Ex Parte Salonen

Board of Patent Appeals and Interferences

Apr 23, 2012

10734352 (B.P.A.I. Apr. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JUKKA SALONEN 8
___________ 9
10
Appeal 2010-010132 11
Application 10/734,352 12
Technology Center 3600 13
___________ 14
15
16
Before HUBERT C. LORIN, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
21
22
DECISION ON APPEAL23
Appeal 2010-010132
Application 10/734,352

2

STATEMENT OF THE CASE1 1
Jukka Salonen (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 19 and 21-23, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of booking a reservation in a booking 6
system and synchronizing bookings in several booking systems. (Spec. 7
1:Field of the Invention). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 19, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
19. A method of a mediator authenticating a client, 12
the client using a mobile telephonic device 13
capable of sending and receiving short message 14
service (SMS) messages 15
and 16
having a client identifier address, 17
the mediator performing acts including: 18
a) assigning a unique reply address 19
to an SMS message 20
from a multiplicity of available predefined reply 21
addresses; 22
b) sending the SMS message 23
to the client at the client identifier address; 24
and 25
c) when a SMS message is received at the unique reply address 26
authenticating the client. 27
28
29

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 25, 2010) and Reply Brief (“Reply Br.,” filed June 29,
2010), and the Examiner’s Answer (“Ans.,” mailed May 14, 2010).
Appeal 2010-010132
Application 10/734,352

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1
The Examiner relies upon the following prior art: 2
Tarnanen US 6,085,100 Jul. 4, 2000 3
Kagi US 2002/0028686 A1 Mar. 7, 2002 4
Kupsh US 7,149,537 B1 Dec. 12, 2006 5
6
Claims 19 and 21-23 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Tarnanen, Kagi, and Kupsh.2 8
ISSUE 9
The issue of obviousness turns primarily on whether the art describes 10
assigning a unique reply address to an SMS message from a multiplicity of 11
available predefined reply addresses. 12
FACTS PERTINENT TO THE ISSUES 13
Facts Related to the Prior Art 14
Tarnanen 15
01. Tarnanen is directed to routing a short message via a short 16
message gateway application in a digital mobile system by 17
receiving, in a short message gateway application, a data message 18
containing the original source address and destination address, 19
converting the data message into a short message, transmitting the 20
short message to a terminal equipment determined in the 21
destination address via the mobile system. Tarnanen 1:4-12. 22
02. Tarnanen’s subscriber is provided with a transparent routine for 23
answering to short messages. A short message is routed to its 24
original source address by a dynamic database connected to the 25

2 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph.
Ans. 4.
Appeal 2010-010132
Application 10/734,352

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system. Tarnanen does this by forming an identifier identifying 1
the short message, forming a temporary source address of the 2
short message by combining the address of the gateway 3
application and the identifier identifying the short message or a 4
part of it, storing, in the gateway application, the routing data of 5
the short message containing the original source address of the 6
data message and said identifier identifying the short message, 7
receiving from the mobile station a reply short message containing 8
said identifier identifying the short message, retrieving from the 9
routing data the original source address on the basis of said 10
identifier identifying the short message, transmitting a reply 11
message to said original source address. Tarnanen 2:21-46. 12
03. The invention also relates to a digital mobile system comprising 13
terminal equipment signaling with the system on predetermined 14
signaling channels, at least one short message service centre with 15
which the terminal equipment can exchange short messages, and 16
at least one short message gateway application connected to at 17
least one short message service centre for converting the data 18
messages arriving at the short message service centre into the 19
short message form. The system is characterized in that the 20
gateway application forms the temporary source address of the 21
short message by combining the identifier identifying the short 22
message or a part of it to the address of the gateway application, 23
the gateway application stores the routing data of the short 24
message, the routing data comprising the original source address 25
of the message and the identifier identifying the short message, in 26
Appeal 2010-010132
Application 10/734,352

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response to the reception of the reply message, the gateway 1
application retrieves from the routing data the original source 2
address of the message by means of the identifier used for 3
identifying the short message, the gateway application transmits 4
the reply message to said original source address of the message. 5
04. The invention is based on the idea that a gateway application 6
processing data messages arriving from the outside is provided 7
with a database for the routing data of short messages. During the 8
formation of a short message, the gateway application creates in 9
the database a record comprising the network address of the party 10
that originally transmitted the message and an identifier by means 11
of which the short message is identified. When a subscriber 12
replies to the short message by means of the reply path, the reply 13
message is routed back to the gateway application. The gateway 14
application carries out a search in the database by means of the 15
identifier and routes the message to an external network or to 16
some other destination on the basis of the original network address 17
retrieved from the database. 18
Kagi 19
05. Kagi is directed to making offers for sale, and accepting the offers 20
of the sale of goods using the short message service of a mobile 21
telephone. Kagi ¶ 0003. 22
06. Kagi describes the need to authenticate an SMS transmission. 23
Kagi ¶ 0029. 24
Appeal 2010-010132
Application 10/734,352

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Kupsh 1
07. Kupsh is directed to messaging over mobile communications 2
systems and maintenance of a user-accessible log of messaging 3
activity. Kupsh 1:7-10. 4
08. Kupsh shows that messages may be identified by their recipients, 5
who are identified in a database. Kupsh 6:17-30. 6
ANALYSIS 7
Claims 19 and 22 are the only independent claims, and are similar in 8
limitations. Appellant argues claim 19 alone and within that, limitation (a) 9
is the sole limitation at issue. 10
We are not persuaded by the Appellant’s argument that claim 19 11
is patentable over the combination of Tarnanen, Kagi, and 12
Kupsh for at least the reason that the combination fails to 13
disclose or suggest "assigning a unique reply address to an SMS 14
message from a multiplicity of available predefined reply 15
addresses" as recited in claim 19. 16
17
Appeal Br. 5. Appellant argues that Tarnanen uniquely defines such an 18
address rather than selecting it from predefined addresses. Id. We adopt the 19
Examiner’s findings of fact and analysis from Answer pages 7-12 and reach 20
similar legal conclusions. In particular, the Examiner found 21
[f]irst, the Examiner notes that Tarnanen was cited to teach 22
"assigning a unique reply address to an SMS message from a 23
multiplicity of available reply addresses (as discussed above). 24
Kupsh was only cited to show that it was old and well known in 25
the art at the time of the invention to predefine a reply address. 26
27
Ans. 11. 28
The issue appears to come down to claim construction and scope. 29
Appellant appears to construe the phrase “assigning a unique reply address 30
Appeal 2010-010132
Application 10/734,352

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to an SMS message from a multiplicity of available predefined reply 1
addresses” as selecting an already complete and final reply address from a 2
list of such already complete and final addresses. The Examiner appears to 3
construe “from” more broadly to include “based on” so that the assignment 4
of an address is based on available predefined addresses. As Tarnanen’s 5
address is constructed from such an address, by admittedly adding a time 6
stamp that would not have been included in that basis address, Tarnanen 7
does fit within the scope of the limitation as phrased. The Examiner’s 8
finding as to the notoriety of using preselected alternatives would then 9
extend the combination of Tarnanen and this finding as evidenced by Kupsh 10
to a construction as envisioned by Appellant. 11
CONCLUSIONS OF LAW 12
The rejection of claims 19 and 21-23 under 35 U.S.C. § 103(a) as 13
unpatentable over Tarnanen, Kagi, and Kupsh is proper. 14
DECISION 15
The rejection of claims 19 and 21-23 is affirmed. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2011). 19
20
AFFIRMED 21
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hh 24