Ex Parte Major et alDownload PDFPatent Trial and Appeal BoardDec 18, 201411925811 (P.T.A.B. Dec. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HARRY MAJOR, KRISHNA K. PATHIYAL, GARY P. MOUSSEAU, and MIHAL LAZARIDIS ___________ Appeal 2012-010453 Application 11/925,811 Technology Center 2400 ____________ Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (“App. Br.”) filed April 27, 2012, the Reply Brief (“Reply Br.”) filed July 3, 2012, and the Answer (“Ans.”) mailed June 18, 2012, for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other Appeal 2012-010453 Application 11/925,811 2 arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). STATEMENT OF THE CASE Introduction Appellants’ invention relates notifications for a mobile communications device. Spec. para. 2. Claim 1, which is illustrative of the invention, reads as follows: 1. A message notification method operable at a mobile data communication device, the method comprising: receiving a data item redirected from a computer system via a wireless gateway coupled to a wireless network and a wide area packet-switched network; determining if the data item includes characterization information assigned by the computer system according to a characterization scheme, the characterization scheme adapted to correspond to a user-selectable notification scheme operable on the mobile data communication device; and if so, extracting the characterization information and applying an appropriate alert associated with the user-selectable notification scheme. The Rejection The Examiner rejected claims 1–14 under 35 U.S.C. § 103(a) as being unpatentable over Deo (US 5,973,612, Oct. 26, 1999), Gottlieb (US 2005/0114458 A1, May 26, 2005), and Janik (US 2009/0077203 A1, Mar. 19, 2009). Ans. 5–12. Appeal 2012-010453 Application 11/925,811 3 ISSUE AND ANALYSIS1 Based on Appellants’ arguments, the principal and dispositive issue of whether the Examiner erred in rejecting exemplary claim 1 turns on whether the teachings of the combination of the references would have taught or suggested the claimed subject matter (App. Br. 12–16; Reply Br. 2–4). In particular, Appellants contend that the Examiner erred in rejecting the claims as obvious over Deo and Gottlieb because Gottlieb teaches away from the claimed invention. App. Br. 15; Reply Br. 4. We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. In rejecting independent claim 1 over the combination of Deo and Gottlieb, the Examiner finds (Ans. 5–6) that Deo discloses all the claimed features, except for “receiving a data item redirected from a computer system.” The Examiner relies on Gottlieb for this limitation (Ans. 6). In particular, the Examiner properly identifies the relevant teachings in Deo and Gottlieb and states how each claimed element is met by those teachings (see Ans. 5–17). The Examiner finds: Gottlieb is cited for teaching the transmission of data items redirected from a computer to a mobile device. It would have been apparent to one of ordinary skill that such items could be 1 Separate patentability is not argued for claims 2–14. Except for our ultimate decision, claims 2–14 are not discussed further herein. Appeal 2012-010453 Application 11/925,811 4 transmittable from a personal computer to the “Nomad” in Deo without modifying the underlying network of Deo. Accordingly, the fact that Gottlieb utilizes a different type of network is not fatal to the combination, as it would have been apparent to anyone of ordinary skill that any network is capable of transmitting and/or receiving redirected data. Accordingly, technical differences notwithstanding, it would have been apparent to one of ordinary skill that the technique of receiving data items redirected from a computer system, as disclosed by Gottlieb, could be implemented in any type of network. Ans. 14. In this case, because the proposed rejection is based on the combination of the references, Appellants’ challenge to the references individually is not persuasive of error in the Examiner’s position. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non- obviousness by attacking references individually where . . . the rejections are based on combinations of references.”). The Appellants further contend that Gottlieb teaches away from the claimed invention and that there is no motivation to modify Deo because “the commercial telephony/paging network connectivity of Deo is substantially dissimilar to the private, non-commercial network arrangement shown between the computer 100 and the e-mail notification device 220 of Gottlieb.” App. Br. 14. The Examiner responds that: Examiner’s proposed combination is merely that the technique of redirecting a data item from a computer be implemented in the Deo system. The cited portion of Gottlieb does not teach against performing redirection on different types of networks i.e. it does not state that performing such a redirection is inadvisable or that it would not work, it merely states a financial advantage of the Gottlieb system. Accordingly, Appeal 2012-010453 Application 11/925,811 5 Examiner submits that Gottlieb in fact does not teach away from the combination inasmuch as it relates to Examiner’s proposed modification of Deo. Ans. 15–16 (emphasis ours). We agree with the Examiner. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and internal quotation marks omitted). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, we agree with the Examiner that “Gottlieb does not teach against performing redirection on different types of networks.” Ans. 15. As such, we do not find the Appellants’ arguments persuasive. Therefore, we agree with the Examiner that the combination of Deo and Gottlieb would have suggested all the recited limitations of independent claim 1 to one of ordinary skill in the art. CONCLUSIONS The Examiner did not err in rejecting claims 1–14 under 35 U.S.C. § 103(a) as being unpatentable over Deo, Gottlieb, and Janik. Appeal 2012-010453 Application 11/925,811 6 DECISION The decision of the Examiner rejecting claims 1–14 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)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation