Ex Parte Lin

Board of Patent Appeals and Interferences

Feb 27, 2008

09989255 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MING-HUNG LIN
____________________

Appeal 2007-3259
Application 09/989,255
Technology Center 2600
____________________

Decided: February 27, 2008
____________________

Before: ANITA PELLMAN GROSS, JOHN A. JEFFERY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

Opinion concurring-in-part and dissenting-in-part filed by Administrative
Patent Judge JEFFERY.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-6, 8, 9, 12-16, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellant discloses an arrangement whereby an auxiliary
communication session is established with an auxiliary rendering device by
a mobile device based on a primary communication session between the
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mobile device and a content server through a transcoding proxy. The
application also focuses on mobile devices and auxiliary rendering devices
that permit such an arrangement. (Specification 1: 1-10).
Independent claim 1 is representative of many of the claims and reads
as follows:
1. A mobile device, comprising: primary communication means
for establishing a primary communication session via a
transcoding proxy with a content server; and auxiliary
communication means for establishing an auxiliary
communication session with an auxiliary rendering device, the
auxiliary communication session including content of the
primary communication session that is adapted to the
capabilities of the auxiliary rendering device, wherein the
auxiliary communication means are arranged for receiving an
assistance message from the auxiliary rendering device, the
assistance message comprising information on the rendering
capabilities of the auxiliary rendering device.

Independent claim 8 is also representative of some of the claims, reads
as follows:
8. An auxiliary rendering device, comprising: mobile device
communication means for establishing an auxiliary
communication session with a mobile device; and rendering
means for rendering content received in the auxiliary
communication session, wherein the mobile device
communication means are arranged for transmitting an
assistance message comprising information on the rendering
capabilities of an auxiliary rendering device to the mobile
device.

The Examiner relies on the following prior art references to show
unpatentability:
Bruckert US 5,390,339 Feb. 14, 1995
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Tryding US 5,880,732 Mar. 9, 1999
Broderick US 5,995,829 Nov. 30, 1999
Otsuka US 6,330,448 B1 Dec. 11, 2001
Baranowski US 6,473,630 B1 Oct. 29, 2002
Schramm US 6,542,742 B2 Apr. 1, 2003
Mäkipää US 6,556,217 B1 Apr. 29, 2003
Erekson US 6,622,018 B1 Sep. 16, 2003
Ranta US 6,775,558 B1 Aug. 10, 2004

The Examiner rejected, under 35 U.S.C. § 103(a):
claims 1-4 as unpatentable over Tryding, Mäkipää and Erekson,
claim 5 as unpatentable over Tryding, Mäkipää, Erekson and Ranta,
claims 6 and 15 as unpatentable over Tryding, Mäkipää, Erekson and
Otsuka,
claims 8 and 9 as unpatentable over Tryding and Erekson,
claim 12 as unpatentable over Tryding, Mäkipää, Erekson and
Schramm,
claim 13 as unpatentable over Tryding, Mäkipää, Erekson and
Bruckert,
claim 14 as unpatentable over Tryding, Mäkipää, Erekson and
Broderick,
claim 16 as unpatentable over Tryding, Mäkipää, Erekson and
Baranowski, and
claims 18 as unpatentable over Tryding, Erekson and Baranowski.
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Claims 1-9, 12-16, 18, and 19 are pending in the instant application, where
claim 19 has been allowed, and claim 7 has been objected to as being
dependent on a rejected base claim.
We consider Appellant’s claims as standing or falling together in two
groups based on the distinct rejections and arguments presented by
Appellant, and we treat:
Claim 1 as a representative claim of Group I (claims 1-6 and 12-16);
and
Claim 8 as a representative claim of Group II (claims 8, 9, and 18).
See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the Examiner erred in indicating that the
claimed subject matter would have been obvious. More specifically,
Appellant argues that not all of the elements of the claims have been taught
or suggested by the cited prior art references. (Br. 4-8). The Examiner finds
that the functional language in the apparatus claim is not necessarily limiting
and all of the elements of claim 1 are found in the cited prior art references.
(Answer 17-18).
We affirm-in-part.
ISSUE
Has Appellant shown that the Examiner erred in finding claims 1-6, 8,
9, 12-16, and 18 obvious over the cited prior art references?

