Ex Parte Lim et al

Board of Patent Appeals and Interferences

Mar 31, 2011

11091264 (B.P.A.I. Mar. 31, 2011)

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.
11/091,264 03/28/2005 Han-Na Lim 678-1951 3296
66547 7590 03/31/2011
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
AJIBADE AKONAI, OLUMIDE
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
03/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAN-NA LIM, JONG-HYO LEE, UN-TAEK LIM,
SUNG-JIN PARK, KI-HO JUNG, JU-YEON SONG,
and JUN-HWAN KIM
____________

Appeal 2009-009280
Application 11/091,264
Technology Center 2600
____________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009280
Application 11/091,264

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-40, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “a method and system for enabling a
third generation (3G) mobile equipment to subscribe to a digital
broadcasting service and receive the digital broadcasting service by using
information about the mobile equipment’s subscription to a 3G mobile
communication network” (Spec. 1:16-19). Claim 1, which is illustrative of
the invention, reads as follows:
1. A method of subscribing to a digital broadcasting
service using mobile subscription information associated with
subscription to a mobile communication network, comprising
the steps of:
transmitting a subscription request message from the
mobile communication network to a digital broadcasting system
(DBS), upon request of a user through mobile equipment, the
subscription request message containing mobile subscription
information of the user required for subscription to the digital
broadcasting service;
receiving from the DBS broadcasting reception
information required for the mobile equipment to receive the
digital broadcasting service; and
setting the broadcasting reception information at the
mobile equipment so that the user can receive the digital
broadcasting service, notifying the mobile equipment of the
digital broadcasting subscription approval and receiving the
digital broadcasting service according to the broadcasting
reception information at the mobile equipment.
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The Examiner relies on the following prior art in rejecting the claims:
Aaltonen US 2002/0023264 A1 Feb. 21, 2002
Lipsanen WO 03/045064 A1 May 30, 2003
Kopra WO 03/090484 A1 Oct. 30, 2003
Sirén US 6,763,236 B2 Jul. 13, 2004
Lee US 2004/0185869 A1 Sep. 23, 2004
Reidelsturz US 2005/0136884 A1 Jun. 23, 2005
Kallio US 7,050,789 B2 May 23, 2006
Claims 1-7, 12-21, and 25-27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lipsanen in view of Sirén.
Claims 28, 29, and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Reidelsturz.
Claims 8, 9, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Sirén, and further in view of Lee.
Claims 30, 38, and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Reidelsturz, and further in view of
Sirén.
Claims 10, 11, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Sirén, and further in view of Kallio.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Reidelsturz, and further in view of
Aaltonen.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Reidelsturz, and further in view of
Lee.
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lipsanen in view of Reidelsturz, and further in view of
Kopra .
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Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lipsanen in view of Reidelsturz, and further in view of Kallio.
Rather than repeat the arguments here, we make reference to the Brief
(filed Sep. 3, 2008) and the Answer (mailed Nov. 10, 2008) for the
respective positions of Appellants and the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Appellants’ arguments for the patentability of claims 2-40 rely on or
repeat arguments made for the patentability of claim 1 (Br. 11, 13-15).
Therefore, we select claim 1 as the representative claim, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the Examiner has not established a prima
facie case of obviousness (Br. 10), presenting the following issues:
1. Does Lipsanen, in view of Sirén, teach or suggest “transmitting
a subscription request message from the mobile communication network to a
digital broadcasting system (DBS), upon request of a user through mobile
equipment, the subscription request message containing mobile subscription
information of the user required for subscription to the digital broadcasting
service” (hereinafter “transmitting step”), as recited in claim 1 (see Br. 6)?
2. Does Lipsanen teach or suggest “notifying the mobile
equipment of the digital broadcasting subscription approval” (hereinafter
“notifying step”), as recited in claim 1 (see Br. 6)?

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FINDINGS OF FACT (FF)
Lipsanen
1. Lipsanen discloses a request to provide broadcast parameters
that is sent to a Broadcast server 130 by a Telecom server 120 upon receipt
by the Telecom server 120 of a “get n” message from a terminal browser
associated with a mobile terminal 100 (Lipsanen 8:8-12; Fig. 1).
2. Lipsanen discloses that all requests for broadcast services are
routed through the telecom network and are kept track of by a billing server
associated with the telecom network (Lipsanen 11:1-3).
3. Lipsanen discloses that the Broadcast server 130 returns the
broadcast parameters to the Telecom (i.e., Portal) server 120 and the
Telecom Server 120 sends the broadcast parameters to the mobile terminal
100 to enable the mobile terminal to set its broadcast receiver to receive
service (Lipsanen 8:12-28, 9:18–11:9; Figs. 1, 3).
Sirén
4. Sirén discloses a service request SR1 sent by a mobile node
MN1 which comprises four fields, including a field F1 indicating the sender
and the destination of the service request and a priority level for indicating
basic and other services (col. 9, ll. 8-13). Sirén further discloses that a field
F3 is or indicates a user service profile (col. 9, ll. 16-18).
Appellants’ Specification
5. Appellants’ Specification discloses that a Subscription Agent
Server (SAS) 23 is located in the Digital Broadcasting Service (DBS) 20
(Fig. 1; Spec. 7:19-20) and that the SAS processes digital broadcasting
subscription requests. The digital broadcasting subscription requests are
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received from a user equipment (UE) 11, 13, 15 by way of the mobile
communications network 30 and the internet 40 (Fig. 1; Spec. 7:27-31).
6. Appellants’ Specification discloses a Digital Broadcasting
System-Call Session Control Function (DBS-CSCF) that forwards the
broadcasting reception information to the UE in order to notify the user
equipment that the digital broadcasting subscription has been approved
(Spec. 10:7-9).

