Ex Parte Kinsella

Board of Patent Appeals and Interferences

Feb 27, 2007

09592563 (B.P.A.I. Feb. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIKE KINSELLA
____________

Appeal 2007-0150
Application 09/592,563
Technology Center 2600
____________

Decided: February 27, 2007
____________

Before KENNETH W. HAIRSTON, JOSEPH L. DIXON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 to 27 and 29 to 46. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant has invented a system and method for transmitting a
message to an intended recipient. A database is created that has details of
the appearance of individual potential recipients of messages. A received
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message that has details of the intended recipient of the message is
compared with the database of potential recipients of the message, and one
or more possible recipients may be identified as candidates to receive the
message.
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A message pushing system for sending messages to recipients, the
system comprising:
a database of details of individual potential recipients; and
telecommunications links for communicating with message sending
and message receiving devices, the message pushing system being adapted
to receive a message from a message sending device, the message
comprising details of the intended recipient of the message, wherein the
message pushing system compares the details of the intended recipient of the
message with the database of potential recipient’s details thereby
establishing one or more members who may be the intended recipient, the
message pushing system being adapted to transmit said message to the
message receiving means of the one or more members who may be the
intended recipient.

The Examiner rejected claims 1 to 4, 9, 11, 15, 17 to 19 and 22 under
35 U.S.C. § 102(e), and the Examiner rejected claims 5 to 8, 10, 12 to 14,
16, 20, 21, 23 to 27 and 29 to 46 under 35 U.S.C. § 103(a).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fraccaroli US 6,549,768 Apr. 15, 2003
(filed Aug. 24, 1999)

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Appellant contends that the claimed subject matter is neither
anticipated nor obvious because the matching system described by
Fraccaroli does not identify an intended recipient of the message (Br. 12-18).
We sustain.
ISSUE
Does Fraccaroli identify an intended recipient of a message as
required by all of the claims on appeal?
FINDINGS OF FACT
As indicated supra, Appellants invented a system and method for
identifying an intended recipient of a message.
The Background in Fraccaroli describes a computer dating service
that matches people based on a stored profile for each of the customers. A
customer of the service submits a request for a match among the stored
customer profiles, and the computer dating service searches the database for
profiles that match the request. The database of details of potential
recipients includes details of the appearance (e.g., race, height, weight, eye
color, hair color) of desired recipients (Col. 1, ll. 27-33). The customer is
informed of the selected matches (Col. 1, ll. 25-42). A preferred
embodiment in Fraccaroli, however, describes a message pushing system
that stores a database of details of individual potential recipients of a
message in server 106 (Fig. 1, Col. 5, ll. 26-36). In Fraccaroli, a potential
recipient can be a known person (Col. 8, ll. 44-46), a person that enters a
location area (Col. 8, ll. 65-67; Col. 9, ll. 57-62; Col. 10, ll. 3-5), a close
friend (Col. 9, ll. 6-9) or a person with similar interests (Col. 10, ll. 25-28).
A telecommunications link (i.e., message sending and message receiving) is
established between two mobile handsets 102 (Col. 3, ll. 46-55; Col. 4, ll. 64
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and 65). The message pushing system is adapted to receive a message (i.e.,
a profile of the intended recipient) from one of the handsets 102 (Col. 8, ll.
35-66; Col. 10, ll. 52-56; Col. 11, ll. 12-16). The message pushing system
compares the details of the intended recipient with the database of potential
recipients, and selects one or more members as an intended recipient of the
message (Col. 9, ll. 50-65). Once a matching recipient is selected, the
message pushing system is adapted to (and does) transmit the message to the
selected mobile message receiving handset 102 (Col. 11, ll. 12-22). The
message pushing system also stores details of frequently visited locations or
locations previously visited by the user of the system (Col. 10, ll. 25-28).
PRINCIPLE OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
The phrase “adapted to” does not normally further limit or define a
structural limitation because it is optional and it is not necessarily a required
part of the structural limitation. In re Ashley, 315 F.2d 945, 948, 137 USPQ
361, 363 (CCPA 1963).
The details of a message are considered nonfunctional descriptive
material if they are not functionally related to the message. Nonfunctional
descriptive material carries no weight in the analysis of patentability over
prior art applied by the Examiner. Cf. In re Lowry, 32 F.3d 1579, 1583, 32
USPQ2d 1031, 1034 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory . . .”). Nonfunctional descriptive material
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cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed.
Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
ANALYSIS
As indicated supra, we disagree with Appellant’s argument that the
matching system described by Fraccaroli merely operates on a profile of a
desired match, and does not identify “an intended recipient” of a message as
set forth in all of the claims on appeal. Our description of the operation of
the Fraccaroli system clearly demonstrates that all of the limitations set forth
in the claims on appeal are either anticipated by or would have been obvious
based upon the teachings of Fraccaroli. Although we could have ignored the
functional limitations that are “adapted to” be performed, we chose not to
since the Fraccaroli system is “adapted to” perform the same functions, and,
as indicated supra, does in fact perform the noted functions. With respect to
the nonfunctional descriptive material (e.g., the details of the message) in the
claims on appeal, we again chose to consider it since Fraccaroli provides the
details of the message to an intended recipient.
As indicated supra, the stored location information in Fraccaroli can
be the current location of a recipient, frequently visited locations of a
recipient and previous locations of a recipient.
CONCLUSION OF LAW
Anticipation has been established by the Examiner because Fraccaroli
does describe an intended recipient of a message. The obviousness of the
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claimed subject matter has been demonstrated by the Examiner because
Fraccaroli describes appearance as well as location information about an
intended recipient.
DECISION
The anticipation rejection of claims 1 to 4, 9, 11, 15, 17 to 19 and 22
is affirmed. The obviousness rejection of claims 5 to 8, 10, 12 to 14, 16, 20,
21, 23 to 27 and 29 to 46 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

kis

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