Ex Parte Kim

Board of Patent Appeals and Interferences

Sep 26, 2003

09132351 (B.P.A.I. Sep. 26, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROE-KWAN KIM
__________
Appeal No. 2002-1006
Application 09/132,351
___________
ON BRIEF
___________
Before BARRETT, FLEMING, and LEVY, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 10, 13 and 14. Claims 11 and 12 are objected to
as being dependent upon a rejected base claim.
Invention
The present invention relates to transmitting short messages
in a mobile communication system to a plurality of called
Appeal No. 2002-1006
Application 09/132,351
2
subscribers in a GSM (Global System for Mobile Communication)
system. See page 1 of Appellant’s specification. Referring to
Appellant’s figures 3a and 3b, a flow diagram illustrates a
method for transmitting a short message by a GSM terminal to a
GSM system. If the short message transmission mode is selected,
the controller 1 causes display unit 4 to instruct the calling
subscriber to input a service center address which is a short
message service center number (step 305). If the short message
group registration mode is selected, the controller 1 performs a
short message group registration mode routine (step 318). See
page 8 of Appellant’s specification.
If the group transmission mode is selected, the calling
subscriber is instructed to input a group identifier to which the
short message is transmitted (step 309). If the group identifier
is inputted, the caller subscriber is then instructed to input a
short message (step 312). If the transmit key is selected, the
controller 1 transmits the stored short message service center
address, group identifier and short message. See page 9 of
Appellant’s specification.
Referring now to figure 4, a flow diagram illustrates the
short message group registration mode routine (step 318 in fig.
3A). If the short message group registration mode is selected
Appeal No. 2002-1006
Application 09/132,351
3
among, the displayed sub-menus the controller 1 enters the short
message group registration mode routine. The calling subscriber
is then instructed to input a short message service center
address (step 401). If the service center address is inputted,
the subscriber is then instructed to input a group identifier
(step 404). The calling subscriber is then instructed to input a
destination address (step 407). The controller 1 then determines
if a destination address end key is selected (step 410). If it
is not selected, the calling subscriber is instructed to input
another destination address. In this manner, the calling
subscriber can input a plurality of destination addresses. If
the transmit key is selected, the controller 1 will transmit the
short message group registration information to the short message
service center 180. See pages 10 and 11 of Appellant’s
specification.
Referring now to Appellant’s figure 7, a block diagram
illustrates the short message service center. A gateway circuit
740 detects either the short message information or the short
message group registration information. See page 12 of
Appellant’s specification. If the short message signal includes
the short message group registration information, the controller
710 will execute a short message group registration mode routine
Appeal No. 2002-1006
Application 09/132,351
4
(step 510) shown in Appellant’s figure 6. See page 13 of
Appellant’s specification. If the short message signal received
by the short message service center includes a short message
group registration information, the controller 710 will execute a
short message group registration mode routine. In Appellant’s
figure 6, the controller 710 stores the called subscriber numbers
in corresponding addresses that are associated with and/or
assigned to the group identifier (step 603). See page 14 of
Appellant’s specification.
Claim 1 is representative of the claimed invention and is
reproduced as follows:
1. A method for transmitting a short message to a plurality
of subscribers in a mobile communication system, comprising the
steps of:
registering a plurality of called subscriber numbers in a
short message service center of said mobile communication system
by associating each of said plurality of called subscriber
numbers with a group identifier, the group identifier being a
separately defined field; and
simultaneously transmitting said short message to each of
said plurality of called subscriber numbers by designating said
group identifier.
Appeal No. 2002-1006
Application 09/132,351
1 Appellant filed an appeal brief on May 25, 2001. Appellant
filed a reply brief on October 17, 2001. The Examiner mailed out
an office communication on December 26, 2001, stating that the
reply brief has been entered. Appellant filed a reply brief on
August 26, 2002 which is identical to the previously filed reply
brief.
2 The Examiner mailed an Examiner’s answer on August 13,
2001. On June 19, 2002, the Examiner had a telephonic interview
(continued...)
