Ex Parte Salmi et al

Board of Patent Appeals and Interferences

Dec 14, 2009

09761040 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTTI SALMI, DOGU CETIN, MISKA HANNUKSELA,
ROBERTO CASTAGNO, and MIKA RANTANEN
____________

Appeal 2009-000912
Application 09/761,040
Technology Center 2400
____________

Decided: December 14, 2009
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JEAN R.
HOMERE, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-26. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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Application 09/761,040

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INVENTION
The invention at issue on appeal relates to "[a] method for presenting
information contained in messages in a multi-media terminal, a system for
transmitting multimedia messages, and a multimedia terminal." (Spec. 1.)

ILLUSTRATIVE CLAIM
1. A method for presenting information contained in user
messages transmitted to a multimedia terminal in a multimedia
messaging system in a user interface of the multimedia
terminal, in which method the user message comprises address
data indicative of a recipient of the user message and at least
one multimedia component, wherein in the method, a
presentation model is formed to contain information related to
at least one multimedia component included in the user
message, said presentation model is supplemented with a
reference to the location of data in said user message related to
presenting said at least one multimedia component included in
said user message, said last recited user message being the same
user message as said first recited user message, said
presentation model is added to said same user message.1

PRIOR ART
Jaisimha US 6,487,663 B1 Nov. 26, 2002

1 "Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line
indentation." 37 C.F.R. § 1.75(i). Here, the lack of separation of the
elements and steps obfuscates the claim.

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REJECTION
Claims 1-26 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Jaisimha.

ISSUE
The issue before us is whether claims 1-26 are indefinite and thus
prevent us from reaching the rejection for anticipation.

LAW
"The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention." 35 U.S.C. § 112, ¶ 2. "The legal standard for
definiteness is whether a claim reasonably apprises those of skill in the art of
its scope." In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing
Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217 (Fed.
Cir. 1991)). For example, a claim is indefinite "where the language 'said
lever' appears in a dependent claim where no such 'lever' has been
previously recited . . . ." Ex parte Moelands, 3 USPQ2d 1474, 1476 (BPAI
1987). Furthermore, "[t]he drawing in a nonprovisional application must
show every feature of the invention specified in the claims." 37 C.F.R.
§ 1.83(a).

A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
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the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

FINDINGS OF FACT (FFS)
1. Independent claim 1 recites the following limitations:
1. A method for presenting information contained in user
messages transmitted to a multimedia terminal in a multimedia
messaging system in a user interface of the multimedia
terminal, in which method the user message comprises address
data indicative of a recipient of the user message and at least
one multimedia component, wherein in the method, a
presentation model is formed to contain information related to
at least one multimedia component included in the user
message, said presentation model is supplemented with a
reference to the location of data in said user message related to
presenting said at least one multimedia component included in
said user message, said last recited user message being the
same user message as said first recited user message, said
presentation model is added to said same user message.

(Emphases added.)

2. Claim 1 recites in pertinent part the following limitations:
the user message comprises address data indicative of a
recipient of the user message and at least one multimedia
component, wherein in the method, a presentation model is
formed to contain information related to at least one multimedia
component included in the user message, said presentation
model is supplemented with a reference to the location of data
in said user message related to presenting said at least one
multimedia component included in said user message . . . .

(Emphases added.)

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3. The same claim recites in pertinent part the following limitations:
"said last recited user message being the same user message as said first
recited user message."

4. The Appellants' Figure 6b follows.

Figure 6b "shows the rough structure of a multimedia message formed by
the method according to a preferred embodiment of the invention . . . ."
(Spec. 5.)

5. The Appellants' Figure 6c follows.

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Figure 6c "shows another rough structure of a multimedia message formed
by the method according to a preferred embodiment of the invention."
(Spec. 5.)