ANALYSIS
“Transmitting Step” limitation
Appellants contend that Lipsanen’s transmission of a “get n” message
does not relate to a subscription request message because it does not include
information required for a subscription (Br. 8). Appellants additionally
contend that Lipsanen does not teach generating a subscription request
message in a mobile network (Br. 9-10). Appellants further contend that
Sirén teaches away from Appellants’ invention because Sirén teaches that a
mobile unit sends a subscription request with subscription information while
in the claimed invention the user is “relieved of providing his user personal
information to receive a digital broadcasting service . . . in real time/on-line”
since the “mobile communication network already has this information and
sends it for the user” (Br. 9).
The Examiner responds that Lipsanen, as modified by Sirén, discloses
(i.e., teaches or suggests) the transmitting step, and that Sirén does not teach
away from the claimed invention (Ans. 26). We agree with the Examiner.
Sirén discloses that a subscription request message containing mobile
subscription information of the user required for subscription to the digital
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broadcasting service in known in the art (FF 4). Therefore, Appellants’
argument that Lipsanen’s “get n” message lacks information required for a
subscription is unpersuasive as it attacks the disclosure of Lipsanen
individually, rather than addressing the combination with Sirén described by
the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants’ remaining arguments rely on limitations not found in the
claim. The preamble of the claim recites that the “mobile subscription
information [is] associated with subscription to a mobile communication
network” (emphasis added), but the claim includes no limitation as to where
the mobile subscription information is generated or stored. Further, the
claim includes no limitation as to where a subscription request is generated,
reciting only that it is transmitted from the mobile communication network
to a DBS. Contrary to Appellants’ contention (Br. 9-10), the claim does not
require that the request be generated by the mobile communication network.
Accordingly, nothing in the claim relieves the user from providing his
personal subscription information, as urged by Appellants (Br. 9). For
example, nothing in the claim precludes the mobile subscription information
from being included by the mobile equipment in the request of the user
through the mobile equipment, with the entire request of the user, including
the mobile subscription information, being relayed (i.e., transmitted) to the
DBS by the mobile communication network.
We find, as did the Examiner, that Lipsanen discloses transmitting a
subscription request message from the mobile communication network to a
DBS upon request of a user through mobile equipment (FF 1) and that Sirén
discloses that a subscription request message containing mobile subscription
information of the user required for subscription to the digital broadcasting
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service in known in the art (FF 4). We further find that nothing in Sirén
teaches away from including the mobile subscription information in a
subscription request message transmitted from the mobile communication
network to a DBS. Therefore, we conclude that it would be obvious to one
skilled in the art to combine Sirén’s user subscription information with
Lipsanen’s subscription request message, thereby meeting all of the
limitations recited in the transmitting step recited in claim 1.
For emphasis only, we note that the principal relevant difference
between Appellants’ disclosed invention and Lipsanen is that Appellants
disclose performing subscription management functions at a server in the
DBS (FF 5), while Lipsanen performs subscription management functions at
a server in the mobile communication network (FF 2). It would have been
obvious to a person skilled in the art to modify the server of Lipsanen such
that the server managing the subscription is provided with the necessary user
information, and Sirén teaches that it is known to include that information in
a subscription request (FF 4). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
“Notifying Step” limitation
The Examiner finds that Lipsanen’s disclosure of “the mobile terminal
receiving service parameters from the telecom server 120” (Ans. 5) meets
the claimed notifying step. Appellants contend that “receiving service
parameters from the telecom server does not notify the mobile equipment of
the digital broadcast approval” (Br. 8). The Examiner responds by pointing
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out (Ans. 25) that Appellants’ Specification expressly states that the
notifying step occurs by the DBS-CSCF delivering broadcasting reception
information to the UE (see FF 6).
We agree with the Examiner. The Examiner gives the claims their
broadest reasonable meaning, consistent with the Specification, see In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In view of the explicit
statement in Appellants’ Specification that the UE is notified of subscription
approval by the delivery of broadcasting reception information (FF 6), we
find that Lipsanen’s forwarding of broadcast reception information to a UE
(Lipsanen’s “mobile terminal”) (FF 3) meets the notifying step.
By citing to MPEP §§ 2183-2184, Appellants contend (Br. 7-8) that
the Examiner improperly found the disclosure of Lipsanen to be
“equivalent” to Appellants’ disclosure. We do not find that the Examiner
has alleged equivalence. Rather, the Examiner has correctly found that
Lipsanen discloses the notifying step as recited in the claim when read
consistently with the Specification, see Morris, 127 F.3d at 1054.
Furthermore, the cited portions of the MPEP relate to the examination of
claims in the means- or step-plus-function form permitted by 35 U.S.C. §
112, sixth paragraph. We note that Appellants have not identified any part
of the claim as a means- or step-plus-function element (Br. 2-3) (see 37
C.F.R. § 41.37(c)(1)(v)). Therefore, the contention is unpersuasive for this
additional reason.
For emphasis only, we note that the claim contains neither an
“approving” step nor any limitation as to when, where, or how a subscription
approval originates. Lipsanen discloses the use of a billing server through
which requests for broadcast services (i.e., subscription requests) are routed
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(FF 2). We find that implicit in the process of billing for access to the
subscription broadcast service is subscription request approval, and that one
skilled in the art would understand that transmission of the broadcast
parameters to the user equipment notifies the user equipment that it is
authorized to receive the broadcast (i.e., the subscription is approved).

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claim 1. Accordingly, the rejections of claims 1-40 are sustained.

ORDER
The decision of the Examiner rejecting claims 1-40 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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