Ex Parte Koli

Patent Trial and Appeal Board

Oct 27, 2014

11428001 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARI KOLI
__________

Appeal 2012-000624
Application 11/428,0011
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ari Koli (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1–33. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

1 The Appellant identifies Nokia Corporation as the real party in interest.
App. Br. 2.
Appeal 2012-000624
Application 11/428,001

2
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
receiving, at a middleware component, an advertisement
request from an application, the advertisement request including
one or more parameters wherein the middleware component
and the application are included in a mobile communication
device;
selecting, at the middleware component, one or more
advertisements from a database, wherein the selection is based
on the one or more parameters; and
providing the selected one or more advertisements to the
application in accordance with the one or more parameters.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tamayo
Kernahan

US 2002/0083067 A1
US 2002/0128903 A1
June 27, 2002
Sept. 12, 2002
The following rejections are before us for review:
1. Claims 1–24, 26–28, 30, 31, and 33 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kernahan.

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 18, 2011) and Reply Brief (“Reply Br.,” filed Aug. 29,
2011), and the Examiner’s Answer (“Answer,” mailed June 28, 2011).
Appeal 2012-000624
Application 11/428,001

3
2. Claims 25, 29, and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kernahan and Tamayo.
ISSUES
Did the Examiner err in rejecting claims 1–24, 26–28, 30, 31, and 33
under 35 U.S.C. § 102(b) as being anticipated by Kernahan?
Did the Examiner err in rejecting claims 25, 29, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Kernahan and Tamayo?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1–24, 26–28, 30, 31, and 33 under 35 U.S.C.
§ 102(b) as being anticipated by Kernahan.
A determination that a claim is anticipated under 35
U.S.C. § 102(b) involves two analytical steps. First, the Board
must interpret the claim language, where necessary. Because
the PTO is entitled to give claims their broadest reasonable
interpretation, our review of the Board’s claim construction is
limited to determining whether it was reasonable. In re Morris,
127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board
must compare the construed claim to a prior art reference and
make factual findings that “each and every limitation is found
either expressly or inherently in [that] single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998). . . .
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
The independent claims on appeal are:
Appeal 2012-000624
Application 11/428,001

4
method claims 1 and 24; apparatus claims 9 and 31; computer
readable media claims 14 and 28; and mobile terminal claim 19.
One of the issues in this appeal is whether Kernahan describes,
expressly or inherently, middleware. The term “middleware” appears in
independent claims 1, 9, 14, 24, 28, and 31. We do not see it in claim 19 or
in any of the claims depending from it.
As to claims 1, 9, 14, 24, 28, and 31 and the claims dependent
thereon, the first step in determining whether these claims are anticipated
under § 102 is to give the claims their broadest reasonable interpretation. In
that regard, the Specification defines the claim term “middleware” as, “in
general, . . . an entity that facilitates interaction between software and/or
hardware components” (Specification, para. 27).
The advertisement middleware described herein provides a
variety of functionalities associated with the display and
retrieval of advertisements. In particular, the middleware
relieves the widget or other application from having to
implement the middleware functionalities.
Specification, para. 27.
FIG. 3 is a block diagram illustrating a middleware component
301. Among other capabilities, middleware component 301
may coordinate communication, data, messages, and user
interaction between one or more content servers 315a and 315b
and one or more applications 305a, 305b and 305c executing on
the mobile terminal device.
Specification, para. 28.
Thus, in light of the Specification, the claim term “middleware” is
reasonably broadly construed as limited to “an entity that facilitates
interaction between software and/or hardware components” (Specification,
para. 27)
Appeal 2012-000624
Application 11/428,001

5
Turning now to Kernahan, there is no dispute that Kernahan does not
contain the term “middleware.” The question is whether “middleware” is
nevertheless described, expressly or inherently, in Kernahan notwithstanding
the term in not mentioned.
In that regard, the Examiner found that Kernahan describes
middleware via its disclosure of two functions: (1) connection to a server to
request ads, and (2) display of ads on a mobile device. Ans. 16 (citing
Kernaha, paras. 13, 168, Fig. 17). According to the Examiner, “[s]ince
Kernahan’s software (middleware) application performs the items above, the
Applicant’s arguments [that Kernahan does not describe middleware] are not
persuasive.” Ans. 16.
The difficulty with the Examiner’s reasoning is that it is not
necessarily the case that middleware is required to perform said functions.
Albeit the functions that Kernahan describes may be performed via
middleware, “middleware” as that claim term is reasonably broadly
construed is not necessarily required. “Inherent anticipation requires that the
missing descriptive material ‘necessarily present,’ not merely probably or
possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp.,
295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999) (citation omitted)). “The mere fact that a certain
thing may result from a given set of circumstances is not sufficient [to
establish inherency.]” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
(emphasis added).
Because Kernahan does not describe the claim limitation
“middleware” as that term is reasonably broadly construed, a prima facie
Appeal 2012-000624
Application 11/428,001

6
case of anticipation has not been made out in the first instance by a
preponderance of the evidence. Accordingly, we do not sustain the rejection
of claims 1, 9, 14, 24, 28, 31 and the claims dependent thereon.
As to claim 19 and the claims dependent thereon, we sustain the
rejection because we do not see that the Appellant has adequately challenged
the rejection. Claim 19 has a much broader scope than claim 1. The Briefs
address the rejection taking claim 1 as representative. But in that regard, the
main argument is that Kernahan does not describe “middleware,” a
limitation not included in claim 19. There is also an argument about the
claim limitation “parameters” (see App. Br. 13) but that, too, is not a
limitation included in claim 19. Because the Examiner’s rejection as to
claim 19 and claims 20–23 dependent thereon are not adequately addressed,
we sustain the rejection of claims 1923.

The rejection of claims 25, 29, and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Kernahan and Tamayo.
We do not sustain the rejection of claims 25, 29, and 32 for the
reasons discussed above in that we do not sustain the rejection under § 102
of independent claims 24, 28, and 31, on which they depend, respectively.
Namely, they include the “middleware” limitation said to be described in
Kernahan which, when “middleware” is reasonably broadly construed, the
preponderance of the evidence does not support it.

CONCLUSIONS
The rejection of claims 1–18, 24, 26–28, 30, 31, and 33 under
35 U.S.C. § 102(b) as being anticipated by Kernahan is not sustained.
Appeal 2012-000624
Application 11/428,001

7
The rejection of claims 19–23 under 35 U.S.C. § 102(b) as being
anticipated by Kernahan is sustained.
The rejection of claims 25, 29, and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Kernahan and Tamayo is not sustained.

DECISION
The decision of the Examiner to reject claims 1–33 is affirmed-in-
part.
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-IN-PART
llw