Ex Parte Trossen et al

Board of Patent Appeals and Interferences

Jun 27, 2012

10313489 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/313,489 12/06/2002 Dirk Trossen 990-001.560 8811
20413 7590 06/28/2012
FRANCIS J MAGUIRE
WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON LLP
BRADFORD GREEN, BUILDING FIVE
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
ENG, DAVID Y
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
06/28/2012 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 DIRK TROSSEN and HEMANT M. CHASKAR
____________

Appeal 2009-014823
Application 10/313,489
Technology Center 2400
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and JENNIFER S.
BISK, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014823
Application 10/313,489

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, 9-23, 25-37, and 39-45, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a system, method and computer
program product for the delivery of media content. Title.

Representative Claim
1. A method comprising:

receiving a multimedia message from a sending entity
and addressed to at least one recipient, wherein the multimedia
message includes media content;

identifying at least one rule comprising at least one
sending entity rule defining a rule provided by the sending
entity, and wherein the at least one rule is identified prior to
delivering the media content; and

delivering the media content to the at least one recipient
based upon the respective at least one rule.

Prior Art
Waese US 6,286,031 B1 Sept. 4, 2001
Smith US 6,452,905 B1 Sept. 17, 2002
Sahai US 6,594,699 B1 July 15, 2003
(filed Oct. 10, 1997)
Kahveci US 6,938,080 B1 Aug. 30, 2005
(filed June 7, 2000)
Appeal 2009-014823
Application 10/313,489

3
Firestone US 6,965,646 B1 Nov. 15, 2005
(filed June 28, 2000)

Nagai US 6,993,689 B2 Jan. 31, 2006
(filed Oct. 30, 2001)

Examiner’s Rejections
Claims 37, 39-42, and 45 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1, 9-11, 17, 25-27, 33-37, and 43-45 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kahveci and Sahai.
Claims 2-5 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kahveci, Sahai, and Waese.
Claims 6, 7, 21-23, and 39-42 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kahveci, Sahai, and Firestone.
Claims 12-16 and 28-31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kahveci, Sahai, and Nagai.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kahveci, Sahai, and Smith.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1.

Appeal 2009-014823
Application 10/313,489

4
ANALYSIS
Section 101 rejection
The Examiner rejects claim 37 because a computer program product is
not statutory subject matter because the program codes are non-functional
descriptive material. Ans. 10-11. Appellants contend that the executable
portions of code stored on the computer readable medium are functional
descriptive material and are on a computer-readable storage medium. App.
Br. 4-5.
We agree with Appellants. The Specification only discloses the
computer-readable storage medium as non-volatile storage medium (see
Spec. 28:7-11) and does not cover transitory embodiments. See Subject
Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Office 212
(Feb. 23, 2010). We do not sustain the rejection of claims 37, 39-42, and 45
under 35 U.S.C. § 101.

Section 103 rejections
Appellants contend the user preferences of Sahai are receiver rules,
not sender rules. App. Br. 5-7. The Examiner finds that Sahai teaches
sender rules. Ans. 7-8, 11-12.
We agree with the Examiner. The scope of “a rule provided by the
sending entity,” when read in light of pages 14 and 15 of Appellants’
Specification, encompasses a rule defining how the media content is
delivered or processed, such as a rule based upon the connectivity of the
respective recipients or a rule specifying a network for delivering media
content. Sahai teaches a server that sends data to a client based on client
capabilities (col. 2, ll. 61-64; col. 4, ll. 32-39) or based on delivery paths for
Appeal 2009-014823
Application 10/313,489

5
multimedia traffic from the server to the client (col. 4, ll. 44-49). See also
Ans. 7-8 (citing to columns 2 and 4). Therefore Sahai teaches “a rule
provided by the sending entity” within the meaning of claim 1.
Appellants also contend that the application service provider (ASP) of
Kahveci is a network entity, not a sending entity; therefore, Kahveci does
not teach a sending entity rule defining a rule provided by the sending entity.
Reply Br. 2. The Examiner finds that the ASP of Kahveci is a sending entity
that, when combined with Sahai, provides a sending entity rule as recited in
claim 1. Ans. 5-7.
We agree with the Examiner. Appellants have not provided a
definition of “sending entity” that excludes the ASP taught by Kahveci.
Appellants have failed to show error in the Examiner’s finding that the
combination of Kahveci and Sahai teaches “identifying at least one rule
comprising at least one sending entity rule defining a rule provided by the
sending entity” as recited in claim 1.
Appellants contend that the combination of Kahveci and Sahai does
not teach “receiving a multimedia message from the sending entity and
addressed to at least one recipient” as recited in claim 1. App. Br. 7-8. The
Examiner finds that Kahveci teaches a server that receives a multimedia
message from a sending entity and addressed to a recipient. Ans. 4-7, 12.
The Examiner also finds that Sahai teaches a server that receives a
multimedia message from a sender and addressed to a recipient. Ans. 7-8,
12. Appellants have not provided persuasive evidence or argument to rebut
the Examiner’s findings.
Appellants present arguments for claims 2-7, 9-23, 25-37, and 39-45
similar to those presented for claim 1 which we find unpersuasive. Compare
Appeal 2009-014823
Application 10/313,489

6
App. Br. 8-12 with App. Br. 5-8. Based on our above discussion, we need
not address whether Waese, Firestone, Nagai, or Smith cures any purported
deficiencies in claims 1, 17, or 37.
Lastly, Appellants assert that the final Office Action is improper.
App. Br. 12-14. Such issues are petitionable matters under 37 C.F.R.
§ 1.181 and will not be addressed on appeal. See MPEP §§ 1002 and 1201.
We sustain the rejections of claims 1-7, 9-23, 25-37, and 39-45 under
35 U.S.C. § 103.

DECISION
The rejection of claims 37, 39-42, and 45 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is reversed.
The rejections of claims 1-7, 9-23, 25-37, and 39-45 under 35 U.S.C.
§ 103(a) are 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

rwk