5
References
The references relied on by the Examiner are as follows:
Alanara et al. (Alanara) 5,878,351 Mar. 2, 1999
(Filing date Nov. 7, 1996)
Huotari 5,987,323 Nov. 16, 1999
(Filing date Apr. 1, 1997)
Sanders, III et al. (Sanders) 6,026,296 Feb. 15, 2000
(Filing date April 30, 1997)
Rejections at Issue
Claims 1 and 9 stand rejected 35 U.S.C. § 102 as being
anticipated by Sanders. Claim 10 stands rejected under 35 U.S.C.
§ 103 as being unpatentable over Sanders. Claims 2 through 4, 6
through 8, 13 and 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sanders and Huotari. Claim 5 stands
rejected under 35 U.S.C. § 103 as being unpatentable over Sanders
and Alanara.
Throughout our opinion, we make references to the briefs1
and the answer.2
Appeal No. 2002-1006
Application 09/132,351
2(...continued)
with Appellant’s representatives. The interview summary states
that a supplemental answer is attached to the interview summary,
which includes Huotari and Alanara references under the heading
of Prior Art of Record, in paragraph 9. The interview summary
states that these references were inadvertently left out in the
previous Examiner’s answer mailed August 13, 2001. We note that
the record also shows the supplemental Examiner’s answer entered
into the record and mailed on June 19, 2002. We will simply
refer to the supplemental Examiner’s answer as the answer.
6
Opinion
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of the
Appellant and the Examiner, for the reasons stated infra, we
affirm the Examiner’s rejection of claims 1 and 9 under 35 U.S.C.
§ 102 and we affirm the Examiner’s rejection of claims 2 through
8, 13 and 14 under 35 U.S.C. § 103.
We first will address the rejection of claims 1 and 9 under
35 U.S.C. § 102. At the outset, we note that Appellant states on
page 4 of the brief that claims 2 through 10, 13 and 14 stand or
fall together with claim 1. We note that Appellant has only
argued claim 1. See pages 4 through 7 of the brief and the reply
brief. 37 CFR § 1.192 (c)(7) (July 1, 2000) as amended at 62
Fed. Reg. 53169 (October 10, 1997), which was controlling at the
time of Appellant’s filing the brief, states:
Appeal No. 2002-1006
Application 09/132,351
7
For each ground of rejection which [A]ppellant contests
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and shall
decide the appeal as to the ground of rejection on the basis
of that claim alone unless a statement is included that the
claims of the group do not stand or fall together and, in
the argument under paragraph (c)(8) of this section,
[A]ppellant explains why the claims of the group are
believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as
to why the claims are separately patentable.
Furthermore, note that claims 1 and 9 are rejected under
35 U.S.C. § 102. We will, thereby, consider the Appellant’s
claims 1 and 9 as standing or falling together and we will treat
claim 1 as a representative claim of that group. See also In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002) (“If the brief fails to meet either requirement [of 37 CFR
§ 1.192 (c)(7)], the Board is free to select a single claim from
each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the
appeal of that rejection based solely on the selected
representative claim.”)
Appellant argues in the brief and the reply brief that
Sanders fails to teach a “group identifier” that is a “separately
defined field” as recited in Appellant’s claim 1. Appellant
argues that Sanders teaches directing messages to a single pre-
Appeal No. 2002-1006
Application 09/132,351
8
defined dispatch group based on either the originating device ID
or the target address. Appellant argues that as a result,
Sanders’ device does not accommodate directing a single short
message to different groups of called subscriber numbers by
designating different group identifiers. See page 5 of
Appellant’s brief.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). “In examining a patent claim, the PTO
must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the
specification.” In re Bass, 314 F.3d 575, 577, 65 USPQ2d 1156,
1158 (Fed. Cir. 2002). Citing In re Yamamoto, 740 F.2d 1569,
1571, 222 USPQ 934, 936 (Fed. Cir. 1984). Words in a claim are
Appeal No. 2002-1006
Application 09/132,351
9
to be given their ordinary and accustomed meanings unless the
inventor chooses to be his own lexicographer in the
specification. In re Bass, 314 F.3d at 577, 65 USPQ2d at 1158,
citing Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547, 31
USPQ2d 1666, 1670 (Fed. Cir. 1994).