FINDINGS OF FACT
1. The Specification details the use of a transcoding proxy to facilitate
access to the rich content offered by various information services. This
occurs when the intended content contains something beyond the capability
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of the mobile device. The transcoding process typically involves actions
such as adjusting the presentation so it will fit on the small screen on the
mobile device, removing unnecessary elements such as audio for devices
that have no sound capabilities, scaling graphics to an appropriate size,
compressing data for transmission to the mobile device, converting from e.g.
HTML to WML. The Specification also discusses that given the smaller
size of display of the mobile device, the use of an auxiliary rending device
allows for presentation on a larger display, but the displayed data is limited
to that transcoded for the mobile device. (Specification 1: 1-10 and 20-28;
2:9-15).
2. Appellant discloses a system whereby an auxiliary communication
session is established with an auxiliary rendering device by a mobile device
based on a primary communication session between the mobile device and a
content server through a transcoding proxy. The auxiliary communication
session includes content that takes into account the rendering capabilities of
the auxiliary rendering device. (Specification 6:3-9:15; Fig. 1, elements
101-105, 110, 120, and 121).
3. Independent claim 1 recites, in part, “the auxiliary communication
session including content of the primary communication session that is
adapted to the capabilities of the auxiliary rendering device.” Independent
claim 8 recites, in part, “rendering means for rendering content received in
the auxiliary communication session.”
4. Tryding is directed to method and apparatus enabling the usage of a
remote display monitor for presenting display data from a mobile telephone.
The communications link between the mobile telephone and a receiver of a
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display monitor enables the transmission of numeric and textual data
intended to be displayed on a display associated with a mobile telephone on
the larger screen of the remote display monitor. The type of data presented
on the display monitor may be selectively programmed by a user. (Abstract;
col. 2, ll. 26-34; Fig. 1, elements 5, 10, 15, 20, 25, and 30).
5. Mäkipää discloses the pagination of information received from a
content provider so that it may be displayed on any type of user terminal
having any size screen and having different types of mechanisms for input of
information. The system has a pagination and terminal adaptation module
which calculates the space needed by elements to be displayed on a user
terminal. When sufficient space does not exist on the user terminal screen,
elements are resized to make them fit. The pagination and terminal
adaptation module accesses a database of user terminal profile information
to determine the characteristics of the user terminal as well as the screen
size. Using this system a user is able to access web site pages regardless of
the type of terminal being used and no matter how small the screen size is.
(Abstract; col. 6, ll. 45-51; Figs. 1 and 2, elements 10, 20, 30, and 90).
6. Erekson is directed to a system and method for controlling remote
devices over a wireless connection, including Bluetooth-enabled devices. In
one embodiment, the characteristics and capabilities of remote devices are
identified in a response to the hand-held computer system. In another
embodiment, the characteristics and capabilities of various types of devices
are stored in a database or lookup table in a memory unit of the hand-held
computer system and selected through an identifier received from the remote
device. (Abstract; col. 10, ll. 48-56).
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7. Ranta is directed to a system for establishing a local communication
connection between a terminal of a cellular radio system and an accessory
device on a clear radio channel, where that radio channel is preferably a
code channel of a CDMA system. The connection may be active all the time
when a terminal and an accessory device are near enough to each other so
that it is possible to establish a connection, or automatic activation of the
connection may result when either one of the devices has data to be
transmitted to the other device. (Abstract, col. 9, ll. 18-20).
8. Otsuka discloses that a global database is provided in each node in
a system for storing shared data for verification of authorized mobile stations
when accessing the network via a wireless cell-site station. A mobile station
monitors the strength of its downlink signal from a first cell-site station, and
if it falls below a threshold, the mobile station begins a scan across the
spectrum. If a strong signal is detected, it stops the scan and transmits a
handover request message to a second cell-site station transmitting that
strong signal. (Abstract; Fig. 3).
9. Schramm discloses a solution to the problem of cell selection, for
e.g. cell handover, in mobile telecommunication systems, and more
particularly to the problem of selecting the optimum cell among cells with
differing capabilities due to different air interface modes. The reference
discloses that an algorithm is used to determine, by monitoring, the
capabilities of the base station candidates, and selecting a handover
candidate based on the attributes and capabilities of the base station
candidates. (Abstract; Col. 5, l. 56-col. 6, l. 23; Fig. 3a).
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10. Bruckert discloses a radio communication system which has a
plurality of transceivers having known locations and at least one remote unit
communicating a signal to at least one of the plurality of transceivers. The
radio communication system selects a serving transceiver for the remote unit
by estimating the remote unit's location within the radio communication
system in response to collected signal characteristics measured by a set of
transceivers from the plurality of transceivers receiving the communicated
signal. (Col. 2, ll. 39-52).
11. Broderick is directed to a dual-mode wireless communications
system with network-programmable system preferences for specifying
system selection parameters for use by a mobile station. The system uses a
digital acquisition timer to determine the length of time that is allowed for
attempting to acquire the digital system before determining that no digital
service is available. (Abstract; col. 5, ll. 26-29).
12. Baranowski discloses a headset for wireless communicating with a
personal electronic device, such as a wireless phone, provides audio output
based on an audio signal from the personal electronic device. (Abstract).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellants to overcome the
prima facie case with argument and/or evidence. See Id.
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out
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precise teachings directed to the specific subject matter of the claim but can
take into account the inferences and the creative steps that a person of
ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1741 (2007).
The claims on appeal should not be confined to specific embodiments
described in the Specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc). During ex parte prosecution, claims must be
interpreted as broadly as their terms reasonably allow since applicants have
the power during the administrative process to amend the claims to avoid the
prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

