Ex Parte Widmark et al

Patent Trial and Appeal Board

Aug 22, 2016

11910361 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111910,361 06/13/2008
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
08/24/2016
FIRST NAMED INVENTOR
Jerker Widmark
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P20034-US1 5134
EXAMINER
WOO, KUO-KONG
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
08/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERKER WIDMARK, ROLF BLOM,
STEINAR DAHLIN, and
CLARY HALLBERG DAHLIN
Appeal2015-001912
Application 11/910,3 61
Technology Center 2600
Before JOHNNY A. KUMAR, JOHN D. HAMANN, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson (publ). App. Br. 1.
Appeal2015-001912
Application 11/910,3 61
INVENTION
Appellants' invention relates to multi-operator telecommunication
distribution of service content. Abstract. Claiml is illustrative and reads as
follows:
1. A method for distributing service content, comprising the
steps of:
providing service content;
compiling a list of subscribers to which said service
content is to be distributed;
collecting information about said subscribers by
collecting, in a central network operator subsystem, subscriber
attributes for said subscribers on said list from operators of a
plurality of mobile communication networks, said central
network operator subsystem also functioning as a terminating
network; and
modifying said service content according to said collected
subscriber attributes to suit said subscriber attributes; and
distributing, to subscribers on said list, said service content
by distributing said service content modified according to
respective subscriber attributes.
REJECTIONS
Claims 1, 2, 8-16, 19-25, and 27 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Raivisto et al. (US 6,968,175 B2; issued Nov. 22,
2005) ("Raivisto").
Claims 3, 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Raivisto and Shamp et al. (US
7,239,871 B2; issued July 3, 2007) ("Shamp").
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Appeal2015-001912
Application 11/910,3 61
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Raivisto, Shamp, and Bookman et al. (US 2006/0253894
Al; published Nov. 9, 2006) ("Bookman").
Claims 17, 18, 26, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Raivisto and Bookman.
ANALYSIS
In rejecting independent claims 1, 19, and 27 for anticipation, the
Examiner found that column 4, lines 30-34, of Raivisto describe a
"'limiting' feature in the intermediate proxy" that meets the "modifying"
step recited in claim 1. Final Act. 3--4; Ans. 2-3.
Appellants contend the cited portion of Raivisto does not teach
"'modifying said service content according to said collected subscriber
attributes to suit said subscriber attributes,"' as recited in illustrative claim 1.
App. Br. 5. Appellants argue that, in Raivisto, the packets remain unaffected
by the intermediate proxy's counting of them. Id. at 6.
We agree with Appellants that the Examiner erred. The Examiner
identified Raivisto's "data services" provided to end users as disclosing the
claimed "service content." Final Act. 3 (citing Raivisto Abstract, col. 3,
1. 50). Raivisto discloses that intermediate proxy 130 includes a mechanism
134 to keep track of the data amount transmitted by content providers 220.
Raivisto, col. 4, 11. 3-5. Column 4, lines 30-34, of Raivisto, cited by the
Examiner, describe that the intermediate proxy may not count all transmitted
packets if the packets follow each other very rapidly, but do not describe
modifying the data services provided to end users. Raivisto, col. 4, 11. 30-
34. We do not agree with the Examiner that the feature limiting packet
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Appeal2015-001912
Application 11/910,3 61
counting in Raivisto is sufficient to meet the disputed claim step. See Ans.
2-3.
For at least these reasons, we are persuaded that the Examiner erred in
finding that the cited portions of Raivisto disclose the disputed limitation of
claim 1. Each of independent claims 19 and 2 7 recites limitations similar to
the "modifying" limitation of claim I. App. Br. 10-15.
Accordingly, on the record before us, we do not sustain the
Examiner's 35 U.S.C. § 102(b) rejection of independent claims 1, 19, and
27, or of claims 2, 8-16, and 20-25, dependent thereon. Because the
Examiner's 35 U.S.C. § 103(a) rejections of claims 3-7, 17, 18, 26, and 28
do not identify any additional teachings of Raivisto or any teachings in the
other applied prior art to overcome the deficiencies of Raivisto, we also do
not sustain those rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1-28.
REVERSED
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