Ex Parte Saukkonen et al

Board of Patent Appeals and Interferences

Dec 16, 2010

10178936 (B.P.A.I. Dec. 16, 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.
10/178,936 06/20/2002 Topi Saukkonen 915-003.015 1847
4955 7590 12/17/2010
WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
HAIDER, FAWAAD
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
12/17/2010 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 TOPI SAUKKONEN,
VIRVE INGET,
and PANU MARKKANEN
___________

Appeal 2009-009589
Application 10/178,936
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision
Appeal 2009-009589
Application 10/178,936

2
STATEMENT OF THE CASE
Topi Saukkonen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 12-13, 15-21, and 23-24. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 2

THE INVENTION
This invention is an apparatus with which multiple users can gain
access to a service using associated data entities. Specification 1:3-8.
Claims 12, 23, and 24, reproduced below, are illustrative of the
subject matter on appeal.
12. A mobile user terminal comprising:
means for receiving a signal comprising a
tag portion identifying a primary service;
means for accessing a data store of the
mobile user terminal holding data entities;
means for identifying in said data store of
the mobile user terminal a plurality of data entities
associated with said identified service, including
means for comparing data in a tag field of each
data entity with the tag portion corresponding to
said identified service;

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 11, 2008) and Reply Brief (“Reply Br.,” filed Feb. 6, 2009),
and the Examiner’s Answer (“Answer,” mailed Dec. 11, 2008).

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means for enabling a user to select which
ones of said plurality of data entities is to be
transmitted; and
means for controlling a wireless interface to
transmit said selected data entities in a single
transaction.

23. An access device comprising:
a processor configured for restricting access
to a service;
a transmitter for transmitting a signal
comprising a tag portion identifying said service;
a receiver for receiving data entities
transmitted in a single transaction from a user
terminal comprising a transaction processor
configured to access a data store holding data
entities, configured for identifying said service to
be provided based on said signal, and configured
for identifying in said data store of said user
terminal a plurality of data entities associated with
said identified service including comparing data in
a tag field of each data entity with the tag portion
corresponding to said identified service; and
in response to those transmitted data entities
providing access to the service.

24. A mobile user terminal comprising:
a wireless interface for receiving a signal
comprising a tag portion identifying a primary
service;
a transaction processor configured for
accessing a data store of the mobile user terminal
holding data entities, configured for identifying the
primary service to be provided based on said
signal, and configured for identifying in said data
store of the mobile user terminal a plurality of data
entities associated with said identified service
including comparing data in a tag field of each
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Application 10/178,936

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data entity with the tag portion corresponding to
said identified service;
a user interface for enabling a user to select
which ones of said plurality of data entities is to be
transmitted; and
a controller for controlling said wireless
interface to transmit said selected data entities in a
single transaction.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Iannacci
O’Hagan
US 2002/0062249 A1
US 6,595,417 B2
May 23, 2002
Jul. 22, 2003
The Appellants’ Admitted Prior Art on pages 1-3 of the Specification.
[Hereinafter, AAPA].
The Examiner took official notice “of the old and notoriously old
means for designating a service provider for working with a given pieces of
hardware.” Answer 4. [Hereinafter, Official Notice.]
The following rejection is before us for review:
1. Claims 12-13, 15-21, and 23-24 are rejected under 35 U.S.C.
§103(a) as being unpatentable over AAPA, O’Hagan, Iannacci,
and Official Notice.

ISSUES
The first issue is whether claim 12 is unpatentable under 35 U.S.C.
§ 103(a) over AAPA, O’Hagan, Iannacci, and Official Notice. Specifically,
the issue is whether the combination of the prior art teaches a means for
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controlling a wireless interface to transmit said selected data entities in a
single transaction.
The second issue is whether claim 24 is unpatentable under 35 U.S.C.
§ 103(a) over AAPA, O’Hagan, Iannacci, and Official Notice. Specifically,
the issue is whether the combination of the prior art teaches a controller for
controlling said wireless interface to transmit said selected data entities in a
single transaction. The rejection of claims 13 and 15-21 under 35 U.S.C. §
103(a) over AAPA, O’Hagan, Iannacci, and Official Notice also turns on
this issue.
The third issue is whether the Examiner erred in rejecting claim 23
under 35 U.S.C. §103(a) as being unpatentable over AAPA, O’Hagan,
Iannacci, and Official Notice.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification discloses a mobile terminal that has an input
device and that is programmed to give the user the option to
simultaneously select all, more than one, only one, or none of the
e-tickets to transmit to a receiver. See Specification 7: 24-31,
15:23-32, 17:19-26, and Fig. 1.
2. O’Hagan describes that, as each item is selected, sending a link
request from the customer terminal to the host computer to add or
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remove an item from the customer’s running total. Col. 16, l. 64 –
col. 17, l. 14. See also Fig. 17, steps 600, 602, and 606.
3. O’Hagan describes that when the customer finishes shopping a
checkout page is requested by the customer. Col 17, ll. 15-19.
4. O’Hagan describes that the checkout pages includes a visual
representation of the of the customer’s receipt, a “pay cash” 630
button, a “debit card” 632 button, and a “credit card” 634 button.
Col. 17, ll. 20-34. See Fig. 18.
5. O’Hagan describes the interface is programmed so that if the “pay
cash” 630 button, “debit card” 632 button, or the “credit card” 634
button is chosen a link request is sent to activate the respective
checkout program. Col. 17, ll. 20-34.