ANALYSIS
With respect to the claims of Group I, Appellant argues that the
combination of Tryding, Mäkipää and Erekson fails to disclose that the
“auxiliary communication session [includes] content of the primary
communication session that is adapted to the capabilities of the auxiliary
rendering device.” Appellant points out that Tryding discloses only that
numeric and textual data is sent from the mobile telephone to the remote
display monitor. (Finding of Fact 4). The Examiner responds that the
pagination module of Mäkipää teaches this aspect but we do not agree.
(Answer 17).
While we agree that Mäkipää teaches the transcoding of data so that it
can be properly rendered on a user terminal, (Finding of Fact 5), we do not
agree that the content server of Mäkipää would supply data adapted to a user
terminal and some auxiliary rendering device that could be attached to the
user terminal. Thus, while content would be paginated so that it appeared
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correctly on the user terminal, there is no teaching of some further
pagination that would be performed on an attached auxiliary rendering
device. In other words, in Mäkipää, the transcoding is specific to the user
terminal being served and not to some subsequent rendering device.
And while the Examiner identifies that Erekson teaches the sending of
capabilities of an auxiliary rendering device to a controlling device, (Finding
of Fact 6), we can find no teaching or suggestion that such capabilities be
forwarded on to some other device, such as a content server. Without such a
teaching of the content servers being provided with the knowledge of the
capabilities of the auxiliary rendering device, such knowledge would remain
solely with the mobile device. In other words, if the content server does not
know about the capabilities of the auxiliary rendering device, it cannot
supply content of the primary communication that is adapted to those
capabilities.
As such, we find the combination of Tryding, Mäkipää, and Erekson
would have allowed for an auxiliary rendering device to supply its
capabilities to a mobile device and to have a session that is transcoded for
the mobile device from a content server to be displayed on the auxiliary
device. However, we find no disclosure that would teach or suggest an
“auxiliary communication session including content of the primary
communication session that is adapted to the capabilities of the auxiliary
rendering device.”1 Therefore, we find the rejection of claim 1 over

