Ex Parte 7072665 et al

Patent Trials and Appeals BoardSep 29, 2014

95001436 - (R) (P.T.A.B. Sep. 29, 2014)

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. 95/001,436 08/31/2010 7072665 SMTR-001/05US 195688-2022 5005 22903 7590 03/30/2015 COOLEY LLP ATTN: Patent Group Suite 700 1299 Pennsylvania Avenue, NW Washington, DC 20004 EXAMINER WEAVER, SCOTT LOUIS ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/30/2015 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 ____________ BOOPSIE, INC., ZILLOW, INC., HOTPADS, INC., IDX, INC., REALPAGE, INC., PRIMEDIA, INC., CONSUMER SOURCE, INC., TRULIA, INC., and ZIP REALTY, INC., Requesters and Cross Appellants v. SMARTER AGENT, LLC, Patent Owner and Appellant ____________ Appeal 2011-007276 Control No. 95/001,436 US Patent 7,072,665 B1 Technology Center 3900 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and JEREMY J. CURCURI, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.79, Owner has submitted a timely Request for Rehearing dated October 29, 2014 (hereafter the “Request for Rehearing”), requesting rehearing of the September 29, 2014 opinion Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 2 (hereafter the “Opinion”) that affirmed rejections of claims 1-36. Opinion (Op.) 3, 28. Requesters timely submitted Comments in Opposition to the Request for Rehearing (hereafter “3PR Comments”) on December 1, 2014. We have reconsidered the Opinion in light of Owner’s discussions in the Request for Rehearing and 3PR Comments. We find no errors. We therefore, decline to change our prior decision for the following reasons. Concerning the transitional term “comprising” found in the claims, Owner acknowledges that such an open-ended term allows for additional steps or elements not recited but adds that the recited phrase “must be disclosed.” Req. Rh’g 3. Owner specifically contends that the Board has misconstrued the transitional phrase “comprising” in the claims such that “said returned real estate information” recitation found in claim 1, for example, returns “something different than what is recited in the claim.” Req. Rh’g 3. We disagree. The Opinion states the recitation, “‘receiving location-centric attribute information from said information system related to a landmark proximate to said geographic position’ in claim 1, does not restrict the returned information only to that relating to a landmark located proximate to the wireless device's geographic position.” Op. 9 (emphasis added). To clarify, using the word “only” in this statement was not intended to express that the returned information related to property located proximate to the wireless device’s geographic position can be excluded from the recitation or that information related to property that is not proximate to the wireless device’s geographic position alone could read on this recitation. Rather, the word, “only” was intended to express that the returned information can relate to Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 3 and encompass other information in addition to the information proximate to the wireless device’s geographic position. See 3PR Comments 2. This construction does not misapprehend or misapply the law related to the open-ended transitional phrase, “comprising.”1 Additionally, we agree with Requesters that this particular open-ended construction of the language in the claims does not affect our findings that the cited prior art teaches the recitation of “receiving location-centric attribute information from said information system related to a landmark proximate to said geographic position” found in claim 1. See 3PR Comments 2. For example, based on our construction that the phrase “proximate” means “near to or within the vicinity of the wireless device's geographic position,” we found that Dowling or Broadbent each teach the recited “returned real estate information related to a property located proximate” to the wireless device feature. See, e.g., Op. 9, 11–12, 22–23. The discussion on page 9 of the Opinion was merely intended to demonstrate the breadth of the recitation “location-centric attribute information . . . related to a landmark proximate to said geographic position” includes the information “relating to a landmark proximate to” the wireless device’s geographic position in addition to other information. Next, Owner requests reconsideration of our conclusion that the Examiner did not err in finding that claim 35 is obvious over Dowling and Brown, Broadbent and Brown, O’Grady and Brown, Fan and Brown, and O’Grady and Sealand. Req. Rh’g 4–5. At the outset, we note that the 1 See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004) (indicating the term “comprising” does not exclude additional, unrecited elements). Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 4 Opinion did not reach the merits of the rejections concerning claim 35 based on O’Grady and Brown, Fan and Brown, and O’Grady and Sealand. Op. 27. For those rejections we did not reach, Owner has failed to state what the Board has misapprehended or overlooked in rendering the decision concerning these rejections. See 37 C.F.R. § 41.79(b)(1). Regarding the remaining two rejections, Owner asserts that the briefs do not individually attack the references, as the Opinion states, but rather, “the analysis of patentability of the claims was based on the combination of references.” Re. Rh’g 4 n. 6, 9 (citing PO Reb. Br. 6, 8, 10, 11, 13, 14; PO App. Br. 13–16, 18–19, 21–22, 25). We acknowledge that Owner states generally “even combined, Dowling and Brown fail to render claims 25-36 obvious.” PO App. Br. 10; see also PO Reb. Br. 6–7. Similarly, Owner asserts “even combined, Broadbent and Brown fail to render claims 25-36 obvious.” PO App. Br. 13; see also Reb. Br. 9. However, the specific arguments in the briefs address the references individually, failing to consider the collective teachings adequately. For example, Owner states Dowling fails to disclose or suggest a method that includes [“]receiving at the wireless device location-centric attribute information from