Ex Parte Kopra et al

Patent Trial and Appeal Board

Oct 27, 2014

10511797 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONI KOPRA, MIKKO MAKIPAA, and AKSELI ANTTILA
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Appeal 2012-005097
Application 10/511,797
Technology Center 2400
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Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–10, 21–26, and 28–34. Claims 11–20 and 27
have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify Nokia Corporation as the real party in interest.
App. Br. 1.
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STATEMENT OF THE CASE
The claimed invention relates to “a method and a system of delivering
objects relating to a broadcast media stream to a user terminal.” See Spec.
1:4–5.
Independent claim 1 is representative. It reads as follows:
1. A method comprising facilitating a processing of and/or
processing (1) data and/or (2) information and/or (3) at least
one signal, the (1) data and/or (2) information and/or (3) at least
one signal based, at least in part, on the following:
an object identification of an object and a widget received
from a broadcast system, the object being associated and
synchronized to a broadcast media stream broadcast by
the broadcast system,
a determination to cause, at least in part, a presentation of
the object identification and the widget in
synchronization with the media stream in a user terminal,
a determination to cause, at least in part, a transmission of, if
a user requests a delivery of the object based on the
object identification, a transaction signal with the object
identification from the user terminal to a database of at
least one object through a mobile radio system by
activating the widget, and
the object of the object identification received from the
database through the mobile radio system.

Claims 1–4, 6–10, 21, 22, 24–26, 28–30, and 32–34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Ferris (US 2006/0288374 A1; published Dec. 21, 2006) and Burgess
(US 2004/0014454 A1; published Jan. 22, 2004). Ans. 4–14.
Claims 5, 23, and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ferris, Burgess, and ETS 300 401 -
"Radio Broadcasting Systems; Digital Audio Broadcasting (DAB) to
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Mobile, Portable, and Fixed Receivers,” 2nd Edition (“ETS 300 401”).
Ans. 14–15.

ANALYSIS
The Examiner finds Ferris teaches all elements recited in claims 1, 21,
and 29, with the exception of the disclosure of a database “of at least one
object,” as recited in claim 1, or an “object . . . received from the database
through the mobile radio system,” as recited in claims 1, 21, and 29. Ans.
4–6, 12, 13. The Examiner further finds, however, that Burgess teaches
those elements not taught by Ferris. Ans. 7.
Appellants argue “[t]he combination of Burgess et al. with Ferris et
al. is improper because Burgess et al. teaches away from such a
combination.” App. Br. 7. According to Appellants,
Using a mobile phone in place of Ferris et al.’s second
set 3, handset remote control device 502, adaptor unit 701,
portable device 801 or portable device 804, as alleged in the
Examiner [sic] to support the rejection, would require a
particular type of handset, specific knowledge of an interface
and the explicit activation or subscription by a user of the WAP
or SMS based systems that Burgess et al. explicitly teaches
away from to support the PADUID metadata, the PAD display
data and the serialized PAD software objects needed in Ferris
et al. In other words, Ferris et al.’s disclosure relied upon in
rejecting the features of claims 1 is more complex than merely a
string of numbers and would involve the elements that Burgess
et al.’s system teaches away from to implement in a mobile
phone. Thus, the combination of Burgess et al. with Ferris et
al. to remedy Ferris et al.’s deficiencies is improper because
one of ordinary skill in the art would have considered Burgess
et al.’s teaching as teaching away from such a combination.
App. Br. 8.
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We disagree with Appellants’ argument. As an initial matter, the
Examiner did not suggest “using a mobile phone in place of Ferris et al.’s
second set 3,” etc., except in responding to Appellants’ arguments raised in
the Appeal Brief. See Ans. 21. To the contrary, the Examiner finds, and we
agree, that “[o]ne of ordinary skill in the art would have realized the handset
device described by Ferris . . . could be easily modified to receive a
requested digital product (e.g., text message, music sound clip, etc.) or
service via the same channel.” Id. at 7–8 (emphasis added); see also id. at
23. Regardless of how the references are combined, however, we do not
find that Burgess teaches away from the combination with Ferris. As
explained by the Examiner, the cited portion of Burgess explicitly discloses,
for example, SMS and WAP as “examples of delivery techniques that may
be used.” Burgess ¶ 22. In view of such teaching, we discern no error in the
Examiner’s finding, in response to Appellants’ argument, that “using a
mobile phone in place of Ferris et al.'s second set 3 . . . suggests use of the
WAP or SMS based system that Burgess et al teaches to support the
PADUID metadata, the PAD display data and serialized PAD software
objects needed in Ferris et al.,” and “[t]herefore, Ferris and Burgess, both
references work in similar fashion to meet claimed limitations present in
claim 1 and the combination is proper.” Ans. 21.2

