Ex Parte Rouse et al

Board of Patent Appeals and Interferences

Sep 29, 2010

09750302 (B.P.A.I. Sep. 29, 2010)

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.
09/750,302 12/29/2000 Andrew Rouse 042846-0312814 6724
52796 7590 09/29/2010
PILLSBURY WINTHROP SHAW PITTMAN, LLP
c/o SUSAN TRADER
1650 TYSONS BOULEVARD
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
COULTER, KENNETH R
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
09/29/2010 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 ANDREW ROUSE, QUINTON ZONDERVAN, THOMAS
BENTLEY, TIMOTHY LAWSON, and CHRISTOPHER HEROT
____________

Appeal 2009-003644
Application 09/750,302
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and THU A.
DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21-40, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b). Appellants
requested but later waived an oral hearing.
We affirm.
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Application 09/750,302

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Invention
Appellants’ invention relates to enabling users to send and receive
messages and other information from mobile device, and allow
customization of various aspects of views and applications. See Abstract.

Representative Claim
21. A method of formatting content for display on a mobile
wireless client device that is based on a form that is used to display content
on a desktop computer, the form being associated with an action that is
executable by an application, wherein the form is stored remotely from the
mobile wireless client device, the method comprising:
displaying an action menu on the wireless client device, the action
menu including a plurality of action options;
enabling selection of the action from the action menu displayed on the
mobile wireless client device;
receiving, via a wireless medium, the selection of the action from the
mobile wireless client device;
executing the action remotely from the mobile wireless client device,
wherein executing the action generates content;
providing a mobile design element that corresponds to the form and is
associated with the mobile wireless client device;
formatting the content according to the mobile design element,
transmitting the content that is formatted according to the mobile
design element to the mobile wireless client device, and
storing the mobile design element remotely from the mobile wireless
client device in a application digest.

Examiner’s Rejections
Claims 21-40 stand rejected under on the ground of nonstatutory
obviousness-type double patenting over claims 1-28 of US 7,142,883 (Rouse
et al.).
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Application 09/750,302

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Claims 21-40 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kahan (US 2002/0024536 A1).
Claims 21-40 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kikinis (US 6,076,109).

FINDINGS OF FACT
We refer to, and rely on, the Examiner’s findings set forth in the Final
Rejection and the Answer.

PRINCIPLES OF LAW
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). Our reviewing court
has repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Amer. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.”
367 F.3d at 1364.

Appeal 2009-003644
Application 09/750,302

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ANALYSIS
Obviousness-type Double Patenting
Appellants indicate that the rejection for obviousness-type double
patenting is not being appealed. Appellants submit that they will “consider
filing a Terminal Disclaimer to overcome this rejection after the claims have
been determined to otherwise be in condition for allowance.” App. Br. 2 n.
1.
However, the claims and the double patenting rejection are before us.
The Examiner has not withdrawn the rejection, but repeats it in the Answer.
In view of the lack of substantive response from Appellants, we summarily
sustain the nonstatutory obviousness-type double patenting rejection of
claims 21 through 40.

