Ex Parte Nguyenphu et al

Patent Trial and Appeal Board

Feb 21, 2017

12570911 (P.T.A.B. Feb. 21, 2017)

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.
12/570,911 09/30/2009 Thinh Nguyenphu 042933/413361 1061
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
NGUYEN, MINH CHAU
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THINH NGUYENPHU
and MIRAJ MOSTAFA
Appeal 2016-002452
Application 12/570,911
Technology Center 2400
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002452
Application 12/570,911
STATEMENT OF CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 4, 8, 9, 13—16, and 19-24. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm, and to the extent we rely on less than all of the references
applied by the Examiner and rely on new portions of the primary reference
to Reding (US 2007/0038720 Al, Feb. 15, 2007), we designate our decision
as new grounds of rejection.
Exemplary Claim on Appeal
Claim 1, with emphases added, reads as follows:
1. A method, comprising:
receiving a notification that a contact share Extensible
Markup Language (XML) document has been updated; and
in response to the notification:
a) retrieving updated contact information;
b) identifying at least one remote device subscribing
to the contact share based on a stored subscription list;
and
c) causing delivery of the updated contact information
to the at least one subscribing device via a push message.
Rejection on Appeal2
Claims 1, 4, 8, 9, 13—16, and 19—24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reding and Castro (US 2007/0220005
Al, Sept. 20, 2007). Final Act. 3—8.
1 For purposes of this decision, we make reference to the Appeal Brief filed
May 11, 2015 (“App. Br.”), the Examiner’s Answer mailed November 13,
2015 (“Ans.”), and the Reply Brief filed December 22, 2015 (“Reply Br.”).
2 Separate patentability is not argued for claims 4, 8, 9, 13—16, and 19—24
(see App. Br. 7—11). Except for our ultimate decision, these claims are not
discussed further herein.
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Appeal 2016-002452
Application 12/570,911
Issue on Appeal
Based on Appellants’ arguments in the briefs, the following issue is
presented on appeal:
Did the Examiner err in rejecting claims 1, 4, 8, 9, 13—16, and 19—24
as being obvious because Reding fails to teach or suggest the “push
message” as set forth in independent claim 1 on appeal?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 7—11; Reply Br. 1—3) that the Examiner has erred. We
disagree with Appellants’ conclusions, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 4—
12), with the exception that we find that Reding alone (see paragraph 124),
and not Reding in combination with Castro as relied upon by the Examiner
(Ans. 4—6), teaches or suggests the push message recited in claim 1.
We concur with the conclusions reached by the Examiner regarding
Reding (see Ans. 3—5), and designate our reliance on less than all of the
references with regard to the rejection of Reding and Castro for all pending
claims 1, 4, 8, 9, 13—16, and 19—24 (e.g., we only rely on Reding) as new
grounds of rejection. In re Wiechert, 370 F.2d 927 (CCPA 1967)
(concluding Board decision constituted new ground of rejection when
rejection was factually based on different portion of reference).
The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re
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Appeal 2016-002452
Application 12/570,911
Bush, 296 F.2d 491, 496 (CCPA 1961)). To the extent that we have relied
upon disclosures of Reding described in paragraph 124 as teaching or
suggesting the push message as recited claim 1, we designate our affirmance
of the Examiner’s rejection of claims 1, 4, 8, 9, 13—16, and 19-24, as new
grounds of rejection. We highlight and address specific findings and
arguments with respect to Reding as follows.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because “Reding and Castro fail to teach or suggest that
causing delivery of the updated contact information to the at least one
subscribing device occurs via a push message in response to a notification
that a contact is updated.” App. Br. 7.
Appellants admit that it “is commonly known by those skilled in the
art that a push message is initiated by a device or system having access to
the data or information to be pushed to a remote device.” App. Br. 8
(emphasis ours).
Reding discloses,
Changes to contact information in address book 612-1 may
occur, for example, as a result of user input or as a result of one
or more agent networks or systems associated with address
book 612-1. The one or more agent networks or systems may
periodically or on demand update contact information in
address book 612.1.
Paragraph 124 (emphasis ours).
In other words, Reding teaches systems that, just like a push message,
periodically update the contact information in the address book. In this
light, we find one of ordinary skill in the art would understand Reding’s
systems periodically updating the contact information to correspond to a
push message that is initiated by a system.
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Appeal 2016-002452
Application 12/570,911
In view of the foregoing, Appellants’ contentions that the combination
of Reding and Castro fails to teach or suggest the push message recited in
claim 1 are not persuasive. Accordingly, we will sustain the Examiner’s
rejection of claims 1, 4, 8, 9, 13—16, and 19-24.
CONCLUSION
The Examiner has not erred in rejecting claims 1, 4, 8, 9, 13—16, and
19-24 as being unpatentable under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1, 4, 8, 9, 13—16, and 19-24 is
affirmed.
To the extent that we have relied upon disclosures of Reding not
relied on by the Examiner as teaching or suggesting the push message of
claims 1, 4, 8, 9, 13—16, and 19-24, we also enter new grounds of rejection
under 37 C.F.R. § 41.50(b) for claims 1, 4, 8, 9, 13—16, and 19-24.
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
[T]he appellant, within two months from the date of the
decision, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
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Appeal 2016-002452
Application 12/570,911
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED;
37 C.F.R, $ 41.50(b)
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