Ex Parte Oh et al

Patent Trial and Appeal Board

Jan 30, 2013

11497213 (P.T.A.B. Jan. 30, 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.
11/497,213 08/01/2006 Jae-Kwon Oh 678-3889 7622
66547 7590 01/30/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
CHANNAVAJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
01/30/2013 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 JAE-KWON OH, WUK KIM, and
SANG-KYUNG SUNG
____________________

Appeal 2011-001958
Application 11/497,213
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001958
Application 11/497,213

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1, 3-8, 10, 11 and 13-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The invention on appeal is directed to a system and method for
managing XDM (XML Document Management) service information used to
provide Open Mobile Alliance (OMA) service. Claim 1, reproduced below,
is representative of the claimed subject matter:
1. An apparatus for managing XML Document
Management (XDM) service information in an XDM client
included in a user terminal of an Open Mobile Alliance (OMA)
system, the apparatus comprising:

a controller for creating a shared User Resource Identifier
(URI) list including a static reference handle value for
indicating the shared URI list, in response to a request to create
the shared URI list, and transmitting the shared URI list to a
shared XDM Server (XDMS) for storage as a reference for
service information corresponding to a plurality of OMA
services in accordance with the static reference handle value;

wherein the static reference handle value remains
unchanged until the shared URI list is deleted.

(disputed limitation emphasized).

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Ingimundarson US 2005/0213537 Al Sep. 29, 2005
Draluk US 2005/0232175 Al Oct. 20, 2005
Hoover US 2006/0140173 Al Jun. 29, 2006
Appeal 2011-001958
Application 11/497,213

3
REJECTIONS
1. Claims 1, 3-8, 10, 11, 13-18, 22, 23, 25, and 26 stand rejected
under 35 U.S.C. §103(a) as being unpatentable over the combined
teachings and suggestions of Hoover and Draluk.
2. Claims 19-21, 24, and 27 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over the combined teachings and suggestions
of Hoover, Draluk, and Ingimundarson.

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the first-
stated rejection on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We address the second-stated rejection of dependent
claims 19-21, 24, and 27 infra.

CONTENTIONS
Appellants contend:
Draluk describes that stored data may be referenced
and/or manipulated by an operating system or an application for
performing functions of a client device. Specifically, the
Examiner cites a portion of Draluk describing the identification
of URI, operational, and data parameters in characteristics of a
client provisioning document. Draluk fails to provide any
disclosure relating to parameters for shared data, and whether
such parameters are static. Specifically, Draluk fails to disclose
a static reference handle value that remains unchanged until the
shared data to which the handle refers is deleted, as recited in
Claim 1.
(App. Br. 6).

Appeal 2011-001958
Application 11/497,213

4
ISSUE
Under § 103, did the Examiner err in finding that the cited references,
either alone or in combination, would have taught or suggested the disputed
temporal limitation of “wherein the static reference handle value remains
unchanged until the shared URI list is deleted,” within the meaning of
representative claim 1 (emphasis added)?

ANALYSIS
This appeal turns upon claim construction. Our reviewing court
guides that “[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
At the outset, we observe that the disputed “wherein” clause in
representative claim 1 is directed to a temporal limitation regarding how
long the recited “static reference handle value” must remain unchanged
(“until the shared URI list is deleted”). We conclude that such claim
language merely involves the temporal state of data and thus does not limit
the claimed apparatus to a particular structure. (Claim 1). Thus, we
conclude that the claim scope is not limited by such language.1

1 See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
Appeal 2011-001958
Application 11/497,213

5
Moreover, because the recited “static reference handle value” is not
positively recited in representative claim 1 as actually being employed to
affect or change any machine or computer function, it is non-functional
descriptive material.2 Therefore, the informational content of the “static
reference handle value” is not entitled to weight in the patentability analysis.
Even assuming arguendo that the aforementioned limitation may be
accorded patentable weight, Appellants’ arguments are not persuasive
because we find the weight of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
See Examiner’s “Response to Argument” (Ans. 27-28).
Regarding Appellants’ contention that “Draluk fails to provide any
disclosure relating to parameters for shared data, and whether such
parameters are static” (App. Br. 6), we note that the Examiner relies on
Draluk’s uniform resource identifier (URI) parameter as teaching or
suggesting the claimed “static reference handle value” (Ans. 27-28; claim 1).
In particular, we observe that the URI parameter is pushed to a URI stack:
If the characteristic only includes a URI parameter, then the
client device appends the URI parameter at step 412, stores the
URI parameter by pushing it down on a URI stack at step 414,

