims 1 and 13 are
illustrative and are reproduced below with disputed limitations emphasized:
1. A wireless communication device for sending a binary
message, comprising:
a data storage area configured to store a first plurality of contact
records comprising a phone book for the wireless communication device and
a second plurality of contact records, wherein each contact record in the
second plurality of contact records comprises an initialized timestamp
attribute indicating when the contact record was initialized and an attribute
indicating the ability for the respective contact to receive a binary message,
wherein a binary message comprises one or more binary objects;
a contact management module configured to maintain the second
plurality of contact records and their respective attributes, the contact
management module further configured to purge records in the second
plurality of contact records when the initialized timestamp attribute exceeds
a predetermined timeout value;
a binary message module configured to communicate with the contact
management module to determine the ability of an intended recipient to
receive a binary message, the binary message module further configured to
send a partial binary message comprising a portion of the one or more binary

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
December 31, 2009; (2) the Examiner’s Answer (Ans.) mailed March 31,
2010; and (3) the Reply Brief (Reply Br.) filed May 27, 2010.
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objects to an intended recipient in response to an instruction to send a binary
message to the intended recipient, wherein the partial binary message is
based on the ability of the intended recipient to receive the binary message.

13. A computer implemented method for sending a binary message,
comprising:
receiving an instruction to send a binary message, said binary message
comprising one or more binary objects;
parsing said binary message prior to sending said binary message to
determine a binary object type for each of the one or more binary objects
comprising said binary message;
sending a binary capability query to the intended recipient prior to
sending said binary message, the binary capability query not including any
portion of said binary message;
receiving a response from the intended recipient, the response
indicating the ability of the intended recipient to receive a binary message;
analyzing the response to determine the capability of the intended
recipient to receive each of said binary objects in said binary message based
on their respective binary object types;
constructing a modified binary message comprising only those binary
objects in said one or more binary objects that the intended recipient is
capable to receive; and
sending said modified binary message to the intended recipient.

