Ex Parte Douillet et al

Patent Trial and Appeal Board

Aug 29, 2018

13189115 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/189,115 07/22/2011
37123 7590 09/04/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Ludovic Douillet
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.
7114-95683-US (3368) 9570
EXAMINER
BHARGA VA, ANIL K
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
09/04/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LUDOVIC DOUILLET, NOBUKAZU SUGIYAMA,
WILLIAM COLLINS, and JEFFREY TANG
Appeal2016-006556
Application 13/189, 115 1
Technology Center 2100
Before JASON V. MORGAN, TERRENCE W. McMILLIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
Appellants disclose an electronic device that allows a user to "select
from among various types of content to include in an electronic
1 Appellants identify Sony Corporation as the real party in interest. Appeal
Br. 3.
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Application 13/189,115
communication," where the selectable content "can be updated and changed
on a periodic basis through communication between the ... electronic
communication device and a central computing device." Abstract.
Representative Claim (key limitations emphasized)
1. A method comprising:
receiving a signal to prepare an electronic message to be sent from a
communication device; displaying a plurality of icons on a display
device for the communication device, wherein a sub-set of the
plurality of icons includes icons corresponding to different categories
of content, the categories including at least two of emoticon type
content, audio content, video content, or short "canned" content, to
include in the electronic message;
receiving from a central computing device predefined content
available to be inserted into the electronic message;
receiving a user signal indicating selection of a selected icon of the
sub-set of the plurality of icons;
in response to receiving the user signal indicating selection of the icon
of the sub-set of the plurality of icons, displaying a second set of icons
at least partially different from the first set of icons, wherein
individual ones of the second set of icons represent content
corresponding to a category of content corresponding to the selected
icon of the sub-set of the plurality of icons and available to be inserted
into the electronic message in response to selection of the individual
icon, wherein at least some of the second set of icons represent the
predefined content from the central computing device; and
automatic communicating of the communication device with the
central computing device, wherein the predefined content available to
be inserted into the electronic message is updated.
Rejections
The Examiner rejects claims 1--4 and 10-13 under 35 U.S.C. § I03(a)
as being unpatentable over Cunningham et al. (US 2006/0015812 Al;
published Jan. 19, 2006) ("Cunningham"), Moore et al. (US 2010/0125785
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Application 13/189,115
Al; published May 20, 2010) ("Moore"), Lorch et al. (US 2008/0216022
Al; published Sept. 4, 2008) ("Lorch"), and Tucker (US 2008/0117920 Al;
published May 22, 2008). Final Act. 3-8.
The Examiner rejects claims 5-8 and 14--16 under 35 U.S.C. § I03(a)
as being unpatentable over Cunningham, Moore, Lorch, Tucker, and
Czeisler et al. (US 2006/0069736 Al; published Mar. 30, 2006) ("Czeisler").
Final Act. 8-10.
The Examiner rejects claim 9 under 35 U.S.C. § I03(a) as being
unpatentable over Cunningham, Lorch, Moore, Tucker, McNamara et al.
(US 2009/0124268 Al; published May 14, 2009) ("McNamara") and Heikes
(US 2003/0225848 Al; published Dec. 4, 2003) ("Heikes"). Final Act. 10-
12.
The Examiner rejects claims 17-19 under 35 U.S.C. § I03(a) as being
unpatentable over McNamara, Heikes, and Moore. Final Act. 12-16.
ADOPTION OF EXAMINER'S FINDINGS AND CONCLUSIONS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
CLAIMS 1-8 AND 10-16
Findings and Contentions
In rejecting claim 1 as obvious, the Examiner relies on the combined
teachings of Cunningham, Moore, and Lorch to teach or suggest most of the
claim recitations. Final Act. 3---6. However, the Examiner relies on
Tucker's automatic harvesting, harmonizing, and caching of content from
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content services 120 directly to target device 140 without first caching at a
dedicated gateway device to render obvious modifying the teachings and
suggestions of the other references to further include automatic
communicating of the communication device with the central computing
device, wherein the predefined content available to be inserted into the
electronic message is updated. Final Act. 6 (citing Tucker Figs. 1, 5, ,r 62);
see also Reply Br. 3--4 (further citing Tucker ,r,r 19, 21; Cunningham ,r 28).
Appellants contend the Examiner erred because Tucker's "gateway
device is only configured to include a simplified user interface with LED
lights to indicate the gateway device status, and cannot display icons."
Appeal Br. 14 (footnote omitted). Appellants further argue "the target
device of Tucker does not automatically communicate with the content
server, as the automatic communication is handled by the gateway device."
Id.; see also Reply Br. 2.
Analysis
Appellants' argument that Tucker's simplified user interface cannot
display icons (Appeal Br. 14) is unpersuasive because the Examiner relies
on Cunningham and Moore, not Tucker, to teach or suggest recitations
