Ex Parte Trevathan

Board of Patent Appeals and Interferences

Sep 21, 2011

10383261 (B.P.A.I. Sep. 21, 2011)

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.
10/383,261 03/07/2003 Matthew Bunkley Trevathan RSW920030025US1 1814
7590 09/22/2011
Roberts Mlotkowski Safran & Cole, P.C.
Ste. 500
7918 Jones Branch Drive
McLean, VA 22102
EXAMINER
AL AUBAIDI, RASHA S
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
09/22/2011 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 MATTHEW BUNKLEY TREVATHAN
____________

Appeal 2009-014514
Application 10/383,261
Technology Center 2600
____________

Before ERIC S. FRAHM, JEFFREY S. SMITH, and BRUCE R. WINSOR,
Administrative Patent Judges.

SMITH, 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 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellant’s invention relates to a method for enhancing the privacy of
recipients of personalizing text messages such as advertisements delivered to
communication terminals such as cellular telephones. A common carrier
such as a cellular telephone service provider gathers personal information
from a subscriber at the time the subscriber signs on for service and receives
a communication terminal. The carrier loads the terminal with a table that
assigns variables to elements of personal information. The carrier accepts
messages such as advertisements for distribution to subscribers. These
messages use the variables that the carrier has loaded into the subscribers’
terminals. When such a message is received, a subscriber’s terminal
replaces the variables with the elements of personal information by referring
to the table. Abstract.

Representative Claim
1. A method for personalizing a message from a
message originator delivered by a common carrier to a
subscriber of the common carrier, comprising the steps of:

loading, from a common carrier, a table into a
communication terminal used by a subscriber, the table
associating a variable with an element of personal information
about the subscriber;

accepting a message from a message originator, said
message using the variable to identify the element of personal
information; and

delivering the message to the subscriber.

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Examiner’s Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leapman (US 2002/0087401) and Hymel (US 6,157,814).

Claim Groupings
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

PRINCIPAL ISSUE
Did the Examiner err in finding that the combination of Leapman and
Hymel teaches “loading, from a common carrier, a table into a
communication terminal used by a subscriber, the table associating a
variable with an element of personal information about the subscriber” as
recited in claim 1?

FINDINGS OF FACT
We rely on, and adopt as our own, the findings of fact set forth by the
Examiner in the Final Rejection and the Examiner’s Answer.

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PRINCIPLES OF LAW
Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.

ANALYSIS
Appellant contends that neither Leapman nor Hymel teaches “loading,
from a common carrier, a table into a communication terminal used by a
subscriber, the table associating a variable with an element of personal
information about the subscriber” as recited in claim 1. In particular,
Appellant contends that neither Leapman nor Hymel teach a “table
associating a variable with an element of personal information about the
subscriber.” App. Br. 6-9; Reply Br. 2-7. The Examiner finds that the
claimed table encompasses the acceptance data taught in paragraphs 26, 31,
and 32 of Leapman. Ans. 4-5, 8-11.
Paragraph 26 of Leapman teaches that the user profile, or acceptance
data, includes company names, brand names, product information, service
information, and price information. Paragraph 32 teaches that acceptance
data includes a relative’s birthday extracted from a calendar entry and a
grocery item extracted from a task list. We find that person of ordinary skill
in the art would have recognized that acceptance data for categories such as
company names would be stored in a “table,” where a company name field,
or “variable,” is “associat[ed]” with the names of specific companies entered
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by a user, which are “elements of personal information about the
subscriber,” such as the subscriber’s interest in certain companies.
Appellant has provided no evidence tending to show that associating a data
field with data from a user was “uniquely challenging or difficult for one of
ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419). Leapman
therefore teaches a “table associating a variable with an element of personal
information about the subscriber” within the meaning of claim 1.
Appellant contends that using the method of loading information by a
common carrier into a communication terminal as taught by Hymel to load
the acceptance data as taught by Leapman does not teach “loading, from a
common carrier, a table into a communication terminal used by a subscriber,
the table associating a variable with an element of personal information
about the subscriber” as recited in claim 1. Reply Br. 4. Appellant further
contends that the Examiner has not provided a motivation or rationale as to
why one of ordinary skill in the art would combine the features of Leapman
and Hymel. Reply Br. 5-7.
We find that using the method of loading information from a common
carrier into a communication terminal as taught by Hymel to load the table
as taught by Leapman is the combination of familiar elements according to
known methods that does no more than yield predictable results. On this
record, we are of the view that Appellant’s purported improvement over the
prior art represents no more than the predictable use of prior art elements
according to their established functions, and thus would have been obvious
to one of ordinary skill in the art. See KSR, 550 U.S. at 417 (“[W]hen a
patent ‘simply arranges old elements with each performing the same
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function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” (citing
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
We sustain the rejection of claim 1 under 35 U.S.C. § 103.
Appellant’s arguments presented for claims 3-6, 8-12, and 14-20 are similar
to those presented for claim 1, which we find unpersuasive.

CONCLUSION OF LAW
The Examiner did not err in finding that the combination of Leapman
and Hymel teaches “loading, from a common carrier, a table into a
communication terminal used by a subscriber, the table associating a
variable with an element of personal information about the subscriber” as
recited in claim 1.

DECISION
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Leapman and Hymel is affirmed.
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

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