The Examiner relies on the following as evidence of unpatentability:
Morse
Tsampalis
Coulombe
US 6,055,413
US 2004/0203956 A1
US 2005/0165913 A1
Apr. 25, 2000
Oct. 14, 2004
July 28, 2005
THE REJECTIONS
1. The Examiner rejects claims 1, 5, and 6 under 35 U.S.C. § 103(a) as
unpatentable over Tsampalis and Morse. Ans. 3-5.
2. The Examiner rejects claims 13, 14, 17-19, and 22 under 35 U.S.C. §
103(a) as unpatentable over Coulombe and Tsampalis. Id. at 5-9.
3. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Coulombe, Tsampalis, and Morse. Id. at 9-10.
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OBVIOUSNESS REJECTION OVER TSAMPALIS AND MORSE
The Examiner finds that Tsampalis teaches all of the limitations of
representative claim 1, except that Tsampalis does not teach (1) that “each
contact record in the second plurality of contact records comprises an
initialized timestamp attribute indicating when the contact record was
initialized” or (2) that “the contact management module further [is]
configured to purge records in the second plurality of contact records when
the initialized timestamp attribute exceeds a predetermined timeout value.”
Ans. 3-4. The Examiner finds, however, that Morse teaches these missing
limitations. Id. at 4.
Appellant argues that the “initialized timestamp attribute” recited in
claim 1 is different from Morse’s “origination” timestamp and that, because
of this difference, the “predetermined timeout value” recited in claim 1
would be applied from an irrelevant starting point if based on Morse’s
“origination” timestamp. App. Br. 13-15. Consequently, Appellant
contends that Tsampalis and Morse fail to teach or suggest all of the
limitations of claim 1.
ISSUE
Under § 103(a), has the Examiner incorrectly rejected claim 1 by
finding that Tsampalis and Morse teach:
(1) that “each contact record in the second plurality of contact records
comprises an initialized timestamp attribute indicating when the contact
record was initialized” and
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(2) that “the contact management module further [is] configured to
purge records in the second plurality of contact records when the initialized
timestamp attribute exceeds a predetermined timeout value”?
ANALYSIS
We begin by construing the disputed limitations of claim 1 which
recites, in pertinent part, that each contact record “comprises an initialized
timestamp attribute indicating when the contact record was initialized”
(emphases added). Appellant does not expressly define the term
“initialized” in the Specification. See Spec. ¶ [31]. Nevertheless, Appellant
distinguishes between the time at which a contact record is “initialized” and
a time at which a contact record is “refreshed.” Id. Further, we note that
Appellant describes that, when all information pertaining to a previously
purged contact record is updated, the contact record is “re-initialized.” Id.
Although Appellant does not expressly define the term “initialized,”
we find that the verb “to initialize” was understood to mean “to set
(variables, counters, switches, etc.) to their starting values at the beginning
of a computer program or subprogram” or “to prepare (a computer, printer,
etc.) for reuse by clearing previous data from memory.” RANDOM HOUSE
WEBSTER’S COLLEGE DICTIONARY 678 (2d Random House ed. 1999). Thus,
we conclude that “initialized” and “refreshed” are distinct terms (compare
claim 1 (“initialized timestamp attribute” (emphasis added)) with claim 5
(“refreshed timestamp attribute” (emphasis added))), and we construe the
term “initialized” to refer to the assignment of values to attributes, such as
capabilities associated with a list of binary objects (Fig. 2B; Spec. ¶¶ [29],
[30]), of a newly created or recreated contact record. Therefore, we construe
the term “initialized timestamp attribute” in claim 1 to mean a variable to
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which a value is assigned identifying the time at which a contact record was
created or recreated.
The Examiner finds that Tsampalis teaches the creation of a plurality
of contact records. Ans. 3 (citing Tsampalis, ¶ [0060]). In particular,
referring to Figure 16, the Examiner finds that Tsampalis teaches the
“storing of the recipient list messaging format capabilities 406 in the
phonebook 222 as received in an new capabilities signal one 1326.”
Tsampalis, ¶ [0060]; see also Tsampalis, Fig. 3 (Phonebook column entitled
“MSG’G FRMT CAPS”).3 In support of the Examiner’s finding, we note
that Tsampalis describes that the new capabilities signal one 1326 providing
recipient list messaging format capabilities 406 is sent from a second
communication wireless device (e.g., a recipient device) to a first wireless
communication device (e.g., a sender device). Compare Tsampalis, ¶
[0057]; Fig. 13 (describing signal three 1320, signal two 1322, and signal
one 1326 passing capabilities information from the recipient device to the
sender device) with Spec. ¶¶ [34], [46]; Fig. 5 (responding to capability
query and parsing response to capability query). Thus, the Examiner
adequately demonstrates that Tsampalis teaches the initialization of contact
records. Ans. 4.
As noted above, the Examiner relies upon Morse to teach that
Tsampalis’s records may be modified to include an “initialized timestamp
attribute.” Id. The Examiner finds that Morse teaches the use of a
timestamp for an original message and a timestamp for an update to the

3 We note that, in Appellant’s invention, “the contact records may be the
same records that are maintained by the phone book of the handset 20.”
Spec. ¶ [28] (emphasis added).
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original message. Id. (citing Morse, col. 10, ll. 9-10). In particular, Morse
describes that the timestamp for an original message “contains an
origination time of the message which indicates when the message was
received by the information provider.” Morse, col. 10, ll. 12-14 (emphasis
added). Thus, the Examiner concludes that Morse’s teaching of a timestamp
including a message “origination time,” indicating when the message was
received, teaches a timestamp indicating when a contact record was
initialized. Ans. 11.
Appellant argues that Morse’s origination timestamp is different from
Appellant’s initialized timestamp attribute. App. Br. 13. Referring to
Morse’s Figure 1, Appellant argues that Morse describes a system for
providing time-sensitive information to subscribers. Id. at 14 (citing Morse,
Fig. 1 (depicting information sources for “current events,” “sports
information,” “local news,” etc.). Consequently, Appellant argues that the
Morse’s “origination” timestamp provides information relevant to the
content of the message, e.g., its “timeliness,” rather than when it was
initialized. Id. We are unpersuaded by these arguments.
First, the Examiner is not incorporating Morse’s “origination”
timestamp into Tsampalis’s apparatus. Instead, the Examiner is modifying
the teaching of Tsampalis in view of the teaching of Morse. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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Second, referring to Tsampalis’s Figure 3, the Examiner notes that the
contact records stored in Tsampalis’s phonebook 222 already include a last
update time. Ans. 11 (citing Tsampalis, Fig. 3; ¶ [0031]).4 Thus, the
Examiner properly combines Morse’s teaching of a timestamp based on
origination time with Tsampalis’s teaching of a contact record including a
list of messaging format capabilities and an update time to teach Appellant’s
contact record comprising an “initialized timestamp attribute.” Id. As the
U.S. Supreme Court explained, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Finally, as noted above, claim 1 also recites that “the contact
management module further [is] configured to purge records in the second
plurality of contact records when the initialized timestamp attribute exceeds
a predetermined timeout value.” Morse describes that “[t]he original
message also contains an update lifetime . . . time or reference which
represents the length of time . . . that the original message can be updated by
subsequently received message updates.” Morse, col. 10, ll. 14-18. Further,
once the update lifetime expires, Morse teaches that the original message
may be deleted. Id. at ll. 18-20. Because the original message includes both

4 In the Answer, the Examiner finds for the first time that Tsampalis’s “Last
Update Time” may be interpreted as Appellant’s “initialized timestamp
attribute.” Ans. 11. Appellant argues (Reply Br. 2-5) that this represents a
new basis for the obviousness rejection of claim 1. Nevertheless, we do not
reach this argument because we find persuasive the basis for the obviousness
rejection over Tsampalis and Morse set forth in the Final Rejection. Final
Rej. 2-5; see also Ans. 3-5.
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the “origination” timestamp and the update lifetime, the Examiner concludes
that it would have been obvious to a person of ordinary skill in the art to
modify the teaching of Tsampalis to purge contact records after a
predetermined timeout value (e.g., the update lifetime), calculated from the
initialized timestamp attribute (e.g., the “origination” timestamp), has been
exceeded. Ans. 4. Appellant argues that this limitation is not taught or
suggested by Tsampalis and Morse because Morse’s “origination”
timestamp, i.e., the starting time for the expiration period calculation, is
different from Appellant’s initialized timestamp attribute. App. Br. 15. For
the reasons set forth above, we find this argument unpersuasive.
For the foregoing reasons, Appellant has not persuaded us that the
Examiner incorrectly rejected independent claim 1 and dependent claims 5
and 6, not separately argued with particularity (App. Br. 15). Therefore, we
sustain the rejection of these claims.