We note that Appellant’s claim 1 recites a
method for transmitting a short message to a plurality of
subscribers in a mobile communication system, comprising the
steps of: registering a plurality of called subscriber
numbers in a short message service center of said mobile
communication system by associating each of said plurality
of called subscriber numbers with a group identifier, the
group identifier being a separately defined field.
We note that this step is directed to registering a plurality of
called subscriber numbers. Thus, this step is an attempt to
recover the short message group registration mode disclosed in
Appellant’s specification. Furthermore, the language requires
registering a plurality of subscriber numbers by associating each
of the plurality of subscriber numbers with a group identifier.
Thus, the language requires that a plurality of subscriber
numbers are associated with a group identifier. The step further
sets forth that the group identifier be a separately defined
field. However, the claim does not specify from what the group
identifier is being separately defined. A broad reading of the
Appeal No. 2002-1006
Application 09/132,351
10
claim, simply requires that the group identifier is simply a
different number than the plurality of called subscriber numbers.
Finally, Appellant’s claim 1 recites the additional step of
“simultaneously transmitting said short message to each of said
plurality of called subscriber numbers by designating said group
identifier.” We note that the claim does not require a plurality
of group identifiers but only requires one. Furthermore, we note
that the group identifier only needs to point to one group of a
plurality of subscriber numbers. Thus, with this scope of
Appellant’s claim 1 in mind, we turn to Appellant’s argument.
Appellant argues that Sanders does not accommodate directing
a short message to different groups of called subscriber numbers
by designating different group identifiers. As pointed out
above, Appellant’s claim 1 does not require different groups of
subscriber numbers and does not require more than one group
identifier. Thus, Appellant’s claimed method simply requires
that there is only one group of subscriber numbers in which a
single identifier is associated.
We find that Sanders does teach registering a plurality of
called subscriber numbers in a short message service center of
said mobile communication by associating each of the plurality of
subscriber numbers with a group identifier, the group identifier
Appeal No. 2002-1006
Application 09/132,351
11
being a separately defined field. In particular, Sanders teaches
in column 10, lines 17 through 40, that figure 6 illustrates a
flow diagram of the steps executed by a communication device and
a dispatch short message service communication. The project flow
begins (601) when the communication device transmits (603) an SMS
call request together with a short message to a dispatch
controller located logically, and preferably physically, external
to the existing network. The SMS call request includes an ID of
the communication device and an address of the dispatch
controller. As described above, the dispatch controller utilizes
the communication device ID or the target address of the dispatch
controller contained in the SMS call request to determine the
communication network talk group and the associated talk group
members. Thus, either the ID of the communication device or the
address of the dispatch controller reads on Appellant’s claimed
group identifier. The communication device ID or a target
address is associated with a plurality of subscriber numbers,
associated talk group members. This is further buttressed by
Sanders’ teaching in column 10, lines 42 through 52, which states
that cellular telephone users can engage in dispatch or group
calls, or send short messages to a group of target users, with a
Appeal No. 2002-1006
Application 09/132,351
12
simple press of a button or a combination of buttons on their
telephone.
Sanders also teaches in column 7, lines 4 through 21, that
the present invention facilitates dispatch or group short message
service. Upon receiving a call request and a short message, the
MSC 118 provides a call request and short message to the SMS
processor 120. The SMS processor 120 forwards the call request
and short message to dispatch controller 103, which, in turn,
establishes communication links between itself and target devices
107 through 110 of the originating communication talk group as
described above. Once the links are established, the dispatch
controller transmits the short message to target devices 107
through 110 via the SMS processor 120 and establishes the links
126 through 127, 129 through 130. Thus, we find that Sanders
teaches simultaneously transmitting said short message to each of
the plurality of called subscriber numbers by designating said
group identifier, as recited in Appellant’s claim 1. Therefore,
we have found that Sanders teaches all of the claimed elements
recited in Appellant’s claim 1.
