Ex Parte KUO et alDownload PDFPatent Trial and Appeal BoardMay 18, 201612641774 (P.T.A.B. May. 18, 2016) Copy Citation 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. 2 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. 3 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 4 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 5 Copy with citationCopy as parenthetical citation