Obviousness

Obviousness Analysis of US Patent 11089450 under 35 U.S.C. § 103

This analysis identifies combinations of prior art references that would render the independent claims (1, 9, 15, and 24) of US Patent 11089450 obvious to a person having ordinary skill in the art (PHOSITA) at the time of the invention (priority date July 24, 2007). The motivation for combining these references is also explained.

The core of the invention lies in a mobile device receiving a traditional message (SMS or MMS), subsequently subscribing to a proprietary packet-switched messaging service, and then intelligently determining if a recipient is also a subscriber of this packet-switched service (using their mobile phone number) to format subsequent messages in the richer, packet-switched format.

Primary Prior Art References

1. US20060020663A1 to Seven Networks, Inc. (hereinafter "Seven Networks"): This application, published well before the priority date of US11089450, describes a "Messaging service in a wireless communication network" that includes a "mobile client" on a mobile device and a "messaging server" that communicates with the client. The service provides an "integrated messaging service, including SMS, MMS, and instant messaging formats," and performs "protocol conversion" between various messaging formats. [cite: US11089450B2] It also teaches "maintaining messaging status information regarding various message service subscribers" and states that "a subscriber is identified by a mobile phone number." [cite: US11089450B2]
2. WO2001041477A1 to Arreo Communications Inc. (hereinafter "Arreo"): This international publication, also predating US11089450's priority date, discloses an "Instant messenger system and instant message transfer method using phone number as instant messenger address." [cite: US11089450B2] This reference explicitly teaches using a mobile phone number as the primary identifier for an instant messaging (packet-switched) service.

Analysis of Independent Claims (Claims 1, 9, 15, 24)

For brevity, we will focus on Claim 1 as a representative claim, as the fundamental elements and obviousness arguments extend directly to Claims 9, 15, and 24 with minor distinctions that do not overcome obviousness.

Claim 1: A method comprising:

1. "receiving a first message, by a first mobile wireless device from a second mobile wireless device, via a mobile operator base station, wherein the first message is formatted according to a short message service (SMS) format;"

• Taught by Seven Networks: This reference explicitly teaches an integrated messaging service that handles "SMS, EMS, MMS, or instant messages." [cite: US11089450B2] Therefore, a mobile device in such a system would be capable of receiving an SMS message.

2. "subscribing, by the first mobile wireless device, to a service for transmitting and receiving packet switched messages, via the Internet and the mobile operator base station;"

• Taught by Seven Networks: Seven Networks discloses a "messaging service" with a "mobile client" that communicates with a "messaging server." [cite: US11089450B2] This service provides "instant messaging formats" which are inherently packet-switched and would operate over the Internet via mobile operator base stations (e.g., GPRS, 3G, as noted in the background art of US11089450). [cite: US11089450B2] Subscription or registration to such a service is an inherent aspect of using it.

3. "transmitting, by the first mobile wireless device, after the subscribing, a request including at least information corresponding to at least one mobile phone number of the second mobile wireless device, to determine whether the second mobile wireless device corresponds to a subscriber of the service;"

• Taught by Seven Networks in view of Arreo:
  • Seven Networks teaches maintaining "messaging status information regarding various message service subscribers" and that subscribers can be identified by their "mobile phone number." [cite: US11089450B2]
  • Arreo directly teaches an instant messaging system that uses a "phone number as instant messenger address" and determines user status (e.g., online/offline). [cite: US11089450B2]
  • Motivation to Combine: A PHOSITA, seeking to enhance the integrated messaging service of Seven Networks, would be motivated to leverage the phone-number-based identification of Arreo to determine a recipient's subscription status for the packet-switched service. This enables the system to intelligently select the most capable communication bearer. For example, if a sender is using the enhanced packet-switched service and wishes to send a message to a recipient, it is logical to first determine if the recipient can also receive messages via this enhanced service to provide a richer experience (e.g., with attachments, faster delivery) when possible, before falling back to traditional SMS/MMS. Using the recipient's known mobile phone number as the lookup key for subscriber status is an obvious way to achieve this. The action of "transmitting a request...after the subscribing" is a logical sequence of events for a user who has just joined the service and wants to utilize it for existing contacts.

