Ex Parte Mamas

Patent Trial and Appeal Board

Jun 18, 2013

10492095 (P.T.A.B. Jun. 18, 2013)

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.
10/492,095 04/08/2004 Evangelos Mamas CA920010063US1 4252
46320 7590 06/19/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
BARQADLE, YASIN M
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
06/19/2013 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 EVANGELOS MAMAS
____________________

Appeal 2011-000082
Application 10/492,095
Technology Center 2400
____________________

Before JEAN R. HOMERE, BRUCE R. WINSOR, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000082
Application 10/492,095

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–6, which constitute all the claims pending in the application; claims 7–10
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The disclosure relates to wireless messaging services for wireless-
application-enabled devices using publish/subscribe systems (Spec., p. 1, ll.
5–6).
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. A method of brokering messages between a publisher
application and at least one wireless subscriber, the method
comprising steps of:
receiving a data message published on a topic, the data
message originating from the publisher application
receiving, from a subscriber, a prompt selection specific
to the topic, the prompt selection indicating whether the
wireless subscriber is to be prompted before receiving content
of a message on the topic about which the data message was
published; and
using a wireless push protocol to distribute a message for
the subscriber that has subscribed for messages on the topic
about which the data message was published, wherein
the message distributed to the subscriber indicates a
service to be loaded in accordance with a level of user
intrusiveness, and
a push initiator controls the level of user intrusiveness.

Appeal 2011-000082
Application 10/492,095

3
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tso US 6,047,327 Apr. 4, 2000
Kahan
Admitted prior art
US 2002/0024536 A1 Feb. 28, 2002

Rejections
The Examiner rejected Claims 1–6 under 35 U.S.C §103(a) as
unpatentable over Tso, the admitted prior art, and Kahan (Ans. 3–10).

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (“Br.”
filed February 17, 2009), and have reviewed the Examiner’s Answer (“Ans.”
dated May 28, 2009) to Appellant’s arguments. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments that Appellant 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)(2011).

Statement of Issues
Appellant’s arguments present us with the following issues:
1. Whether the Examiner erred in finding that Kahan teaches
“receiving … a prompt selection … indicating whether the wireless
subscriber is to be prompted before receiving content of a message on the
topic about which that message was published” (Br. 7–9).
Appeal 2011-000082
Application 10/492,095

4
2. Whether the Examiner erred by failing to articulate a reasoning
with some rational underpinnings, see KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), for combining the teachings of Kahan with Tso and
the admitted prior art because the Examiner’s proposed benefit is not related
to the Examiner’s proposed modification involving a prompt (Br. 9).

Issue 1
Kahan is directed generally to aggregation of data items to be sent to a
mobile terminal subscriber (Kahan, Abs.). Kahan teaches that a subscriber
selects whether the data item will issue a “notification alert” to the
subscriber if the data item changes (Ans. 7, citing Kahan ¶¶ 104, 114).
Appellant asserts that “[t]he Examiner’s analysis neglects to consider the
differences between a ‘prompt,’ as claimed, and a ‘notification,’ as taught by
Kahan” (Br. 8). Appellant contends that “[a] ‘prompt’ refers to a
message/symbol on a display screen of a computer that requests the user to
provide some information/data,” and that a “prompt” requires interactivity
between the prompt provider and the user, who responds to the prompt (Br.
8).
This contention is unpersuasive. Appellant discloses a “prompt” at p.
23, ll. 12–14 of the Specification, indicating that “the user can also specify
whether to be prompted before receiving the content of these messages or
automatically be presented with the messages.” A relevant technical
dictionary defines “prompt” as “[a]n audible or visible signal to the system
user that some process is complete or some user action is required. Also
used to signify a need for further input and/or location of needed input”
(Newton’s Telecom Dictionary, 20
th
ed. (CMP Books, 2004), p. 662)
Appeal 2011-000082
Application 10/492,095

5
(emphasis added).
1
Applying the broadest reasonable interpretation, the
“notification alert” of Kahan is encompassed by the term “prompt” since it is
generated when a data item changes (Kahan ¶104).
Kahan therefore teaches “receiving … a prompt selection …
indicating whether the wireless subscriber is to be prompted before receiving
content of a message on the topic about which that message was published.”
We accordingly conclude that Appellant has not shown that the
Examiner erred.

Issue 2
We disagree with Appellant’s assertion that “[t]he Examiner’s
proposed benefit (i.e., ‘the subscriber of an item such as stocks may take an
appropriate action such as selling a particular stock[’]) is not related to the
Examiner’s proposed modification involving a ‘prompt’” (Br. 9). Stock-
price information is frequently time-sensitive. Prompting a subscriber with a
notification alert as taught by Kahan benefits the subscriber by allowing this
time sensitivity to be accommodated in a way not fully achieved only by
pushing a message containing the information to the subscriber.

1
Although technical treatises and dictionaries fall within the category of
extrinsic evidence, as they do not form a part of an integrated patent
document, they are worthy of special note. Judges are free to consult such
resources at any time in order to better understand the underlying technology
and may also rely on dictionary definitions when construing claim terms, so
long as the dictionary definition does not contradict any definition found in
or ascertained by a reading of the patent documents. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 n. 6 (Fed. Cir. 1996).
Appeal 2011-000082
Application 10/492,095

6
We therefore conclude that the Examiner has articulated a reasoning
with some rational underpinnings, see KSR, 550 U.S. at 418, for combining
the teachings of Kahan with Tso and the admitted prior art.
We accordingly conclude that Appellant has not shown that the
Examiner erred.

CONCLUSION
On the record before us, we conclude that Appellants have not shown
the Examiner erred in rejecting claim 1under 35 U.S.C. § 103(a) as
unpatentable over Tso, the admitted prior art, and Kahan. Accordingly, we
sustain the rejection of claim 1 and claims 2–6, which Appellant stated stand
or fall with claim 1. Br. 4.

DECISION
The Examiner’s decision rejecting claims 1–6 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

ELD