OBVIOUSNESS REJECTION OVER COULOMBE AND TSAMPALIS
The Examiner finds that Coulombe teaches all of the limitations of
representative claim 13, except that Coulombe does not teach “sending a
binary capability query to the intended recipient prior to sending said binary
message, the binary capability query not including any portion of said binary
message;” and “receiving a response from the intended recipient, the
response indicating the ability of the intended recipient to receive a binary
message.” Ans. 5-6. The Examiner finds, however, that Tsampalis teaches
these missing limitations. Id. at 6-7 (citing Tsampalis, ¶¶ [0033]-[0035]).
Appellant does not contest that Tsampalis teaches the limitations that
the Examiner finds missing from Coulombe. App. Br. 15-18. Instead,
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Appellant argues that Coulombe does not teach “parsing said binary
message prior to sending said binary message to determine a binary object
type for each of the one or more binary objects comprising said binary
message,” as recited in claim 13. Id. at 16. Further, Appellant argues that
Coulombe teaches away from “parsing,” as recited in claim 13. Id. at 16-17
(citing Coulombe, ¶ [0005]).
ISSUES
Under § 103, has the Examiner erred in rejecting claim 13 by finding
that Coulombe and Tsampalis teach “parsing said binary message prior to
sending said binary message to determine a binary object type for each of
the one or more binary objects comprising said binary message”?
ANALYSIS
1. Claim 13.
We begin by construing the disputed limitation of claim 13 which
recites, in pertinent part, that “parsing said binary message prior to sending
said binary message to determine a binary object type for each of the one or
more binary objects comprising said binary message” (emphasis added).
Appellant does not define the term “parsing” in the Specification and only
uses the term when describing “parsing” the response to a capability query
“to determine what binary objects the recipient is capable of receiving.”
Spec. ¶ [46] (describing the step of “analyzing the response to determine the
capability of the intended recipient to receive each of said binary objects
. . .” in claim 13 with respect to item 340); Fig. 5 (item 340 (“parse response
for objects”)). We find that the verb “to parse” was understood to mean “to
analyze (a sentence) in terms of grammatical constituents, identifying the
parts of speech, syntactic relations, etc.” or “to describe (a word in a
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sentence) grammatically, identifying the part of speech, inflectional form,
syntactic function, etc.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY
at 962 (emphasis added). Therefore, we construe the term “parsing” in
claim 13 broadly as analyzing data, e.g., an instruction, a binary message or
response, or a contact record; to determine the types of information, e.g., the
types of binary objects or the intended recipient, contained or identified in
the data.
The Examiner finds that Coulombe teaches “parsing” the binary
message to determine a binary object type for each of the one or more binary
objects comprising the binary message. Ans. 5, 12 (citing Coulombe, ¶
[0005]). Referring to claim 13, Appellant first argues that Coulombe does
not teach or suggest such “parsing.” App. Br. 16. In particular, Appellant
argues that Coulombe only teaches sending “unparsed” messages from a
sending terminal to a messaging server where the unparsed messages may or
may not be transcoded before the messages are received by a receiving
terminal. Id. We are not persuaded by Appellant’s argument.
Coulombe teaches that “a user agent of the sending terminal inserts,
into the message, media characteristics of the message sufficient in detail to
enable determining whether the message should be transcoded to
accommodate multimedia capabilities of the receiving terminal.”
Coulombe, ¶ [0005] (emphases added). Thus, the Examiner finds that the
insertion of media characteristics into the message requires analysis of the
message, so that the correct media characteristic is selected and inserted at
the correct location. Ans. 12. In support of the Examiner’s finding, we note
that, in describing particular embodiments of its method, Coulombe teaches
that the insertion of such media characteristics into the body of message is
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“parsing.” Coulombe, ¶¶ [0042]-[0044]. Coulombe describes two
embodiments of its method: inserting such media characteristics into the
body of a message (id. at ¶ [0043]) and inserting such media characteristics
into the message header (id. at ¶ [0044]). Coulombe explains that header
insertion has the advantage over message body insertion that, when using
header insertion, “one doesn’t need to parse through the message body to
extract the relevant information.” Id. (emphasis added). Therefore, the
Examiner correctly concludes that Coulombe’s description of the insertion
of media characteristics teaches “parsing” the binary message, as recited in
claim 13.5
Appellant also argues that, because Coulombe describes sending a
message from a sending terminal to a messaging server for possible
transcoding before the message is received by the receiving terminal
(Coulombe, ¶ [0005]), Coulombe does not teach that the message is parsed
“prior to sending said binary message.” App. Br. 16. Coulombe teaches,
however, that a user agent at the sending terminal inserts media
characteristics into a message “prior to sending” the message for ultimate
receipt by the receiving terminal. Ans. 12 (citing Coulombe, ¶ [0005]); see
also Coulombe, ¶ [0042] (Message Fragment 1 is an MMS message after
insertion of media characteristics “by the user agent in the sending terminal
21.”). Although the message may be transcoded at the messaging server
before its receipt at the receiving terminal, Coulombe teaches that the