2 We are unpersuaded by Appellants’ Reply Brief arguments that “the cited
portions of Burgess et al. are associated with the delivery techniques, not the
requesting techniques”; “[r]egardless of how the delivery is performed, the
request is initiated by dialing digits associated with the advertising content”;
and “[t]hat Burgess et al. may teach that delivery of the information may be
based on SMS or electronic mail is irrelevant to how the information is
requested.” Reply Br. 4, 5. The Examiner’s findings do not rely on Burgess
for teaching of “requesting techniques” or “how the information is
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Appellants further argue that there would have been no motivation to
combine Ferris and Burgess and that the obviousness rejection is
“necessarily based on impermissible hindsight reasoning.” App. Br. 9.
According to Appellants, for example, Ferris’s devices “cannot accept text
messages, music sound clips, etc. because these devices are nothing more
than a remote control” and “merely carry out the function of showing
information regarding physical products illustrated or discussed in TV or
radio ads that a user can buy.” Id. at 8. In contrast, Appellants argue, “the
objects disclosed in Burgess et al. upon which the Examiner alleged
constitute the claimed objects are allegedly received by, for example, a
mobile phone and are allegedly used by the mobile phone.” Id. at 9 (internal
citations omitted).
We again disagree. The Examiner has articulated reasoning for the
combination with rational underpinning drawn from the cited references to
support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007). In particular, the Examiner finds, for
example:
It would have been obvious to one ordinarily skilled in
the art to apply to the technique of receiving a request for,
fulfilling, and delivering an advertised digital product or service
as disclosed by Burgess to improve the respective capabilities
and components of the central processing station (e.g.,
interaction processor, PAD database, gateway), radio service
providers, and handset device of Ferris for the predictable result
of providing a means for associating a user request with the

requested”; rather, the Examiner cited Burgess for its disclosure of “a
database of at least one object” and an “object . . . received from the
database . . . through the mobile radio system,” having found all other
elements of claims 1, 21, and 29 are taught by Ferris. Ans. 4–7, 12, 13.
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requested product or service and delivering the user requested
product or service to the user's receiving apparatus.
Ans. 7; see also id. at 20–21, 23.
Moreover, Burgess’s disclosure is not limited to objects that can be
“received by . . . a mobile phone” or “used by the mobile phone,” as
Appellants suggest. Cf. Reply Br. 5–6. For example, the cited portion of
that reference discloses, among other things, that Burgess’s invention
provides a system and method for a telephone user to, for example, “reprint
an article or other publication” or “request and authorize a purchase of a
magazine subscription.” See Burgess ¶ 3.3 Accordingly, we are
unpersuaded of error by Appellants’ argument that:
because Ferris et al.’s second set 3, handset remote control
device 502, adaptor unit 701, portable device 801 and portable
device 804 are unrelated to the products and services illustrated
or advertised in TV or radio ads, there can be no motivation to
modify Ferris et al. to be able to receive objects that are
incompatible with such devices.
Reply Br. 6.
On the record before us, therefore, we do not find error in the
Examiner’s conclusion that claims 1, 21, and 29 are unpatentable under 35
U.S.C. § 103(a) over Ferris and Burgess. Accordingly, we sustain the
Examiner’s rejection of claims 1, 21, and 29, as well as the Examiner’s

3 See also Burgess ¶ 30 (teaching, for example, that “an extension of the
disclosed technology enables the remote control of cable television set top
boxes to be used to enter digit strings,” and that using such an embodiment,
“a user watching television could respond to an advertisement by simply
pushing keys on their remote control, and the set top box would send the
request message upstream to the cable company, where a server operates to
provide the product information to the user, for example through an e-mail
message”).
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rejections of dependent claims 2–10, 22–26, 28, and 30–34, for which
Appellants rely on their arguments concerning claims 1, 21, and 29 (see
App. Br. 9–10).

DECISION
The rejection of claims 1–4, 6–10, 21, 22, 24–26, 28–30, and 32–34
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Ferris and Burgess is affirmed. 4
The rejection of claims 5, 23, and 31 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ferris, Burgess, and ETS 300
401 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

tj

4 In the event of further prosecution of claims 29–34 or claims similarly
directed to a “computer readable storage medium,” the Examiner should
consider whether those claims encompass nonstatutory transitory media such
as signals sent over optical or electronic communication links. Signals are
not patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) and MPEP § 2106(I) (9th ed., Rev. 11, Mar. 2014).
Claims that are so broad that they read on nonstatutory as well as statutory
subject matter are unpatentable.