Ex Parte King

Patent Trial and Appeal Board

Oct 29, 2014

12333024 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BENNETT M. KING
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Appeal 2012-005252
Application 12/333,0241
Technology Center 3600
____________________

Before: JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The real party in interest, according to the Appellant, is QUALCOMM,
Incorporated. (App. Br. 3).
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Appellant’s invention is directed generally to near field
communication transactions with wireless communications. (Spec. ¶ 3).
Claim 1 is representative of the claims on appeal:
1. A method for determining the suitability of
information to be processed by a mobile client, comprising:
receiving on the mobile client, information relating to a
transaction between the mobile client and a transaction host
using a near-field-communication (NFC) link;
updating a user profile on the mobile client based on the
received transaction information; and
performing at least one of receiving, selecting and
displaying one or more targeted content messages on the mobile
client based upon the updated user profile.

Appellant appeals the following rejections:
Claim 21 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, for lack of
enablement.
Claims 8–13 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over LaBiche (US 2008/0140667 A1, pub. June 12, 2008) and Paintin
(US 2009/0006183 A1, pub. Jan. 1, 2009).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
LaBiche, Paintin, and Su (US 2002/0199190 A1, pub. Dec. 26, 2002).

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ANALYSIS
Rejection of Claim 21 under 35 U.S.C. § 112,
First Paragraph, Written Description Requirement
Dependent claim 21 recites “selecting the one or more targeted
content messages on the mobile client based upon a comparison between the
updated user profile and targeted content rules provided to the mobile client
from an external entity.”
In construing claim 21, the term “comparison” is not defined by the
Specification, so we rely on the ordinary and customary definition of the
verb “compare,” which is “to look at (two or more things) closely in order to
see what is similar or different about them or in order to decide which one is
better.” (Merriam Webster’s Collegiate Dictionary (10th ed.) 1998). This
definition is consistent with the usage of the term in the Specification, for
example, at paragraph 271.
We are not persuaded by the Appellant’s argument that there is
written description support for the subject matter of claim 21, at
paragraphs 99 and 100 (“[p]age 13, lines 7-26”) and at “[p]age 51, lines 11-
15.” (App. Br. 12, Reply Br. 7–8). Paragraph 99 describes communicating,
storing, and using data for marketing purposes. (Spec. ¶ 99). Paragraph 100
describes providing rules to the wireless terminal. (Id. ¶ 100). Page 51,
lines 11–15, which corresponds to paragraph 283, merely describes the need
to “learn user preferences from a user’s phone usage habits.” (Id. ¶ 283).
The quote provided by the Appellant2 actually appears to describe
comparing a user profile with advertisements, but not comparing a user