said information system related to a landmark for sale proximate to said geographic position based on a geographic position of the wireless device” and “the location-centric attribute information being related to at least one of an interior physical feature and an exterior physical feature of said landmark” . . . . Brown does not remedy the deficiencies of Dowling. . . . Brown is entirely silent as to a real estate database that communicates information to a wireless device. . . . neither Dowling nor Brown discloses this specific Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 5 recitation in claim [3]52 . . . . Dowling may disclose receiving information at its mobile unit based on a location of the mobile unit, but Dowling does not disclose receiving location-centric attribute information at the mobile unit related to a landmark for sale as recited . . . . Likewise, Brown discloses being able to search for information related to a property for sale using a computer that is located remote from the property for sale, but also fails to disclose receiving location- centric attribute information as specifically recited . . . . Thus, even adding Brown's real estate database to the teaching of Dowling, does not result in the method of claim [3]5. PO App. Br. 10–11(underlining omitted and emphasis added); see also PO Reb. Br. 7. As another example, Owner states Broadbent fails to disclose or suggest “receiving at the wireless device location-centric attribute information from said information system related to a landmark for sale proximate to said geographic position based on a geographic position of the wireless device” and “the location-centric attribute information being related to at least one of an interior physical feature and an exterior physical feature of said landmark” . . . as recited . . . . Brown does not remedy the deficiencies of Broadbent. As discussed above, Brown is entirely silent as to a real estate database that communicates information to a wireless device . . . neither Broadbent nor Brown discloses this recitation in claim [3]53 . . . . Broadbent does not disclose receiving location-centric attribute information at the wireless device related to a landmark for sale, as recited . . . . Brown also fails to disclose receiving location-centric attribute information related to a landmark for sale proximate to a geographic position of a wireless device, as specifically recited . . . . Thus, even adding Brown's real estate database to the teaching of Broadbent, does not result in the method of claim [3]5. 2 For claim 35, Owner relies on the arguments presented for claim 25. PO App. Br. 12. 3 For claim 35, Owner relies on the arguments presented for claim 25. PO App. Br. 15. Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 6 PO App. Br. 13–14 (underlining omitted and emphasis added); see also PO Reb. Br. 9. Other than the general statements in the briefs, most of these contentions discuss Dowling, Brown, and Broadbent individually. Also, for the reasons stated in the Opinion, we disagree with Owner’s conclusory statements that adding Brown’s feature to Dowling or Broadbent would not result in the method of claim 35. We refer to our previously discussed reasons in the Opinion concerning the combination of Dowling and Brown and Broadbent and Brown. See Op. 17, 20–21, 22–24, 27 (referring to the RAN, Dowling, Brown, the Request, and 3PR April 9, 2012 Comments). We further stated in the Opinion that Owner merely asserted that Broadbent failed to teach the displaying step, which reasonably is not considered a separate argument for consideration. Op. 20–21, 27 (citing In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)). To extent that Owner is considered to have argued the “displaying” step in claim 35 (PO App. Br. 13, 16), the Opinion cited to further portions of the record to support that the combination of Dowling and Brown or Broadbent and Brown taught all the limitations found in claim 35. See Op. 21 (citing RAN 15–18, 51 (further citing Dowling 12:60-63 and Brown 6:3-6, 7:66-8:52) and 3PR Resp. Br. 8 (referring to claim 25 and further citing Brown 7:66-8:52)), Op. 27 (citing RAN 51 (referring to 3PR April 9, 20124 Comments, pp. 36-37) and 22-23 (referring to claim 25 and Brown 6:3-6, 7:66-8:52) and citing 3PR Resp. Br. 10 (further citing Brown 6:3-6, 7:66-8:52)). Namely, Dowling, Broadbent, 4 Notably, the Opinion at page 27 mistakenly referred to the “3PR April 9, 2014 Comments.” Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 7 and Brown teach displaying various types of information. See Dowling 12:60–67 (discussing displaying photographs, price, and other information); Broadbent 9–10 (discussing displaying a plan with a “you are here” dot); Brown 6:3–6, 7:66–8:52 (discussing displaying a list of houses, thumbnail images, and even further information). Moreover, as cited in the Opinion and further explained in the citations to the RAN, Requesters’ Respondent Brief, and Requesters’ April 9, 2012 Comments, Brown teaches in combination with Dowling or Broadbent the recited “detailed provider information” located in claim 35. See also 3PR Comments 3–4 (citing these same portions of Dowling, Broadbent, and Brown). We therefore, disagree that we misapprehended or overlooked an argument in rendering the Opinion concerning these rejections. We have considered the arguments raised by Owner in the Request for Rehearing, but the arguments are not persuasive to find that the original Opinion was in error. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting the claims 1–36. We have granted the Request for Rehearing to the extent that we have reconsidered our decision of September 29, 2014, but we deny the request for hearing with respect to making any changes therein. REHEARING DENIED Appeal 2014-007276 Control No. 95/001,436 US Patent 7,072,665 B1 8 FOR PATENT OWNER: Cooley, LLP Attn: Patent Group Suite 700 1299 Pennsylvania Ave., NW Washington, DC 20004 FOR THIRD-PARTY REQUESTERS: Kirupa Pushparaj Perkins Coie, LLP Patent- SEA P.O. Box 1247 Seattle, WA 98111-1247