Ex Parte Mostafa

Board of Patent Appeals and Interferences

Nov 9, 2011

10149639 (B.P.A.I. Nov. 9, 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.
10/149,639 02/03/2003 Miraj Mostafa 00002-5065 8114
98359 7590 11/09/2011
AlbertDhand LLP
11622 El Camino Real, Suite 100
San Diego, CA 92130
EXAMINER
HAMZA, FARUK
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
11/09/2011 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 MIRAJ MOSTAFA
____________

Appeal 2010-004229
Application 10/149,639
Technology Center 2400
____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004229
Application 10/149,639

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 17, 19, 30, 31, 36-40, 43, 44, 46-48, 57, and 62-73. Appeal Brief 4.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We reverse.

Exemplary Claim
Exemplary independent claim 17 under appeal reads as follows:
17. A method, comprising:
receiving a notification message at a recipient device, said notification
message indicating availability of a multimedia message at a communication
network entity, said multimedia message comprising a non-streamable and a
streamable component;
sending to the communication network entity a retrieve request to
receive the multimedia message;
receiving, responsive to the retrieve request, the multimedia message
from the communication network entity at the receiving device, the received
multimedia message comprising the non-streamable component and a
descriptor associated with the streamable component, the streamable
component having been replaced with the descriptor; and
initiating a streaming session, using the descriptor, to retrieve the
streamable component of the multimedia message.

Rejections on Appeal1
1. Claims 17, 19, 37, 39, 40, 43, 44, 46, 47, 57, 63, 64, 66-70, and 72 stand
rejected under 35 U.S.C. § 102(e) over Ostermann (U.S. Patent Number
6,976,082 B1; December 13, 2005 (filed November 2, 2001)). Answer 4-8.

1 An Objection to the Specification was withdrawn by the Examiner. See
Appeal Brief 10-11; Answer 10.
Appeal 2010-004229
Application 10/149,639

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2. Claims 30, 31, 36, 62, 71, and 73 stand rejected under 35 U.S.C. § 103(a)
over Ostermann. Answer 8-9.
3. Claims 38, 48, and 65 stand rejected under 35 U.S.C. § 103(a) over
Ostermann and Official Notice. Answer 9.

Issue on Appeal
Does Ostermann disclose a multimedia message that includes a
descriptor in place of a streamable component as claimed?

ANALYSIS
Appellant argues the present invention’s recipient device may receive
two messages: (1) a notification message and (2) a multimedia message.
Appeal Brief 12. The multimedia message includes a descriptor, which is
used to initiate a streaming session to retrieve the streamable component. Id.
Appellant concludes that Ostermann does not disclose a multimedia message
including a descriptor because, as interpreted by the Examiner, Ostermann’s
descriptor is included in the notification message (step 106 of Figure 7) and
not in the multimedia message (step 108 of Figure 7). Appeal Brief 14.
The Examiner interprets the link transmitted by the server to be a
“descriptor” and therefore the Examiner is equating substituting the
multimedia message with a link to be the “descriptor in place of a streamable
component.” Answer 11.
The Examiner relies upon column 9, lines 31-44, for support for his
interpretation. Id. However, the citation relied upon by the Examiner does
not support his interpretation. For example, “[f]inally, the method comprises
transmitting to the recipient a message containing a link to the multi-media
Appeal 2010-004229
Application 10/149,639

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message (106).” See Ostermann, column 9, lines 31-33. Ostermann’s
disclosure actually supports Appellant’s argument that the link or descriptor
is included in the notification message 106 and not the multimedia message
108. Appeal Brief 14. Therefore we find Appellant’s arguments to be
persuasive and will not sustain the Examiner’s anticipation rejection of
claim 17. Further, the Examiner indicates that “[c]laims 19, 40, 43, 57 and
68 do not teach or define any new limitations above claim 17, and are
rejected for similar reasons.” Answer 5. Therefore we will not sustain the
Examiner’s anticipation rejection of claims 19, 37, 39, 40, 43, 44, 46, 47, 57,
63, 64, 66-70, and 72 for the same reasons we provided for claim 17.
We will not sustain the Examiner’s obviousness rejections for
dependent claims 30, 31, 36, 38, 48, 62, 65, 71, and 73 for the same reasons
as stated above.

DECISION
The Examiner has erred in rejecting claims 17, 19, 30, 31, 36-40, 43,
44, 46-48, 57, and 62-73 under the various 35 U.S.C. §§ 102 and 103
rejections.

REVERSED

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