Ex Parte Proidl

Board of Patent Appeals and Interferences

Sep 23, 2008

10213553 (B.P.A.I. Sep. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADOLF PROIDL
____________

Appeal 2008-2690
Application 10/213,553
Technology Center 2600
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Decided: September 23, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2008-2690
Application 10/213,553
Appellant’s invention relates to the providing of programming
information for programming a portable device or appliance. The
programming information is selected from a database and transmitted as a
short message service (SMS) message to a communication device which
transmits it to the programmable appliance or device. (Spec. 11-13).
Claim 1 is illustrative of the invention and reads as follows:
1. A method of providing a programming information for programming
a programmable device or appliance, wherein the programming information
is selected from a database, and the programming information is transmitted
to a communication device in the form of a Short Message Service (SMS)
electronically transmittable message, which communication device is
designed for receiving said SMS message, and the programming information
is made available to the programmable device or appliance by the
communication device.
The Examiner relies on the following prior art references to show
unpatentability:
Horowitz EP 0 999 678 A2 May 10, 2000
Song US 6,393,297 B1 May 21, 2002
(filed Dec. 9, 1999)
Blatz US 6,516,026 B1 Feb. 4, 2003
(filed Oct. 1, 1997)
Ogasawara US 6,543,052 B1 Apr. 1, 2003
(filed Jul. 9, 1999)
Allport US 6,882,299 B1 Apr. 19, 2005
(filed Jan. 14, 2000)

Claims 1, 2, 4, 10, 11, 18, 20-24, and 26-29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Allport in view of Song.
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Application 10/213,553
Claims 5-9, 12-16, 19, 25, and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Allport in view of Song and further in
view of Horowitz.
Claims 3, 17, and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allport in view of Song and further in view of Ogasawara.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allport in view of Song and further in view of Blatz.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1, 2, 4,
10, 11, 18, 20-24, and 26-29, would one of ordinary skill in the art at the
time of the invention have found it obvious to combine Allport and Song to
render the claimed invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 5-9,
12-16, 19, 25, and 31, would one of ordinary skill in the art at the time of the
invention have found it obvious to modify the combination of Allport and
Song by adding the teachings of Horowitz to render the claimed invention
unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 3, 17,
and 30, would one of ordinary skill in the art at the time of the invention
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Application 10/213,553
have found it obvious to modify the combination of Allport and Song by
adding the teachings of Ogasawara to render the claimed invention
unpatentable?
(iv) Under 35 U.S.C. § 103(a), with respect to appealed claim 32,
would one of ordinary skill in the art at the time of the invention have found
it obvious to modify the combination of Allport and Song by adding the
teachings of Blatz to render the claimed invention unpatentable?

PRINCIPLES OF LAW
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
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., 127
S. Ct. 1727, 1741(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

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Application 10/213,553

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 1 based on the combination of Allport and
Song, Appellant’s arguments in response assert a failure to set forth a prima
facie case of obviousness since the Examiner has not established a proper
basis for the proposed combination of references.1 We do not agree.
Appellant’s arguments to the contrary notwithstanding, we find that the
Examiner has set forth an articulated valid line of reasoning (Ans. 5) for
combining the SMS message teachings of Song with the programmable
device teachings of Allport. The Examiner’s reasoning has a substantial
basis of support in the disclosure of Song (col. 1, ll. 37-41) which describes
the advantages of controlling an external appliance by utilizing short
message service (SMS) transmission through a mobile communication
device.
We further find to be unpersuasive Appellant’s argument (Reply Br.
1-3) that the control commands transmitted by Song do not correspond to the
claimed programming information. As described by Song (col. 4, ll. 5-35),
the commands transmitted in SMS format by monitoring center 150
function to change the temperature of the exemplary heating system 100 “in
accordance with the specified internal program.” It is apparent from the
disclosure of Song that the transmitted control commands work in
conjunction with the internal programs of the monitoring center 150 and
heating system 100 to change the output temperature of the heating system

1 Appellant argues independent claims 1, 11, 21, 26, and 28 together as a
group. See App. Br. 4-6. Accordingly, we select claim 1 as representative.
See 37 C.F.R. § 41.37(c)(1)(vii).

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Application 10/213,553
and, in our view, would be reasonably interpreted by the skilled artisan as
“programming information” as claimed.
Accordingly, for all of the above reasons, since it is our opinion that
the Examiner’s prima facie case of obviousness has not been overcome by
any convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection, based on the combination of Allport and Song, of
representative independent claim 1, as well as claims 2, 4, 10, 11, 18, 20-24,
and 26-29 not separately argued by Appellant, is sustained.
We also sustain the Examiner’s obviousness rejection of dependent
claims 3, 5-9, 12-17, 19, 25, and 30-32 in which the teachings of the
secondary references to Horowitz, Ogasawara, and Blatz are applied in
various combinations with the combined teachings of Allport and Song.
Appellant has made no separate arguments as to the patentability of these
claims but, rather, has relied on arguments previously made with respect to
representative independent claim 1, which arguments we found to be
unpersuasive for all of the reasons discussed supra.

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Application 10/213,553

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2006).

AFFIRMED

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