5 Appellant further argues that sending an unparsed message with inserted
media characteristics would not be as efficient as parsing a binary message
prior to sending. App. Br. 16. Because the Examiner correctly finds that
Coulombe teaches parsing the binary message before sending, we find this
argument unpersuasive.
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insertions to the message, i.e., the parsing of the message, occur prior to
sending by either the sending terminal or the messaging server. Id. To the
extent that Appellant argues that the “parsing” must occur immediately
before the final transmission to the receiving terminal or that “parsing” must
include transcoding, such arguments are not commensurate with the
language of claim 13, as construed above. Therefore, the Examiner
correctly concludes that Coulombe’s insertion of media characteristics into a
message and the subsequent sending of that message teaches that “parsing”
the binary message occurs “prior to sending” the message, as recited in
claim 13.
Finally, Appellant argues that Coulombe describes the analysis of all
components of the message, including the inserted media characteristics, by
transcoding at the messaging server. App. Br. 16-17 (citing Coulombe, ¶
[0002]). Moreover, because transcoding may occur after the message is sent
from the sending terminal, Appellant argues that Coulombe teaches away
from the parsing the message “prior to sending” the message. Id. (emphasis
added). Nevertheless, we note that, in cited Paragraph [0002], Coulombe
refers to techniques existing at the time of Coulombe’s invention, rather than
Coulombe’s insertion, sending, and transcoding steps. Thus, because the
Examiner correctly finds that Coulombe teaches insertion of media
characteristics in the binary message before the message is sent from the
sending terminal, we also are not persuaded by Appellant’s teaching away
argument.
2. Claim 18.
Appellant acknowledges that “[c]laim 18 contains subject matter
similar to the subject matter of claim 13.” App. Br. 18. In particular, claim
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18 recites that a computer implemented method comprises “parsing the
instruction to send the binary message to identify an intended recipient for
the binary message and the one or more binary objects that comprise the
binary message” (emphasis added). Raising substantially the same
arguments raised with respect to claim 13, Appellant argues (1) that
Coulombe does not teach or suggest that parsing occurs before the message
is sent and (2) that Coulombe teaches away from parsing the message before
the message is sent. Id.
Initially, we note that, unlike the disputed limitation of claim 13, the
disputed limitation of claim 18 does not recite that parsing of the binary
message occurs “prior to sending said binary message.” Id. at 22-24.
Nevertheless, because the disputed limitation describes parsing the
instruction “to send the binary message” and parsing “to identify an intended
recipient for the binary message” (emphases added), we construe this
limitation to require that the parsing occur before the message is sent.
Nevertheless, for the same reasons set forth above with respect to claim 13,
the Examiner concludes that Coulombe’s insertion of media characteristics
into a message teaches parsing the message to identify one or more binary
objects that comprise the binary message and that sending that message with
insertions teaches that “parsing” the binary message occurs before sending
the message, as described in claim 18. Ans. 12-13. Therefore, we are not
persuaded by Appellant’s first argument.
Because transcoding may occur after the message is sent from the
sending terminal, Appellant again argues that Coulombe teaches away from
parsing the message “prior to sending” the message. App. Br. 18.
Nevertheless, because the Examiner correctly finds that Coulombe teaches
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insertion of media characteristics in the binary message before the message
is sent from the sending terminal, we also are not persuaded by Appellant’s
second argument.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 13 and its dependent claims 14 and 17,
not separately argued with particularity (App. Br. 18). We also are not
persuaded of error in the rejection of independent claim 18, which includes a
disputed limitation substantially similar to that recited in claim 13, or its
dependent claims 19 and 22, not separately argued with particularity (App.
Br. 19). Therefore, we sustain the rejection of these claims.

OBVIOUSNESS REJECTION OVER
COULOMBE, TSAMPALIS, AND MORSE
The Examiner finds that Coulombe and Tsampalis teach all of the
limitations of claim 21, except for the step of “deleting the contact record for
the intended recipient if the last update time of the contact record exceeds
the predetermined value.” Ans. 9-10. The Examiner finds, however, that
Morse teaches this limitation. Id. at 10 (citing Morse, col. 9, l. 61–col. 10, l.
25). Although Appellant argues this claim separately, Appellant merely
argues that Morse fails to supply the alleged deficiencies in Coulombe and
Tsampalis, as applied to independent claim 18, from which claim 21
depends. App. Br. 19. For the reasons discussed above, we are not
persuaded by those arguments. Therefore, we sustain the rejection of
claim 21.

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CONCLUSION
The Examiner did not err in rejecting claims 1, 5, 6, 13, 14, 17-19, 21,
and 22 under § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 5, 6, 13, 14, 17-19, 21,
and 22 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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