Ex Parte Klein et al

Patent Trial and Appeal Board

Feb 28, 2018

12811220 (P.T.A.B. Feb. 28, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/811,220 06/30/2010 Ben-Zion Klein BKLK P0597 3879
122066 7590
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
NGUYEN, DINH
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
pair@mb-ip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEN-ZION KLEIN, ISRAEL BELFER, and
EHUD SPIEGEL
Appeal 2017-008546
Application 12/811,220
Technology Center 2600
Before ROBERT E. NAPPI, THU A. DANG, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 26-28, 35, 44, 46, 66, 82-85, and 90-99. Claims 1-25, 29-34, 36^13, 45,
47-65, 67-81, and 86-89 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify BKLK LTD. as the real party in interest. App. Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellants generally describe the disclosed and claimed invention as
follows:
Apparatus for constructing a digital telephone message
including a message defining unit, configured for allowing a
sender to define a message for sending to a recipient, and a
response defining unit, configured for allowing the sender to
predefine a recipient response, and to include the predefined
recipient response in the message for activation at the recipient.
Apparatus for receiving a digital telephone message, the message
including an activatable sender-defined response, the apparatus
including a receiving unit for receiving the message, a notification
unit for notifying a recipient of the arrival of the message, and a
response activation unit for displaying the sender-defined
response, and associating the sender-defined response with a user
action for providing user input to send the response.
Abstract.2
Claim 92 is representative and reproduced below (with the disputed
limitations emphasized in italics):
92. A mobile telephone device for constructing a digital
telephone message comprising:
a processing unit; and
a memory coupled to the processing unit, the memory
containing instructions that, when executed by the processing
unit, configure the mobile telephone device to:
enter a message for sending to a recipient device;
2 Our Decision refers to the Final Action mailed June 6, 2016 (“Final Act.”);
Appellants’ Appeal Brief filed Dec. 6, 2016 (“App. Br.”) and Reply Brief
filed May 25, 2017 (“Reply Br.”); the Examiner’s Answer mailed Mar. 28,
2017 (“Ans.”); and the original Specification filed June 30, 2010 (“Spec.”).
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enter a question and a predefined recipient response,
wherein the predefined recipient response includes a plurality of
options to select from; and
generate the digital telephone message for activation at a
recipient device, the digital telephone message including the
message, the question, and the predefined recipient response,
wherein the digital telephone message further includes a script
code, wherein the script code, when executed at the recipient
device, causes the recipient device to generate and display at
least the question and the predefined recipient response on the
recipient device.
Rejections on Appeal3
Claims 92-94, 96, 97, and 99 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Diddee et al. (US 2006/0026256 Al; published Feb.
2, 2006) (“Diddee”).
Claims 26, 35, 82, 83, 90, 91, and 98 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Diddee and del Cacho et al. (US
2008/0263158 Al; published Oct. 23, 2008) (“del Cacho”).
Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee, del Cacho, and Sauer et al. (US 2003/0078033 Al;
published Apr. 24, 2003) (“Sauer”).
Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee, del Cacho, and Ranjan et al. (US 2009/0054038
Al; published Feb. 26, 2009) (“Ranjan”).
3 Although the Examiner also rejects claim 97 under 35 U.S.C. § 103(a) as
being unpatentable over Diddee and Shaffer (see Final Act. 23), the
Examiner acknowledged this rejection is mistakenly unnecessary in view of
the rejection of claim 97 under § 102(b) and, therefore, considers it deleted.
See Ans. 31.
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Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee, del Cacho, and Lovell, Jr. et al. (US 2005/0119017
Al; published June 2, 2005) (“Lovell”).
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee and Yoshimachi (US 2006/0240857 Al; published
Oct. 26, 2006) (“Yoshimachi”).
Claim 84 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee, del Cacho, and Wolf (US 2008/0062133 Al;
published Mar. 13,2008).
Claim 85 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee, del Cacho, and Shaffer et al. (US 5,995,594;
issued Nov. 30, 1999) (“Shaffer”).