ANALYSIS
The rejection of claims 12-13, 15-21, and 23-24 under §103(a) as being
unpatentable over AAPA, O’Hagan and Iannacci.
Claim 12
The Appellants argue that the cited references do not teach the means
for controlling a wireless interface to transmit said selected data entities in a
single transaction recited in claim 12. App. Br. 4 and Reply Br. 2-3.
35 U.S.C. § 112, paragraph 6:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
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Construing means-plus-function claim language in accordance with 35
U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d
1369, 1376 (Fed.Cir.2001). “The court must construe the
function of a means-plus-function limitation to include
the limitations contained in the claim language, and only
those limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). . . . The
next step in construing a means-plus-function claim
limitation is to look to the specification and identify the
corresponding structure for that function. “Under this
second step, ‘structure disclosed in the specification is
“corresponding” structure only if the specification or
prosecution history clearly links or associates that
structure to the function recited in the claim.’ ” Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1424
(Fed.Cir.1997)).
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
The Appellants cite Figure 1, page 7, lines 24-31, page 15, lines 23-
32, and page 17, lines 19-26 of the Specification as describing the
corresponding structure. App. Br. 3. These passages disclose a mobile
terminal that has an input device and that the terminal is programmed to give
the user the option to simultaneously select all, more than one, only one, or
none of the e-tickets to transmit to a receiver. FF 1. Therefore, claim 12 is
construed to require a mobile terminal with an input device that is
programmed to perform as disclosed or an equivalent.
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To teach this limitation, the Examiner relies upon a combination of
AAPA and O’Hagan. The Examiner found that AAPA teaches an interface
that transmits one e-ticket (i.e. selected data entities) at a time (Answer 4)
and admits that AAPA fails to disclose means for controlling the wireless
interface to transmit selected data entities in a single transaction (Answer 5).
The Examiner relies upon O’Hagan to teach transmitting selected data
entities in a single transaction. Id. The Examiner states: “But, O’Hagan et
al. . . . further discloses at Fig 18 an interface which transmits in a single
trans[ac]tion the entities selected by pushing one of buttons 630,632,643.”
Id.
We disagree with the Examiner that Fig. 18 and buttons 630, 632, and
643 teach an interface that transmits in a single transaction selected entities.
O’Hagan describes that the interface is programmed so that if the “pay cash”
630 button, “debit card” 632 button, or the “credit card” 634 button is
chosen a link request is sent to activate the respect checkout program. FF 5.
This does not teach the means at issue. To the extent that the Examiner may
be asserting, that O’Hagan teaches sending the selected items shown in
Figure 18 to the host when one of these buttons is selected, we note the
O’Hagan does not disclose this. O’Hagan instead describes sending a link
request to the host computer to add or remove a product from the list for
each item when it was selected. FF 2. See also FF 3-5. Therefore, we find
that the Examiner has not established that given the teachings of AAPA and
O’Hagan one of ordinary skill in the art would have been led to the
corresponding mobile terminal disclosed in the Specification or an
equivalent.
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Accordingly, we find that the Appellants have overcome the rejection
of claim 12 under 35 U.S.C. § 103(a) as being unpatentable over AAPA,
O’Hagan, Iannacci, and Official Notice.

Claim 24
Claim 24 recites: “a controller for controlling said wireless interface
to transmit said selected data entities in a single transaction.” Claim 24
requires a controller that a structure that is capable of controlling the
wireless interface to transmit the selected data entities in a single
transaction. Cf. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
For the reasons discussed above with regards to claim 12, we find that the
Examiner has not established that one of ordinary skill in the art would not
have been led to by AAPA, O’Hagan, Iannacci, and Official Notice to a
controller that has such a structure. Accordingly, we find that the
Appellants have overcome the rejection of claim 24 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, O’Hagan, Iannacci, and
Official Notice.

Claims 13 and 15-21
These rejections are directed to claims dependent on claim 24, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of claims 13 and 15-21 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").

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Claim 23
To traverse the rejection of claim 23, the Appellants merely argue
that: “Independent claims 23 and 24 contain limitations similar to those
recited in claim 12. Therefore, for at least the reasons discussed above with
respect to claim 12, appellant respectfully submits that claims 23 and 24 are
not disclosed or suggested by the cited references.” App. Br. 7. However,
contrary to the Appellants’ assertion, claim 23 does not recite limitations
similar to the means for identifying and the means for controlling at issue
with regards to claim 12. Claim 23 is not directed to a mobile terminal as is
recited in claims 12 and 24, but to an access device.
Filing a Board appeal does not, unto itself, entitle
an appellant to de novo review of all aspects of a
rejection. If an appellant fails to present
arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072, 1075 2009-006013 (BPAI
2010)(precedential). The Appellants’ arguments do not address the
limitations of claim 23, which differ from those of claim 12.
Accordingly, we find that the Appellants have not overcome the
rejection of claim 23 under 35 U.S.C. § 103(a) over AAPA, O’Hagan,
Iannacci, and Official Notice.

DECISION
The decision of the Examiner to reject claims 12-13, 15-21, and 24 is
reversed and to reject claim 23 is affirmed.
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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.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mev

WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE CT 06468