Ex Parte Kawa et al

Patent Trial and Appeal Board

Jun 21, 2016

12890145 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/890,145 09/24/2010
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/23/2016
FIRST NAMED INVENTOR
Claude Kawa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P4466USOO 7731
EXAMINER
PHAN, DEAN
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
06/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDE KAW A, JONATHAN SKYPEK, and
PATRICK ARSENAULT
Appeal2014-009061
Application 12/890, 145
Technology Center 2100
Before JOSEPH L. DIXON, JEFFREY A. STEPHENS,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-16 and 18-20. 1 Claims 17 and 21--42 are cancelled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 In the Appeal Brief, Appellants identify Nokia Corporation as the real
party in interest. (App. Br. 1.)
Appeal2014-009061
Application 12/890, 145
THE INVENTION
Appellants' invention is directed to customizing application protocols.
(Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving a request to execute an application at a device,
wherein the application includes a set of protocol
features;
determining one or more protocols for the application based, at
least in part, on one or more criteria; and
determining a subset of the protocol features to enable or
disable based, at least in part, on the one or more
protocols,
wherein the device includes a display configured to display at
least a portion of a user interface, and
wherein the application at the device is configured to display on
the portion of the user interface only the subset of
protocol features corresponding to the application that are
enabled.
REJECTIONS
The Examiner rejected claims 1-2, 5-10, 13-16, and 18-19 under 35
U.S.C. § 102(b) as being anticipated by Macaluso (US 2005/0079863 Al,
pub. Apr. 14, 2005). (Final Act. 2--4.)
The Examiner rejected claims 3, 4, 11, 12, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Macaluso and Ueda (US 2003/0216150
Al, pub. Nov. 20, 2003). (Final Act. 5---6.)
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Appeal2014-009061
Application 12/890, 145
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether Macaluso discloses the independent claim 1
limitations, "determining a subset of the protocol features to enable or
disable based, at least in part, on the one or more protocols ... and wherein
the application at the device is configured to display on the portion of the
user interface only the subset of protocol features corresponding to the
application that are enabled," and the similar limitations recited in
independent claims 9 and 18. (App. Br. 6-12.)
Issue Two: Whether the combination of Macaluso and Ueda teaches
or suggests the claim 3 limitations, "determining whether there are one or
more updates to the one or more protocols at a predetermined frequency, a
predetermined schedule, or a combination thereof; and determining to
update the subset based, at least in part, on the one or more updates to the
one or more protocols," and the similar limitations recited in claim 11.
(App. Br. 12-14.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. Other than with respect to claims 3 and
11, we disagree with Appellants' arguments, and we adopt as our own ( 1) the
2 Rather than reiterate the arguments of Appellants and positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 3, 2014); Reply Brief
(filed Aug. 20, 2014); Final Office Action (mailed Sept. 4, 2013); and the
Examiner's Answer (mailed June 20, 2014) for the respective details.
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Appeal2014-009061
Application 12/890, 145
pertinent findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 2---6) and (2) the corresponding reasons
set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 2-5), and we concur with the applicable
conclusions reached by the Examiner. We emphasize the following.
Issue One
In finding Macaluso discloses the claim limitations at issue, the
Examiner relies on the description in that reference of over the air
provisioning of mobile services, in which during activation of a mobile
device, a user selects carriers and calling plans, resulting in the downloading
of appropriate settings and applications. (Final Act. 3; Macaluso Abstract;
Figs. 4, 5; i-fi-135, 37, 42.) For example, Figure 5 and the accompanying
description disclose a sequence of menus allowing selection from a list of
carriers, followed by selection from a list of price plans, followed by
selection of applications. (Macaluso Fig. 5, i-fi-1 42, 43.)
Appellants argue this does not disclose determining protocol features
to be enabled or disabled, or displaying only enabled protocol features, per
the claim limitations at issue. (App. Br. 9-11.) However, we agree with the
Examiner that selection of carriers and calling plans necessarily involves
selection of protocols and enabling protocol features, under the broadest
reasonable interpretation of the claim language - i.e., "the Examiner
interpreted selecting as enabling." (Ans. 3.) We also agree with the
Examiner's finding regarding Figure 5, and its description, in Macaluso:
Clearly, figure 5 discloses the application at the device is
configured to display on the portion of the user interface (on the
screen 525) only the subset of protocol features corresponding
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Appeal2014-009061
Application 12/890, 145
to the application that are enabled (the detail of the selected
calling plan).
(Ans. 4; see Macaluso Fig. 5, i-f 42.)
Issue Two
In finding Macaluso and Ueda teach or suggest the additional
limitations of dependent claims 3 and 11, the Examiner relies on the
description in Ueda of a frequency-band selecting circuit that selects a
frequency band for use by a cellular phone. (Final Act. 5---6; Ueda i-f 69.)
Appellants argue Ueda does not teach or suggest "determining whether there
are one or more updates to the one or more protocols at a predetermined
frequency, a predetermined schedule, or a combination thereof," as required
by the claims. (App. Br. 13.) We are persuaded the Examiner errs in
finding this limitation taught or suggested by the combination of Macaluso
and Ueda. The Examiner does not cite anything in the references relied
upon that pertains to the claimed updating at a predetermined frequency or
schedule.
CONCLUSIONS
For the reasons discussed above, we do not sustain the obviousness
rejection of claims 3 and 11 over Macaluso and Ueda.
Also for the reasons discussed above, we sustain the anticipation
rejection of independent claims 1, 9, and 18 over Macaluso. We also sustain
the anticipation rejections of claims 2, 5-8, 10, 13-16, and 19 over
Macaluso, and the obviousness rejection of claims 4, 12, and 20 over
Macaluso and Ueda, which rejections are not argued separately with
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Appeal2014-009061
Application 12/890, 145
particularity, other than conclusory arguments that are not persuasive in light
of our discussion above. (App. Br. 11, 14.)
DECISION
We affirm the Examiner's rejections of claims 1, 2, 4--10, 12-16 and
18-20.
We reverse the Examiner's rejections of claims 3 and 11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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