Prior Art
Independent claim 21 recites in the preamble a method of formatting
“content” for display on a mobile wireless client device that is “based on a
form that is used to display content on a desktop computer.” The method
includes the steps of providing a mobile design element “that corresponds to
the form” and which is associated with the mobile wireless client device, and
formatting the content according to the mobile design element.
According to Appellants, these claim 21 features enable the user to
receive information on the mobile wireless client device “in a format similar
to the format in which the information would be presented to the user on a
desktop computer.” App. Br. 8; Reply Br. 4. Kikinis is alleged not to
format information “in a manner that mimics a customizable form used to
present information to a user on a desktop computer.” App. Br. 9. Although
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Appellants acknowledge that Kahan describes formatting content on a
mobile terminal according to predetermined settings, Appellants allege that
Kahan’s subscriber provisioning profile (mobile design element) is not
something that “corresponds to a form that is used to display content on a
desktop computer.” Id. at 15 (emphasis deleted).
According to Appellants, the claim 21 preamble feature of formatting
content for display on a mobile wireless client device that is “based on a
form that is used to display content on a desktop computer” is described in
the Specification at page 12, lines 6 through 12. App. Br. 3, “Summary of
Claimed Subject Matter.” The steps of providing a mobile design element
that “corresponds to the form” and formatting the content according to the
mobile design element finds support at page 30, lines 5 through 21 of the
Specification. See id. at 4.
The Specification thus provides the following text as support for the
phrase “based on a form that is used to display content on a desktop
computer.”
Request handlers 214 may include requests related to basic
operations (e.g., open application, read, view, open document,
read item, edit document, save document, delete document,
create document, etc.), electronic mail (e.g., compose mail,
send mail, save draft, etc.), calendar (e.g., process invite, read
calendar, add calendar, schedule meeting, fax calendar, etc.),
search functions (e.g., address search, find address, application
search, etc.), and miscellaneous (e.g., edit user profile, save user
profile, login, go to home deck, load script, move to folder,
session term, etc.).

Spec. 12:5-11.
The Specification later speaks more about “forms.”
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Multiple types of forms may be used by the present
invention for various applications. Different types of forms
may include facsimile, memorandum, invitation, user profile
and other applications. Forms for each application may include
predetermined form fields that are specific to each application.
Forms may be created, modified and forwarded (or sent) to one
or more selected recipients. Other operations may also be
performed.
For example, forms may be displayed as brief forms and
full forms. Other options are also available. For example a full
form may display all the fields available while a brief form may
display the fields selected (or customized) by the user.

Spec. 24:15 - 25:3.
In light of the Specification, providing a mobile design element that
“corresponds” to a “form that is used to display content on a desktop
computer” as claimed does not require that the content displayed at the
wireless client device be “in a format similar to the format in which the
information would be presented to the user on a desktop computer” as
alleged by Appellants. Moreover, even if the claim were so limited, there
would be no guidance for determining when a “similar” format is
sufficiently “similar” to be within the scope of the claim.
Because Appellants’ arguments are not commensurate with the scope
of claim 21, we are not persuaded of error in the Examiner’s finding that the
claim is anticipated by each of Kahan and Kikinis.
Although the Appeal Brief places additional claims in separate
headings, the arguments under some of the headings rely solely on the
improper interpretation of what claim 21 requires with respect to formatting
content for a wireless client device. Claims 22, 24-27, 29-32, 34-37, 39, and
40 thus fall with claim 21. See 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 23 recites that the method of claim 21 further comprises
customizing the form according to settings selected on the wireless client
device. Although the Appeal Brief alleges that the portions of Kikinis and
Kahan identified in the Final Rejection do not disclose the subject matter of
claim 23, Appellants filed a reply brief but did not respond to the
Examiner’s additional findings in the Answer that are directed to claim 23.
Appellants have thus not demonstrated error in the finding that Kahan
describes customizing the form according to settings selected on the wireless
client device by its disclosure of the change profile selection 62 (Fig. 6; ¶
[0092]). Nor have Appellants demonstrated error in the finding that Kikinis’
description of scaling a bitmap according to the user ID received from the
device (col. 10, ll. 30- 35) meets the requirements of claim 23.
We are therefore not persuaded of error in either § 102 rejection of
claim 23. Claims 28, 33, and 38, not separately argued, fall with claim 23.
See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The rejection of claims 21-40 on the ground of nonstatutory
obviousness-type double patenting over claims 1-28 of US 7,142,883 is
affirmed.
The rejection of claims 21-40 under 35 U.S.C. § 102(e) as being
anticipated by Kahan is affirmed.
The rejection of claims 21-40 under 35 U.S.C. § 102(e) as being
anticipated by Kikinis is affirmed.
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Application 09/750,302

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).

AFFIRMED

erc

PILLSBURY WINTHROP SHAW PITTMAN, LLP
c/o SUSAN TRADER
1650 TYSONS BOULEVARD
P.O. BOX 10500
MCLEAN VA 22102