Ex Parte KUO et al

Patent Trial and Appeal Board

May 18, 2016

12641774 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/641,774 12/18/2009
83719 7590 05/18/2016
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Richard KUO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009-0933 (40147/16801) 1257
EXAMINER
HUSSAIN, TAUQIR
ART UNIT PAPER NUMBER
2446
MAILDATE DELIVERY MODE
05/18/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD KUO, JAMES FAN, PATRICK MARTIN, and
TIMOTHY SPERIER
Appeal2014-007072
Application 12/641,774
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007072
Application 12/641,774
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5-19, and 21. Claims 3, 4, and 20 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellants' claimed invention is directed to a "network component
[that comprises] a device analyzing module and a functionality analyzing
module" (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A network component, comprising:
a processor; and
a memory having a set of instructions, which, when
executed by the processor performs operations comprising:
analyzing first attributes related to a mobile device,
the first attributes being associated with a generic device
capabilities profile;
analyzing second attributes related to the mobile
device, the second attributes being associated with a device-
specific device capabilities profile; and
determining, based on the analyses of the generic
device capabilities profile and the device-specific device
capabilities profile, whether the mobile device is operable to
execute a requested service.
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Appeal2014-007072
Application 12/641,774
REFERENCES and the REJECTIONS
Claims 1, 2, 5-9, 11-19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chai (US 2009/0111467 Al; Apr. 30,
2009) in view of Flanagin (US 6,272,545 Bl; Aug. 7, 2001). Final Act. 2.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chai, Flanagin, and Singhal (US 2009/0276303 Al; Nov.
5, 2009). Final Act. 6.
ISSUE
The pivotal issue is whether the Examiner erred in finding the
combination of Chai and Flanagin discloses or suggests the limitations of
"analyzing second attributes related to the mobile device, the second
attributes being associated with a device-specific device capabilities profile"
and "determining, based on the analyses of the generic device capabilities
profile and the device-specific device capabilities profile, whether the
mobile device is operable to execute a requested service," as recited in claim
1.
ANALYSIS
Appellants argue that after the user customizes Flanagin' s default
settings, the generic profile is gone and only the customized version remains
(App. Br. 5). Appellants contend "[n]o scenario exists where both versions
of the profile of Flanagin (e.g., the default version and the customized
version) are analyzed to make any type of determination" (App. Br. 5). We
note that Appellants' originally filed disclosure makes no reference to either
a "generic" or "device-specific" device capabilities profile.
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Appeal2014-007072
Application 12/641,774
We are not persuaded by Appellants' arguments. Appellants attack
Flanagin individually and fail to consider the combined teachings of Chai
and Flanagin. "[O]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCP A 1981 ). Each of Chai
and Flanagin teaches a device profile which is analyzed and used to
determine device operations. The Examiner finds, and we agree, that "Chai
explicitly discloses a device generic profile" in which "device capability is
updated to encounter new services offered around the network providers"
(Ans. 2, citing Chai i-fi-120-21 ). The Examiner additionally finds, and we
agree, that Flanagin' s profile manager module captures user preferences for
mobile device services, "which is clearly the additional or second attributes
related to enhance the device-specific device capabilities" (Ans. 3).
We find that it would be within the technical grasp of a skilled artisan
to analyze both a device generic profile and a device specific profile, and
determine, based on both analyses, whether a device is operable to execute a
requested service. In an obviousness analysis, it is not necessary to find
precise teachings directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton." Id. at 421.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and independent claims 11 and 21 commensurate in scope, and
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Appeal2014-007072
Application 12/641,774
dependent claims 2, 5-10, and 12-19 not separately argued with
particularity.
CONCLUSION
The Examiner did not err in finding the combination of Chai and
Flanagin discloses or suggests the limitations of "analyzing second attributes
related to the mobile device, the second attributes being associated with a
device-specific device capabilities profile" and "determining, based on the
analyses of the generic device capabilities profile and the device-specific
device capabilities profile, whether the mobile device is operable to execute
a requested service," as recited in claim 1.
DECISION
The Examiner's decision rejecting claims 1, 2, 5-19, and 21 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)(l )(iv).
AFFIRMED
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