6. Claim 22 recites in pertinent part the following limitations:
22. A receiving multimedia terminal which comprises:
a receiver configured to receive user messages,
a user interface configured to present information contained in
the user messages, wherein each user message comprises
address data indicative of a recipient of the user message and at
least one multimedia component,
an interpretation block configured to interpret a presentation
model attached in a user message . . . .
(Emphases added.)

ANALYSIS
Claim 1 (FF 1), claim 21, and claim 26 recite "the user message,"
"said last recited user message," "said first recited user message," "the same
user message," and "said same user message." The three claims fail,
however, to previously recite "a user message," "a last recited user
message," "a first recited user message," or "a same user message."

Similarly, claim 12 and claim 22 recite "said last recited user
message," "said first recited user message," "the same user message," and
"said same user message." The two claims fail, however, to previously
recite "a last recited user message," "a first recited user message," or "a
same user message."

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Claim 1 (FF 2) and claim 21 twice recite "at least one multimedia
component." The two claims fail, however, to reasonably apprise those of
skill in the art of the relation between the two recitations. For example, it is
uncertain whether these recitations refer to the same multimedia component
or different multimedia components. If these refer to the same component,
the relation could be clarified by adding the qualifier "said" to the second
recitation.

Furthermore, claim 1 (FF 2) and claim 21 recite "said at least one
multimedia component." The two claims fail, however, to reasonably
apprise those of skill in the art to which, if either, of the two previously
recited instances of "at least one multimedia component" the qualifier "said"
in "said at least one multimedia component" refers.

Claim 1 (FF 3), claim 12, claim 21, and claim 22 also recite "said last
recited user message being the same user message as said first recited user
message." The four claims fail, however, to reasonably apprise those of skill
in the art of what it means for the last recited message to be the same as the
first recited message. The Appellants' Summary of Claimed Subject Matter
cites to "Figs. 6b and 6c" (Appeal Br. 8) in an attempt to clarify the
limitations. Each of these Figures, however, shows only a single message.
(FF 4 and 5.) Furthermore, the message shown in Figures 6b and the
message shown in Figure 6c appear to be different messages (rather than the
same message.)

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Also, claim 22 recites "a receiver configured to receive user
messages," "each user message comprises address data indicative of a
recipient of the user message and at least one multimedia component," [and]
an interpretation block configured to interpret a presentation model attached
in a user message . . . ." (FF 6.) The claim fails, however, to reasonably
apprise those of skill in the art of the relation, if any, between "a user
message" and the previously recited "user messages" and "each user
message."

Claim 1 (FF 1), claim 12, claim 21, and claim 22 also recite "said
presentation model is supplemented with a reference to the location of data
in said user message." Claim 26 recites similar limitations. Figures 6b and
6c show "SMIL" fields. (FFs 4 and 5.) Because none of the Appellants'
figures shows the content of the SMIL fields, however, it is unclear that the
Appellants have depicted the "reference to the location of data in said user
message." Furthermore, the Appellants' Summary of Claimed Subject
Matter does not explain where this limitation is depicted.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that
claims 1-26 are indefinite. Therefore, we reject claims 1-26 under 35 U.S.C.
§ 112, ¶ 2 as indefinite for failing to particularly point out and distinctly
claim the Appellants' invention.

Furthermore, the indefiniteness of these claims leaves us in a
quandary as to what they specify. Speculations and assumptions would be
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required to decide the meaning of the terms employed therein and the scope
of the claims. Therefore, we reverse pro forma the Examiner's rejection of
these claims.

We emphasize that our reversal is based on procedure rather than on
the merits of the obviousness rejections. The reversal does not mean that we
consider the claims to be patentable under 35 U.S.C. § 102(e) as presently
drawn.

DECISION
We reverse the rejection of claims 1-26 and enter a new rejection
against the same claims.

37 C.F.R. § 41.50(b) provides that "[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that, within two months from the date of the
decision, the appellant must exercise one of the following options to avoid
termination of proceedings of the rejected claims:
(1) 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 proceeding will be
remanded to the examiner. . . .

(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record. . . .

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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)(1). See
37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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