4. "receiving, by the first mobile wireless device, a response to the request indicating that the second mobile wireless device corresponds to a subscriber of the service; and"

• Obvious Consequence: If a request is transmitted to determine subscriber status (as in element 3), then receiving a response indicating that status is an obvious and expected outcome.

5. "formatting a second message in accordance with a message format of the service, subsequent to the subscribing and based at least in part on the response;"

• Taught by Seven Networks: Seven Networks describes an integrated messaging service capable of "protocol conversion" and handling "instant messaging formats." [cite: US11089450B2] If the determination (response) indicates the second mobile wireless device is a subscriber of the packet-switched service, a PHOSITA would be motivated to format the outgoing message (the "second message") in that service's format. This is to utilize the enhanced capabilities of the packet-switched bearer, such as larger message size and faster speed, which US11089450 itself touts as an advantage. [cite: US11089450B2]

6. "wherein the message format of the service is not a short message service (SMS) message format, a multimedia message service (MMS) message format or an enhanced message service (EMS) message format;"

• Taught by Seven Networks (and inherent to integrated services): Seven Networks' discussion of "protocol conversion" between various messaging formats (SMS, MMS, IM) inherently implies that the "instant messaging" format of its proprietary service would be distinct from standard SMS, MMS, or EMS formats. [cite: US11089450B2] US11089450 itself describes its message format as an "XML ASCII string," which confirms a distinct, non-standard format. [cite: US11089450B2]

7. "wherein the first message is received prior to the subscribing."

• Common User Scenario: This element describes a sequence of events: a user first receives a traditional message (SMS/MMS), and then subscribes to the new packet-switched service. This represents a typical and common user journey for adopting a new messaging application or service, where a user might be prompted or motivated to join after receiving a message from an existing contact. This ordering of events does not represent a non-obvious technical feature.

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Obviousness of Claims 9, 15, and 24:

• Claim 9 is substantially similar to Claim 1, with the additional clarification that the first mobile device "does not have in memory a user name or email address associated with the second mobile wireless device" at the time of transmitting the request. This further strengthens the obviousness of using the mobile phone number as the primary identifier for subscriber checks, as explicitly taught by Arreo and implied by Seven Networks. [cite: US11089450B2] The patent US11089450 itself emphasizes using the mobile phone number as the identifier to avoid requiring user name registration. [cite: US11089450B2]
• Claim 15 is similar to Claim 1, but the initial message is an MMS message. Seven Networks explicitly teaches support for MMS messages in its integrated service. [cite: US11089450B2] The rest of the logic regarding subscribing, checking subscriber status, and formatting applies identically.
• Claim 24 combines the MMS initiation of Claim 15 with the "no user name or email address in memory" aspect of Claim 9. The arguments for obviousness for these individual elements remain the same.

Conclusion

A PHOSITA would have been motivated to combine the teachings of Seven Networks (US20060020663A1) and Arreo (WO2001041477A1). The motivation stems from the desire to provide a seamless, integrated, and efficient messaging experience on mobile devices. Seven Networks provides the framework for an integrated messaging service capable of handling various formats, including packet-switched instant messages, and maintaining subscriber information. Arreo provides the clear teaching of using mobile phone numbers as identifiers for instant messaging accounts.

By combining these, a PHOSITA would arrive at a system where:

1. A user can receive traditional messages (SMS/MMS).
2. After subscribing to an enhanced packet-switched messaging service, the user's device can automatically determine if a recipient is also a subscriber of this enhanced service by querying based on their mobile phone number (as taught by Arreo).
3. If the recipient is a subscriber, the message is then formatted and sent using the richer, more capable packet-switched protocol (as enabled by Seven Networks' integrated and protocol-converting service).

This combination provides predictable results, optimizing message delivery and user experience by intelligently switching between bearers based on recipient capabilities, all using the familiar mobile phone number as the common identifier, thereby rendering the independent claims of US11089450 obvious.