Claim 95 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diddee and Shaffer.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final Act.
2-23) and in the Examiner’s Answer (Ans. 2-31), and we concur with the
conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
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Rejection of Claims 92—94, 96, 97, and 99 under § 102(b)
In the Final Action, the Examiner finds paragraph 34 of Diddee
discloses the following disputed limitation of claim 92:
wherein the digital telephone message further includes a script
code, wherein the script code, when executed at the recipient
device, causes the recipient device to generate and display at least
the question and the predefined recipient response on the recipient
device.
Final Act. 3-4.
Appellants argue Diddee does not anticipate claim 92 because “Diddee
does not disclose that a digital telephone message includes a script code, let
alone a script code that causes generation and display of a question and
recipient response on a recipient device.” App. Br. 8. In particular,
Appellants’ argue “Diddee does not even remotely mention script code, let
alone that script code is included in a digital telephone message and executed
on a recipient device to cause generation and display of information.” Id. at
9-10 (emphasis omitted). Appellants also argue Diddee teaches a structured
communication component 218 recognizes that a structured communication
has been embedded in an instant message and “provides the functionality for
displaying the structured communications.” Id. at 9-10 (citing Diddee ^ 32).4
Regarding paragraph 34 of Diddee, Appellants argue “Diddee teaches
actuation of the link resulting in launching a browser and opening a web page
of the link, but does not even remotely suggest causing the recipient device
to generate and display the structured communication as required by the
4 This argument is not persuasive of Examiner error because the Examiner
relies on paragraph 34 of Diddee, not paragraph 32. See Final Act. 3—4;
Ans. 2-3.
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instant claim 92.” Reply Br. 3—4. According to Appellants, “linking to a
stored structured communication suggests that the structured communication
is, at best, previously generated and is therefore not generated upon
execution of the link, let alone at the recipient device.” Id. at 4. Appellants
further argue:
Even assuming, arguendo, that the link of Diddee is even
remotely comparable to the claimed script code (an assumption
which Appellants neither agree with nor admit to), Diddee still
does not read on at least the claimed features of generating and
displaying the question and the predefined recipient response.
Id.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, we agree with the Examiner that Diddee’s sending of a digital
telephone message that includes a link to a stored structured communication
discloses that the message includes the claimed “script code.” Ans. 2 (citing
Diddee ^ 34). We are not persuaded by Appellants’ argument that Diddee
does not mention “script code.” It is well established that for anticipation
under 35 U.S.C. § 102, “the reference need not satisfy an ipsissimis verbis
test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), citing In re Bond,
910 F.2d 831, 832-33 (Fed. Cir. 1990). Although Appellants state they
“neither agree with nor admit to” the link of Diddee being “even remotely
comparable to the claimed script code” (see Reply Br. 4), Appellants do not
provide persuasive evidence or reasoning why Diddee’s “link” does not read
on or disclose the claimed “script code.”
Appellants’ Specification does not expressly define the term “script
code.” In describing certain embodiments of the invention, the Specification
states, for example, the SMS client software parses the SMS text and
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“optionally uses at least some of the SMS text as a directive or script for
execution.” Spec. p. 35,11. 13-15. The Specification also states “the
indication that a response is desired optionally comprises code, executable at
the receiver” and in other embodiments “the code comprises a script to be
optionally run by the receiver.” Spec. p. 36,11. 3—4, 9-10. In view of the
Specification, we conclude the broadest reasonable interpretation of the term
“script code” is “executable code.” Thus, we also conclude, as does the
Examiner, that Diddee’s disclosure of a link that can be actuated—executable
code—discloses the claimed “script code.” See Ans. 3.
