Ex Parte Oommen

Board of Patent Appeals and Interferences

May 25, 2011

10890340 (B.P.A.I. May. 25, 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.
10/890,340 07/13/2004 Paul P. Oommen 042933/310255 7357
10949 7590 05/26/2011
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
VU, VIET DUY
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
05/26/2011 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 PAUL P. OOMMEN
____________

Appeal 2009-006987
Application 10/890,340
Technology Center 2400
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/890,340

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 2-4. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
A. INVENTION
The invention at issue on appeal relates to a method for managing the
Mobil Station (MS) over the air (OTA) and at the same time maintaining
backward compatibility with existing protocols and standards. The proposed
method uses a Wireless Telephony application (WTA). An OTAM Server
receives an indication from the Mobile Network of change in MS
parameters. The OTAM Server sends a notification to the WTA Server
along with the changed MS parameters. The WTA Server creates a new
service content based on the input it received and pushes its URL to the
WAP Gateway. The WAP Gateway sends a service indication to the client
using (SI) Push or standard PUSH. This SI contains the URL. If user
interaction is required a message is also sent. (Spec. 2.)

B. ILLUSTRATIVE CLAIM
Claim 2, which further illustrates the invention, follows.
2. A system for over the air parameter administration of a
mobile station in a network, said system comprising:
a first server for receiving an indication of changed
parameters in the mobile station and sending a notification;
a second server for receiving the notification with the
changed parameters and creating a new service content based
on the changed parameters; and
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a gateway for receiving a pushed uniform resource
locator (URL) of the second server and for sending a service
indication to a client and converting at least one protocol signal.

C. REFERENCE
The Examiner relies on the following reference as evidence:

Marran US 6,549,770 B1 Apr. 15, 2003

D. REJECTION
Claims 2-4 stand rejected under 35 U.S.C. §103 as being unpatentable
over Marran.

ISSUE
Has the Examiner set forth a sufficient showing of obviousness of
independent claim 2? Specifically, has the Examiner shown that Marran
teaches or fairly suggests "a first server for receiving an indication of
changed parameters in the mobile station and sending a notification"?

PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). "[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
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presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, "'there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness' . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.'' KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).

ANALYSIS
Appellant contends that :
Marran, fails to teach or suggest a first server for receiving an
indication of changed parameters in the mobile station and
sending a notification, a second server for receiving the
notification with the changed parameters and creating a new
service content based on the changed parameters, and a gateway
for receiving a pushed uniform resource locator (URL) of the
second server and for sending a service indication to a client
and converting at least one protocol signal as set forth in
independent claim 2. Marran also fails to teach or suggest an
over the air management agent for processing at least one
management message including a URL of a server, initiating an
appropriate management action and interfacing with the
signaling layer as provided by independent claims 3 and 4.

(App. Br. 3). Appellant further contends that:

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contrary to the claimed invention, in which indications of
changed parameters at the mobile station are received and a
notification is then sent, Marran merely discloses that rules
associated with certain recognized activities may indicate that
changes (i.e., a need for new or updated parameters) in
parameter data are needed. Marran does not receive indications
of changed parameters, but instead determines that a change in
parameters may be needed.

(App. Br. 4). Appellant further contends that:
Marran provides a mechanism to determine a need for changing
parameters, while the claimed invention relates to creating new
service content based on changed parameters. The Advisory
Action again asserts that a detected activity could be a change
in parameters, but there is no disclosure of Marran to support
this assertion. Rather, the exemplary detected activities of
Marran do not relate to detection of changed parameters. Thus,
there is no support for the assertion that a changed parameter
could be a detected activity.

(App. Br. 4). The Examiner maintains that
the received administration data (e.g., recognized activities)
could reveal or indicate change of parameters in the mobile
station (see col 10, lines 43-64). The examiner submits that
Marran discloses the invention as claimed the fact that it
discloses additional unclaimed limitations such as applying
predetermined rules to the recognized activities is irrelevant.

(Ans. 5) (emphasis added). While the Examiner's speculation has some
possibility of being true, we find no express support for the Examiner's
position within the teachings of Marran. For example, figure 2 of Marran
discloses the processing by an expert system, but the expert system is not
located in the mobile station to generate an indication of a change in
parameters in the mobile station. Moreover, Marran discloses that "[s]ome
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network administration data is generated directly by subscribers' digital
telephones. For example, errors or other problems with the data and/or
programming on a subscriber's telephone are detected by the subscriber [the
physical user] who then calls the carrier to give notification of the problem."
(Marran at column 7, ll. 56-61). Here, the first server would not receive the
indication. Additionally, Marran discloses that

network administration data comprises data that reflects the
characteristics of a digital telephone and its associated network
services, such as executable code residing on a digital
telephone, data relating to usage of a digital telephone, data
relating to billing and other costs for a digital telephone, data
relating to services available for digital telephones, and any
other data that is useful for maintaining services and proper
operation for a digital telephone.

(Marran at column 7, ll. 38-46). Therefore, Marran merely evidences a
snapshot of the contents of the mobile station are transmitted, rather than any
determination of changes. Marran further discloses that:

In order for the digital communications network to
automatically push downloads to subscribers' digital telephones,
the network needs decisional making capabilities. Detecting
when a subscriber's digital telephone 5 needs to be updated and
deciding what action to take is preferentially performed by the
expert system 31.
An expert system is a sophisticated computer system
designed to receive complex inputs and formulate decisions
based upon those complex inputs. The computer system can be
composed of software, hardware, or can be a combination of
software and hardware.

(Marran at column 8, ll. 52-62). Marran further discloses that:

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Network administration data generated by subscribers' digital
telephones may also be compiled within processing nodes such
as the MSCs 11 and the HLR 15, or by a separate system (not
shown) residing within the digital communications network, for
example, within the customer service center 17 or the private
internet protocol network 35.

(Marran at column 7, ll. 61-67). Marran further discloses that:

Other data that is ready to be downloaded onto a subscriber's
mobile, digital device can be compiled along with network
administration data. For example, a software update for a
particular type and brand of mobile, digital device would need
to be downloaded onto subscribers' mobile, digital devices and
could be included with compiled network administration data.

(Marran at column 8, ll. 1-7). Marran further discloses that:

As part of maintaining digital telephones 5, it is necessary to
download programming data, including parameter data relating
to certain characteristics, or other software, into the digital
telephone 5. To automate this procedure, the carrier operates an
over-the-air (OTA) provisioning server 25, a provisioning
database 27, and an expert system 31, described in greater detail
below. The IWF equipment 33 and the IP network 35 provide
data communications to the OTA application server 25 and the
expert system 31.

(Marran at column 8, ll. 29-37).

From these additional teachings of Marran, it remains unclear to us
whether the mobile station identifies changes in the mobile station
parameters or whether the expert system determines the presence of changes
and the need for updated programming. Hence, the Examiner has not shown
a teaching or suggestion of a first server for receiving an indication of
changed parameters or provided a convincing line of reasoning for this
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limitation to be suggested. Considering the totality of Appellant's
arguments, we find Appellant's arguments to be persuasive of error in the
Examiner's showing of obviousness of independent claim 2.
With respect to independent claims 3 and 4, Appellants contend that
the portions of Marran at column 12 does not teach the claimed "an over the
air management agent for processing at least one management message
including a URL of a server, initiating an appropriate management action
and interfacing with the signaling layer." (App. Br. 8). We agree with
Appellant, as generally discussed above.

CONCLUSION
For the aforementioned reasons, the Examiner has not shown that
Marran renders independent claims 2-4 obvious.

ORDER
We reverse the obviousness rejections of claims 2-4.

REVERSED

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