2 The quoted text at Appeal Brief, page 12 and Reply Brief, pages 7–8
appears to originate from paragraph 263, on page 45, rather than from
paragraph 283 on page 51.
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profile with downloaded rules. (Spec. ¶ 263). We do not find that the
Specification describes looking at both rules and a user profile to see what is
similar and different about them.
Therefore, we agree with the Examiner that claim 21 introduces new
matter that one of ordinary skill in the art would not recognize as being in
possession of the Appellant at the time of the invention. See Ariad Pharms.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting
Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985)). For this reason, we sustain the rejection of claim 21 under 35 U.S.C.
§ 112, first paragraph, as failing to meet the written description requirement.
Rejection of Claim 20 under 35 U.S.C. § 112,
First Paragraph, Enablement Requirement
Independent claim 20 recites a “non-transitory computer-readable
medium containing program code stored thereon, which, when executed by a
processor, cause[s] the processor to perform actions, the program code
comprising . . .” three elements of code to perform functions generally
equivalent to those disclosed in claim 1.
We are persuaded by the Appellant’s argument that claim 20 is
sufficiently enabled, by reciting computer medium structure. (App. Br. 13–
14, Reply Br. 8–9).
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (internal citation omitted). Factors to consider include
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
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of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner asserts that the program code is “purely functional”
(Ans. 6), with “insufficient structure” (id. at 7), and that the medium
provides structure, but not for the code (id. at 32). The Answer, however,
provides no discussion of the Wands factors. As a result, the Examiner has
failed to articulate a prima facie case of lack of enablement. In addition, the
Appellant’s disclosure adequately describes a number of computer medium
implementation aspects (Spec. ¶ 361) that provide enablement for the
narrower language of claim 20. The ordinary artisan would understand how
to create a computer-executable medium to perform the functions claimed,
using common knowledge and the Appellant’s Specification.
For this reason, we will not sustain the rejection of claim 20 under
35 U.S.C. § 112, first paragraph, for not meeting the enablement
requirement.
Rejection of Claims 8–13 under 35 U.S.C. § 112,
Second Paragraph as Indefinite
Independent claim 8 recites a “mobile client” comprising means for
performing three functions, that are generally receiving information on the
mobile client, updating a user profile, and one of “receiving, selecting and
displaying one or more targeted content messages.”
We are persuaded by the Appellant’s argument that claim 8 is not
indefinite for lacking corresponding structure in the Specification for these
“means-for” limitations. (App. Br. 7–9). More specifically, the Appellant
contends, for example, that the “receiving” structure is disclosed at element
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130 of Figure 1. (Reply Br. 3–6). We agree with the Appellant. The
ordinary artisan would recognize the “data service layer 130” (Fig. 1) as one
of the parts of a common mechanism used by the mobile device to receive
information on a wireless communication device. In general, we are
persuaded that the manner in which a mobile telephone is capable of
receiving information is something that would be known to the artisan of
ordinary skill when seeking to implement the claimed invention. We are
persuaded by similar reasoning that applies to the other elements disclosed
by the Appellant for the other two limitations. (App. Br. 4–5). As a result,
we will not sustain the rejection of claims 8–13 under 35 U.S.C. § 112,
second paragraph, as indefinite.
Rejection of Claims 1–20 under 35 U.S.C. § 103(a)
over LaBiche and Paintin
The Appellant argues independent claims 1, 8, 14, and 20 as a group
(App. Br. 18). We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We are not persuaded by the Appellant’s argument that the
obviousness rejection is improper because, in Paintin, the operations to
receive, select, or display a message on a mobile device are performed at a
server, not on the mobile device itself. (App. Br. 15, Reply Br. 9). The
Examiner finds that Paintin discloses “receiving” a targeted content
message, a coupon, at the mobile device. (Ans. 9, 34–35). The Appellant
contends this coupon is received based on operations performed on a server,
and that the “updated user profile” exists only on the mobile client, so the
claim’s “based on” language indicates that the receiving must be based on
the information present on the mobile client. (Reply Br. 10).
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The Examiner finds LaBiche and Paintin disclose or suggest the claim
language. (Ans. 9–10). LaBiche discloses receiving information relating to
a transaction, and updating a user profile, in that a log of a transaction is
recorded on the mobile device when the mobile device participates in a
transaction with an upstream host. (¶ 19). The Examiner therefore finds the
claimed user profile at the disclosed transaction log. (Ans. 9). LaBiche
further discloses “displaying” transaction log/user profile information on the
mobile device. (¶ 29). LaBiche thus displays a message on a mobile client
based upon updated user profile/transaction log. The Examiner, however,
addresses the claim element of “receiving,” rather than that of “displaying.”
The claim requires “one of receiving, selecting, and displaying,” but not all
three.
In addressing the “receiving” element, the Examiner relies in part on
Paintin. (Ans. 9). The Examiner finds the “targeted content message” in
Paintin, at a coupon generated for a user based on a transaction. (Id.,
referring to Paintin, Figure 3, element 320). Paintin discloses basing a
decision to send a coupon on transaction information (¶ 20), by processing
transaction information through a rule engine (¶ 43), located on a host
computer (Fig. 1). The claim term “targeted content message” is not defined
or described in the Specification. The coupon of Paintin, however, would be
recognized as a “targeted content message,” because the Specification
explicitly describes that targeted advertisements are an example of a targeted
content message. (¶ 7).
In LaBiche, the same transaction information exists on the systems of
both participants in the transaction, at both the mobile device and the
transaction host/server, because both participants create and use the same
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transaction information. LaBiche displays this information, after operating
on it by sorting. (¶ 30). LaBiche thus performs operations at the mobile
device on data that exist at both the mobile device and server. The content
of the message displayed by LaBiche may not be considered by the ordinary
artisan to be a “targeted content message;” however, that is the purpose of
the citation of the coupon of Paintin.
In a client/server environment, such as with hosts and mobile devices
that participate with those hosts, where to host particular functions is an
implementation decision. Applications are sometimes hosted at a server,
and sometimes at a mobile/client device. We find no meaningful difference
between the choice to host the coupon generating application at one location
or the other. The server could operate on the transaction data at a server, as
in generating a coupon in Paintin, or on the mobile device, as in sorting the
log for display in LaBiche. See, e.g., Su, paragraph 30 (selecting, at the
mobile device, an advertisement “which fits the user profile”). It would be a
small leap from the disclosure of LaBiche/Paintin to that of the claimed
invention, which would be well within the skill of the ordinary artisan
implementing a client/server application. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”).
For this reason, we sustain the rejection of claims 1, 8, 14, and 20
under 35 U.S.C. § 103(a), as well as the rejection of dependent claims 2–7,
9–13, and 15–19.
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Rejection of Claim 21 under 35 U.S.C. § 103(a)
over LaBiche, Paintin, and Su
Dependent claim 21 recites “selecting the one or more targeted
content messages on the mobile client based upon a comparison between the
updated user profile and targeted content rules provided to the mobile client
from an external entity.”
We are not persuaded by the Appellant’s argument that Su does not
disclose rules that are provided to a mobile client from an external entity.
(App. Br. 19–20, Reply Br. 14–15).
As to disclosing selecting based on comparison, the Examiner relies
on paragraphs 20 and 33 of Paintin (Ans. 11), which discloses applying rules
in a rules engine to data from the transactions, to generate a coupon. (¶¶ 20,
33). As to disclosing selecting on the mobile client, and rules provided to
the mobile client from an external entity, the Examiner first relies on Su,
paragraphs 29–31 (Ans. 11–12), and also on Paintin, Figure 1 and
paragraph 20. (Id. at 45).
Su discloses selecting, on a mobile phone, advertisements for display
on the mobile phone. (¶ 30). Su does not disclose where the rules, for
selecting coupons, originate. Paintin does not disclose downloading rules to
the mobile device. The Examiner further asserts, however, that “when using
the external rule of Paintin on the mobile client of Su, the rules of Paintin
would obviously have to be provided to the mobile client of Su.” (Ans. 45).
We agree, at least in part, with the Examiner. Rules used on a mobile client
could be created on the client, could be created at, and be downloaded from,
the server, or could come from an external entity to the client and server
environment. There are, in other words, a finite number of possibilities for
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the source of the rules. Given such a finite number of solutions, it would be
obvious to provide rules to the mobile client from an external entity. See
KSR, 550 U.S. at 421
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
For this reason, we will sustain the rejection of claim 21 under
35 U.S.C. § 103(a).

DECISION
We AFFIRM the rejection of claim 21 under 35 U.S.C. § 112, first
paragraph, for lack of written description.
We REVERSE the rejection of claim 20 under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
We REVERSE the rejection of claims 8–13 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We AFFIRM the rejection of claims 1–20 under 35 U.S.C. § 103(a).
We AFFIRM the rejection of claim 21 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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