Second, we are not persuaded by Appellants’ argument that Diddee
does not disclose script code that, when executed, “causes generation and
display of a question and predefined recipient response on a recipient
device.” See App. Br. 8; Reply Br. 3—4. The Examiner finds, and we agree,
paragraph 34 of Diddee discloses that, when the recipient actuates the link,
the instant messenger component launches a browser and opens the web page
corresponding to the link to display the communication and allow the
recipient to select the appropriate response. Ans. 2-3. Consistent with the
disputed claim limitation, therefore, when the link of Diddee is actuated, the
claimed function of “causing] the recipient device to generate and display at
least the question and the predefined recipient response on the recipient
device” is performed. Although Appellants argue that linking to a stored
structured communication suggests the communication is “previously
generated and is therefore not generated upon execution of the link, let alone
at the recipient device” (see Reply Br. 4), this argument is not persuasive
because it is not commensurate with the scope of the disputed limitation
reciting “when executed at the recipient device, causes the recipient device to
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generate and display.” The term “generate” is defined as: “to be the cause of
. . . [an] action.”5 Diddee discloses the recipient can activate the link on the
recipient’s device. Diddee ^ 34. Diddee also discloses that activation of the
link causes the recipient device to “generate” and display the question and
response because activation of the link causes launching of a browser and
opening the web page corresponding to the link to display the communication
and allow the recipient to select the appropriate response. Id. Thus, we agree
with the Examiner that paragraph 34 of Diddee discloses execution of the
link or “script code” at the recipient’s device “causes the recipient device to
generate and display at least the question and the predefined recipient
response on the recipient device.” See Ans. 2-3.
Third, we are not persuaded by Appellants’ argument that Diddee does
not teach “‘the digital telephone message including the message, the
question, and the predefined recipient response’” because Diddee teaches
including a link to a stored structured communication, which does not teach
that the claimed question and predefined recipient response are included in
the digital telephone message. Reply Br. 4. Appellants’ argument is
conclusory and unsupported by evidence or technical reasoning to show why
Diddee’s digital telephone message that includes a link to the question and
predefined recipient response does not disclose the claimed “digital telephone
message including the message, the question, and the predefined recipient
response.” Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
5 See https://www.merriam-webster.com/dictionary/generate.
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Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
For these reasons, we agree with the Examiner’s findings that Diddee
discloses the disputed limitation of claim 92. Thus, we sustain the
Examiner’s rejection of independent claim 92 for anticipation under § 102(b).
For the same reasons, we also sustain the Examiner’s rejection of dependent
claims 93, 94, 96, 97, and 99, which are not separately argued, under
§ 102(b). See App. Br. 10.
Rejection of Claims 26, 35, 82, 83, 90, 91, and 98 under § 103(a)
Claims 26, 35, and 90
Appellants argue the disputed features of claim 26 are similar to the
features argued with respect to claim 92 and, therefore, Appellants’
arguments with respect to claim 92 apply to claim 26. App. Br. 10-11.
Appellants note del Cacho is cited by the Examiner for another feature of the
claim and also argue del Cacho does not teach “that a received digital
telephone message is activatable, and does not teach that the activatable
digital telephone message includes a script code for causing generation and
display of questions or sender-defined responses.” Id. at 11. Appellants
further argue “there is no showing by the Examiner indicating how the cited
references can be properly combined to arrive at Appellants’ claimed subject
matter” and “relies on improper hindsight in rejecting the claims.” Id. at 11-
12 (emphasis omitted).
We are not persuaded by Appellants’ arguments. First, Appellants
attack on del Cacho as failing to teach an activatable digital telephone
message that includes a script code for causing generation and display of
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questions or sender-defined responses is not persuasive because the Examiner
relies on Diddee as teaching these limitations. See Ans. 4-5. “Non­
obviousness cannot be established by attacking references individually where
the rejection is based upon the teachings of a combination of references.” In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, contrary to
Appellants’ argument, the Examiner expressly explains the rationale for a
person of ordinary skill in the art to modify Diddee with del Cacho. See Ans.
5-6. We agree with the Examiner’s stated rationale for combining the
references and find it constitutes articulated reasoning with some rational
underpinning in accordance with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Third, we are not persuaded by Appellants’ argument the
Examiner’s rejection is based on improper hindsight because, as the
Examiner finds, and we agree, “the rejection takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the applicant’s disclosure.” Ans. 6 (citing In re McLaughlin, 443 F.2d
1392 (CCPA 1971)). Accordingly, we sustain the Examiner’s rejection of
independent claim 26, and dependent claims 35 and 90, which are not
separately argued. See App. Br. 12.