Footnotes continued on the next page.
1 The Dissent has a differing interpretation of the language of claim 1,
wherein the Dissent takes the position that if the data sent to the mobile
phone or a portion thereof is capable of being rendered on the auxiliary
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Tryding, Mäkipää, and Erekson to be made in error. Additionally, we do not
find the other cited prior art references to cure the deficiencies of the
rejection of claim 1. As such, we find the rejections of the Group I claims to
have been made in error.
With respect to the claims of Group II, we agree with the Examiner
that all of the elements of representative claim 8 are taught or suggested by
Tryding and Erekson. As opposed to the above analysis, claim 8 does not
recite that the content of the primary communication session is adapted to
the capabilities of the auxiliary rendering device, but merely recites that an
auxiliary communication session is established and content received in the
auxiliary communication session is rendered by the auxiliary rendering
device. (Finding of Fact 3). This aspect of claim 8 is taught by Tryding.
(Finding of Fact 4). The remainder of claim 8 recites that the rendering
capabilities of the auxiliary rendering device are sent to the mobile device,
which is taught by Erekson. (Finding of Fact 6). Since we find that the
Examiner properly combined Tryding and Erekson in the rejection of claims
8 and 9, we affirm the rejection of the claims of Group II.
Additionally, while the Appellant has argued that the arguments made
against the rejection of claim 1 also apply to the rejection of claim 8, (Br. 7),
we do not find the arguments to be apt, given the differences in the claim
language found in claims 1 and 8. (Finding of Fact 3). Appellant also
addresses the rejections of claims 5, 6, 9, 12-16, and 18 by indicating that
rendering device, the limitation of claim 1 is met. We find the adaptation to
the capabilities of the auxiliary rendering device to be an explicit
requirement of claim 1.
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those rejections should be reversed based on the dependencies of those
claims. We reverse the rejections of claims 5, 6, and 12-16, as those claims
depend from claim 1, and affirm the rejection of claims 9 and 18, as those
claims depend from claim 8.

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-6 and 12-16 under 35 U.S.C. § 103(a). We also conclude
that Appellant has not shown that the Examiner erred in rejecting claims 8,
9, and 18 under 35 U.S.C. § 103(a), and we affirm the Examiner’s rejection
of those claims.

DECISION
The rejection decision of the Examiner with respect to the rejection of
claims 1-6 and 12-16 as obvious over the cited prior art is reversed. The
decision of the Examiner with respect to the rejection of claims 8, 9, and 18
under 35 U.S.C. § 103 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).

AFFIRMED-IN-PART

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JEFFERY, Administrative Patent Judge, CONCURRING-IN-PART,
DISSENTING-IN-PART:

I concur with the majority’s affirmance of the Examiner’s rejections
of the claims of Group II, namely claims 8, 9, and 18 (Maj. Op. 11-12). But
I respectfully dissent from the majority’s reversal of the Examiner’s
rejection of representative claim 1 of Group I. For the reasons that follow, I
would affirm the Examiner’s rejection of representative claim 1.
Tryding discloses a mobile telephone 10 that communicates with two
distinct devices via two corresponding communication links: (1) a downlink
30 that facilitates communication between a base transceiver station 25 and
the mobile telephone, and (2) a communications link 5 that facilitates
communication between the mobile telephone and a display monitor 15
(Tryding, col. 2, ll. 27-51; Fig. 1).
The Examiner finds that these distinct communication links in
Tryding correspond to the recited primary and auxiliary communication
means for establishing primary and auxiliary communications sessions
respectively (Ans. 4, 17). These findings are undisputed.
The key dispute is whether the auxiliary communication session
includes content of the primary communication session that is adapted to the
capabilities of the auxiliary rendering device. The majority finds that this
limitation is not taught nor suggested by collective teachings of Tryding,
Mäkipää, and Erekson (Maj. Op. 10). But given the broad scope of this
limitation, I find that skilled artisans need look no further than the disclosure
of Tryding for this teaching.
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In Tryding, content is sent from the base transceiver station 25 to the
mobile telephone (i.e., the “primary communication session”)2 in the form
of data and messages which may include alphanumeric data (Tryding, col. 2,
ll. 30-35). Due to the small size of the mobile telephone’s display 35, this
received data may be difficult to view (id., col. 2, ll. 36-38; col. 1, ll. 23-25).
Therefore, the data is sent from the mobile telephone to an external display
monitor 15 with a more easily readable visual display (i.e., via an “auxiliary
communication session”) (id., col. 1, ll. 39-53; Abstract).
Thus, the content (i.e., data and messages) sent from base transceiver
station 25 to the mobile telephone (i.e., the “primary communication
session”) is ultimately displayed on the display monitor 15 via the
communications link 5 (the “auxiliary communication session”). That the
content is in the form of displayable (and therefore viewable) data and
messages (e.g., numeric and textual data) means that it is “adapted to the
capabilities” of the auxiliary rendering device (the display monitor 15), at
least with respect to the monitor’s display capabilities. Indeed, if the content
received by the mobile telephone was not displayable (and therefore not