Appellant further argues that the Examiner’s reasoning that
the ID of the communication device reads on the group identifier
defies logic. Appellant argues that the ID of the communication
Appeal No. 2002-1006
Application 09/132,351
13
device is a characteristic of the communication device itself,
and that Sanders device is limited to a single pre-defined
dispatch group. Appellant argues that by contrast by using “a
separately defined field” as a “group identifier” in claim 1,
multiple groups may be designated using different groups
identifiers.
We fail to find that Appellant’s claimed language “a
separately defined field” as a “group identifier” precludes the
Examiner from reading the ID of the Sanders communication device
on Appellant’s claimed group identifier. As pointed out above,
Appellant’s claim does not require multiple groups being
designated using different group identifiers. Appellant’s claim
broadly read only requires one group of plurality of subscriber
numbers, and one group identifier associated with that group of
subscriber numbers. Furthermore, the claim requires that the
group identifier be a separately defined field. As pointed out
above, the group identifier being required to be a separately
defined field simply requires the group identifier to be a
separate number from the plurality of called subscriber numbers.
Furthermore, we fail to find anything in the Appellant’s
specification that has a special definition for the term
“separately defined field.” Therefore, we find that the Examiner
Appeal No. 2002-1006
Application 09/132,351
14
did not err in using the ordinary common usage of the term which
is broad enough to require that the group identifier just be
simply a different number than the plurality of subscriber
numbers.
In view of the foregoing, we will sustain the Examiner’s
rejection of claims 1 and 9 under 35 U.S.C. § 102 as being
anticipated by Sanders.
We now turn to the rejection of the remaining claims under
35 U.S.C. § 103. We note that the Appellant has not made an
argument as to the rejection under 35 U.S.C. § 103 in the brief
or the reply brief. The Appellant has stated on page 4 and page
7 of the brief that claims 2 through 8, 10, 13 and 14 stand or
fall with claim 1. Appellant further states in footnote 4 found
on page 7 of the brief that independent claim 2 rejected under
35 U.S.C. § 103 includes analogous recitation to the aspects of
claim 1 described above and may be distinguished from Sanders and
thus the cited combination in a like manner.
37 CFR § 1.192 (a) states:
Appellant must, within two months from the date of the
notice of appeal under § 1.191 or within the time allowed
for reply to the action from which the appeal was taken, if
such time is later, file a brief in triplicate. The brief
must be accompanied by the fee set forth in § 1.17 (c) and
Appeal No. 2002-1006
Application 09/132,351
15
must set forth the authorities and arguments on which
[A]ppellant will rely to maintain the appeal. Any arguments
or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Thus, 37 CFR § 1.192 provides that only the arguments made
by Appellants in the brief will be considered and that failure to
make an argument constitutes a waiver on that particular point.
Support for this rule has been demonstrated by our reviewing
court in In re Berger, 279 F.3d 975, 984, 61 USPQ2d 1523, 1528-29
(Fed. Cir. 2002), wherein the Federal Circuit Court stated that
because the Appellant did not contest the merits of the
rejections in his brief to the Federal Circuit Court, the issue
is waived.
Having addressed all the arguments, we therefore will
sustain the Examiner’s rejection of claims 2 through 8, 10, 13
and 14 under 35 U.S.C. § 103.
In view of the foregoing, we sustain the Examiner’s
rejection of claims 1 and 9 under 35 U.S.C. § 102 and we sustain
the Examiner’s rejection of claims 2 through 8, 10, 13 and 14
under 35 U.S.C. § 103.
Appeal No. 2002-1006
Application 09/132,351
16
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2002-1006
Application 09/132,351
17
MRF:pgc
Frank Chau
Dilworth & Barrese
333 Earle Ovington Boulevard
Uniondale, NY 11555