Claims 82, 83, 91, and 98
Appellants make substantially the same arguments in regard to
independent claims 82 and 83 as they made in regard to claim 26. App. Br.
12-14. For the reasons stated supra with respect to claim 26, we are not
persuaded by these arguments with respect to claims 82 and 83. In addition,
the Examiner provided a detailed and comprehensive response to each of
Appellants’ arguments concerning claims 82 and 83, and we adopt as our
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own the findings and reasons set forth by the Examiner regarding claims 82
and 83. See Ans. 6-12. Accordingly, we sustain the Examiner’s rejection of
claims 82 and 83 for obviousness under § 103(a), as well as claim 91, which
depends from claim 83 and is not separately, substantively argued. See App.
Br. 14.
Appellants also make substantially the same arguments in regard to
dependent claim 98 as they make in regard to claim 26. App. Br. 15-17.
Appellants also argue claim 98, which depends from claim 97, is
independently allowable because del Cacho “does not even remotely suggest
that a response including an acknowledgment of a recipient of the digital
telephone message by a user of the recipient device is received without the
user of the recipient device reading a body of the message included in the
digital telephone message.” Id. at 16-17 (emphasis omitted). To the extent
Appellants’ arguments are substantially the same as those made in regard to
claim 26, we are not persuaded by them for the same reasons previously
discussed. In addition, the Examiner provided a detailed and comprehensive
response to each of Appellants’ arguments concerning claim 98, and we adopt
as our own the findings and reasons set forth by the Examiner regarding
claim 98. See Ans. 12-13. In particular, the Examiner finds, and we agree,
del Cacho teaches the disputed limitations of claim 98 because del Cacho
teaches a response, i.e., an acknowledgment of receipt, is automatically sent
by the recipient device of the user without a need for the user of the device
for any one of selecting, opening, and readying the message. Id. at 12 (citing
del Cacho ^ 47). That is, as the Examiner finds, del Cacho teaches allowing
the user of the recipient device to automatically respond to the message
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without reading the body of the message. See id. Thus, we sustain the
Examiner’s rejection of claim 98 for obviousness under § 103(a).
Rejection of Claims 27, 28, 44, 46, 66, 84, 85, and 956 under § 103(a)
Appellants make substantially the same arguments in regard to claims
27, 28, 44, 46, 84, and 85, all of which depend from claim 26, as the
arguments made in regard to 26, except the secondary reference referred to as
not teaching a digital telephone message including script code is changed
from del Cacho to Sauer, Ranjan, Lovell, Wolf, or Shaffer, as appropriate
based on the rejection. App. Br. 17-23.
Appellants make substantially the same arguments in regard to
independent claim 66 as the arguments made in regard to claims 26 and 92,
except the secondary reference referred to as not teaching a digital telephone
message including script code is changed from del Cacho to Yoshimachi. Id.
at 21-22.
Appellants make substantially the same arguments in regard to claim
95, which depends from claim 92, as the arguments made in regard to claim
26. Id. at 24-25.
For the same reasons stated supra with respect to claims 26 and 92, we
are not persuaded by Appellants’ arguments with respect to claims 27, 28, 44,
46, 66, 84, 85, and 95. In addition, the Examiner provided a detailed and
comprehensive response to each of Appellants’ arguments concerning these
claims, and we adopt as our own the findings and reasons set forth by the
6 As stated in footnote 3 supra, the Examiner states the rejection of claim 97
under § 103(a) is mistakenly unnecessary and considers the rejection deleted.
See Ans. 31.
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Examiner regarding these claims. See Ans. 14-31. Accordingly, we sustain
the Examiner’s rejection of claims 27, 28, 44, 46, 66, 84, 85, and 95 for
obviousness under § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 92-94, 96, 97, and 99
under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 26-28, 35, 44, 46, 66,
82-85, 90, 91, 95, and 98 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)(l)(iv).
AFFIRMED
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