2 Tryding does not indicate that the primary communication session (i.e.,
between the base transceiver station and the mobile telephone) is via a
transcoding proxy with a content server. Based on this record, however, I
see no reason why the data and messages sent from the base transceiver
station could not originate from a content server with a transcoding proxy
such as that shown by Mäkipää. In my view, coupling the base transceiver
station in Tryding to a content server (e.g., on a network) would have been
well within the level of skilled artisans and tantamount to the predictable use
of prior art elements according to their established functions. See KSR Int’l
v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).
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viewable) content, there would be no need to send this data to the external
display monitor at all.
Simply put, the content sent by the base transceiver station to the
mobile telephone is displayable numeric and textual content. This content is
“adapted to the capabilities” of the auxiliary rendering device (the display
monitor) since the monitor is likewise capable of displaying numeric and
textual content. Even if the mobile telephone transforms the form of the
received data into display signals compatible with the display monitor (e.g.,
IR or RF signals),3 the underlying content essentially remains the same
irrespective of whether it is displayed on the mobile telephone or the display
monitor.
Furthermore, even if the content sent from the base transceiver station
was intended to be displayed only on the mobile telephone, the fact that this
content is likewise displayable (and therefore viewable) on other rendering
devices means that the content is nonetheless “adapted to the capabilities” of
the auxiliary rendering device.4

Footnotes continued on the next page.
3 See Tryding, at col. 2, ll. 52-61 (noting that the communications link 5 may
be an infrared (IR) or RF communications link); see also col. 3, ll. 12-16
(noting that display monitor communications function 40 provides the
physical parameters, bit rates, and emitting levels necessary the generate the
communications link with standard television set parameters).
4 The majority asserts that “[i]f the content server does not know about the
capabilities of the auxiliary rendering device, it cannot supply content of the
primary communication that is adapted to those capabilities” (Maj. Op. 10;
emphasis added). But claim 1 does not require the source of the content in
the primary communication session (e.g., the content servers) have
“knowledge” of the capabilities of the auxiliary rendering device. All the
claim requires is that the transmitted content be adapted to the capabilities of
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That said, if the content sent by the base transceiver station were
another type of content that was not displayable on a screen (e.g., audio),
then we would have a different situation. In that case, I could not say
whether the content sent from the base transceiver station would necessarily
be adapted to the capabilities of the display monitor since the display
monitor may not include the ability to generate audio and would therefore be
incapable of rendering audio content (e.g., a standard computer monitor).
But in Tryding, the content received by the mobile telephone is clearly
intended to be viewed on a screen, and the rendering capability of such
viewable content is shared by both the telephone and display monitor alike.
Furthermore, although the Examiner relies on Erekson for the recited
assistance message from the auxiliary rendering device (Ans. 5, 6, 18), the
functionality of the display monitor in Tryding actually suggests this
limitation as well. Specifically, the display monitor 15 can include a
transmitter 50 that transmits confirmation commands associated with each
command issued by the mobile telephone’s display monitor communication
function 40 (Tryding, col. 3, ll. 44-52; col. 2, ll. 46-51).
In my view, the specific information contained in the “assistance
message” recited in claim 1 merely constitutes non-functional descriptive
material.5 Nevertheless, the confirmation commands sent by the display
Footnotes continued on the next page.
the auxiliary rendering device -- content that fully meets the limitation if it
happens to be adapted to the capabilities of the auxiliary rendering device.
5 Since the mere content of the assistance message does not further limit the
claimed invention either functionally or structurally, it essentially constitutes
non-functional descriptive material. Such non-functional descriptive
material does not patentably distinguish over prior art that otherwise renders
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monitor in Tryding fully meet this limitation since these “assistance
messages” are directly related to the monitor’s rendering capabilities with
respect to displaying text, digits, and removing displayed data.6
For the foregoing reasons, I find the collective teachings of the cited
references amply teach and suggest all limitations of representative claim 1.
Therefore, I would affirm the Examiner’s rejection of that claim.

tdl/gvw

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR NY 10510
the claims unpatentable. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004).
6 See Tryding, at col. 3, ll. 50-52 (listing three different confirmation
commands “DISPLAY_TEXT_CNF”; “DISPLAY_DIGITS_CNF”; and
“REMOVE_DISPLAYED_DATA_CNF” corresponding to associated
commands from the mobile telephone).
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