(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP § 2111.04 Eighth Edition, Rev. 9, Aug. 2012, emphasis added).
2 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
2006).
Appeal 2011-001958
Application 11/497,213

6
and returns to step 408 where the client device identifies the
next characteristic from the client provisioning document.
(Draluk, ¶ [0031]).
Because a data value pushed to a stack cannot be changed until the
same data value is eventually popped from the stack (without destroying the
stack LIFO data structure and associated push and pop operations), we find
the weight of the evidence supports the Examiner’s ultimate legal conclusion
of obviousness.
Regarding the claim 1 temporal limitation (“wherein the static
reference handle value remains unchanged until the shared URI list is
deleted”), we note that the claim scope only covers the time period until the
shared URI list is deleted. Because the claim language is silent regarding
what happens to the “static reference handle value” after the shared URI list
is deleted, we conclude the plain language of the claim broadly encompasses
an apparatus where the “static reference handle value” never changes its
value after it is initially assigned the reference to the shared URI list, even
after the shared URI list is deleted. (Claim 1).
Thus, under a broad but reasonable interpretation, the plain language
of representative claim 1 does not require the “static reference handle value”
to subsequently change its value after the shared URI list is deleted.
Therefore, we conclude claim 1 broadly reads on: (1) where the “static
reference handle value” changes after the shared URI list is deleted , and (2)
where the “static reference handle value” does not change after the shared
URI list is deleted.
Moreover, we conclude the claimed “shared URI list” broadly covers
a list as a set of one or more elements, which we find is at least suggested by
Draluk’s stack structure which eventually pops all values that were pushed,
Appeal 2011-001958
Application 11/497,213

7
resulting in an empty stack. We find this is at least suggestive, within the
meaning of claim 1, of a URI list that is deleted. We also conclude that the
claimed shared aspect of the URI list would have been obvious to an artisan,
given that both Hoover and Draluk expressly teach the use of the same
“Open Mobile Alliance” (OMA) set of services that utilize shared service
information, as described in Appellants’ “Description of the Related Art”3:
Service information is required to provide various OMA
services. The service information may be classified into
information shared among several OMA services and
information used only by specific OMA service. The service
information shared among several OMA services is stored in an
OMA shared XML document management system (XDMS),
hereinafter referred to as a “shared XDMS.”
(Spec. 1, last paragraph).
We are also cognizant that any run-time environment requires
variables to remain static or be changed at particular times, including pointer
variables or “reference handles.” Absent a showing of secondary
considerations (e.g., unexpected results), we are not persuaded that the
Examiner’s ultimate legal conclusion of obviousness is in error regarding
how long the recited “static reference handle value” remains unchanged.
Notwithstanding Appellants’ arguments (see also Reply Br. 2-4), the
Supreme Court guides that “when a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).

3 See Hoover, ¶ [0009]; see also Draluk, ¶ [0018].
Appeal 2011-001958
Application 11/497,213

8
This reasoning is particularly applicable here, given that URIs and
address pointers (also known as “references” and “handles” ) are ubiquitous
in the programming art, as evidenced by Draluk (e.g., ¶ [0031]).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. Accordingly, we sustain the rejection of claim 1. Claims 3-8,
10, 11, 13-18, 22, 23, 25, and 26 (not argued separately) fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).

Dependent claims 19-21, 24, and 27
Regarding dependent claims 19-21, 24, and 27, Appellants contend
that “Ingimundarson fails to remedy the deficiencies of Hoover and Draluk
described above with respect to Claim 1. Claims 19-21, 24 and 27 are
patentable at least by virtue of their dependency from the independent
claims.” (App. Br. 8). However, we find no deficiencies with Hoover and
Draluk, for the reasons discussed above. Therefore, we sustain the
Examiner’s rejection of claims 19-21, 24, and 27 for the same reasons
discussed above regarding claim 1.
DECISION
We affirm the Examiner’s rejections under §103 of claims 1, 3-8, 10,
11, and 13-27.
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).
ORDER
AFFIRMED
peb