related to displaying a plurality of icons on a display device (see Final Act. 4
(citing, e.g., Cunningham Figs. 3, 8; Moore Fig. 5A, ,r 181)). The Examiner
merely relies on Tucker to teach or suggest the automatic communicating
recitation of claim 1. See Final Act. 6.
Appellants' argument that Tucker's gateway, rather than the targeted
device, handles the automatic communications is also unpersuasive of error.
Appeal Br. 6; Reply Br. 2 ("the gateway device, not the content provider, is
in automatic communication with the target device"). The claim 1 recitation
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of "automatic communicating of the communication device with the central
computing device" is silent with respect to what handles the communication.
Furthermore, the Examiner's correctly finds that a connection from the
content service "can be automatically made to the [target] device" in Tucker.
Ans. 3 (citing Tucker Fig. 5, ,r 62). Specifically, once Tucker's
dedicated gateway device 140 is properly connected to the
content service 120 and the target device 150, [the dedicated
gateway device] begins harvesting, harmonizing, and caching
content from the content service 120 directly to the target device
140 connected thereto without first caching the content in the
dedicated gateway device.
Tucker ,r 62 (italicized emphasis added). Such harvesting, harmonizing, and
caching of content from the content service directly to the target device
represents an automatic communication of the communication device (i.e.,
the target device) with the central computing device (the content service).
Nothing in the disputed recitation precludes the automatic communication
from being initiated or handled by, or going through, another device such as
a dedicated gateway device. Therefore, we agree with the Examiner that
Tucker teaches or suggests modifying the combined teachings and
suggestions of Cunningham, Moore, and Lorch to include "automatic
communicating of the communication device with the central computing
device, wherein the predefined content available to be inserted into the
electronic message is updated." Final Act. 6.
Appellants further contend, for the first time in the Reply Brief,
"Cunningham teaches away from modification to include displayed icons
including icons corresponding to different categories of content." Reply
Br. 2. This argument, however, is untimely and will not be considered.
37 C.F.R. § 4I.41(b)(2) (2015).
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Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2--4 and 10-13, which Appellants do not argue
separately. Appeal Br. 14. Appellants also argue that Czeisler fails to cure
the alleged deficiency of Cunningham, Moore, Lorch, and Tucker. Appeal
Br. 15-16. However, for the reasons discussed above, these references are
not deficient. Therefore, we also sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claims 5-8 and 14--16.
CLAIMS 9 AND 17-19
Findings and Contentions
In rejecting claim 9 as obvious, the Examiner finds that the
McNamara subsidized text messaging teachings and the rendering in Heikes
of a personalization item in consideration of a payment teach or suggest
wherein the predefined content is defined at least in part in response to
consideration previously paid by a third party. Final Act. 11-12 (citing
McNamara Abstract, ,r,r 11-13, 16; Heikes ,r,r 15, 24); see also Ans. 6. The
Examiner makes similar findings with respect to the defined consideration
content of claim 17. See Final Act. 12-13; Ans. 6-7.
Appellants contend the Examiner erred because McNamara merely
"discloses billing (i.e. obtaining consideration from) users and/or advertisers
(i.e. third parties) for use of certain content in text messages." Appeal Br. 17
(citing McNamara ,r 16); see also Reply Br. 3--4. Appellants further argue
"Heikes does not disclose the entity providing the consideration, and
therefore does not disclose provided consideration content defined in
response to a consideration previously paid by a third party. Heikes also
fails to disclose previously paid consideration." Appeal Br. 18; see also
Reply Br. 4--5.
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Analysis
Appellants' arguments distinguishing the recitations of claims 9 and
17 from the teachings and suggestions of McNamara and Heikes, based on
the timing and source of consideration, are unpersuasive. See, e.g., Appeal
Br. 18. McNamara teaches a service provider that bills an advertiser (i.e., a
third party) willing to subsidize the price of a text message (i.e., content).
McNamara ,r 16. Contrary to Appellants' contention ( Appeal Br. 18),
Heikes, by teaching enabling an item after consideration is paid and
providing access to or use of personalization items because of a subscription
fee, teaches or suggests consideration "previously paid" (see Heikes ,r,r 15,
101 ). We agree with the Examiner that it would have been obvious to an
artisan of ordinary skill to have consideration previously paid by a third
party define ( e.g., a subsidized subscription that provides access to or use of)
content in the manner of claims 9 and 17. See Final Act. 11-13.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejections
of claims 9 and 17, and claims 18 and 19, which Appellants do not argue
separately. Appeal Br. 18.
DECISION
We affirm the Examiner's decision rejecting claims 1-19.
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(±).
AFFIRMED
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