Ex Parte Blom

Patent Trial and Appeal Board

Nov 21, 2016

13278978 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/278,978 10/21/2011
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
11/23/2016
FIRST NAMED INVENTOR
Jan Otto Blom
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.
P5578USOO 9507
EXAMINER
TSANG, HENRY
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN OTTO BLOM
Appeal2016-000418
Application 13/278,978 1
Technology Center 2400
Before MARC S. HOFF, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20 and 49, which constitute all the
claims pending in this application. Appellant has canceled claims 21--48.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Nokia Corp. App.
Br. 1.
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Application 13/278,978
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to "a method,
apparatus, and computer program for providing data sharing schemes to
provision device services." Spec. i-f 22.
Exemplary Claims
Claims 1 and 49, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method comprising facilitating a processing of
and/or processing (1) data and/or (2) information and/or (3) at
least one signal, the (1) data and/or (2) information and/or (3) at
least one signal based, at least in part, on the following:
at least one determination, by at least one processor, of at
least one data sharing scheme for activation at one or more
devices;
a processing of context data and metadata associated
with one or more applications, one or more services, or a
combination thereof, to determine whether the one or more
applications, one or more services, or a combination thereof,
are at least substantially compliant with the at least one data
sharing scheme; and
a presentation of the one or more applications, the one or
more services, or a combination thereof.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 6, 2015); Reply Brief ("Reply Br.," filed Oct. 5, 2015); Examiner's
Answer ("Ans.," mailed Aug. 5, 2015); Final Office Action ("Final Act.,"
mailed Sept. 25, 2014); and the original Specification ("Spec.," filed
Oct. 21, 2011).
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49. A method of claim 1, wherein the (1) data and/or
(2) information and/or (3) at least one signal are further based,
at least in part, on the following:
a processing of the context data and the metadata
associated with the one or more applications, one or more
services, or a combination thereof, to recommend another data
sharing scheme, wherein the another data sharing scheme is
more open than the at least one data sharing scheme.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Salmenkaita et al. ("Salmenkaita") US 2002/0188589 Al Dec. 12, 2002
Paretti et al. ("Paretti") US 2010/0076777 Al Mar. 25, 2010
Tobe et al. ("Tobe") US 2010/0107216 Al Apr. 29, 2010
Hu et al. ("Hu") US 2010/0235877 Al Sept. 16, 2010
Wilson US 2011/0030067 Al Feb. 3, 2011
Jagannathan et al. ("Jagannathan") US 2013/0014040 Al Jan. 10,2013
Rejections on Appeal
RI. Claims 1-10 stand rejected under 35 U.S.C. § 101 as being
drawn to non-statutory subject matter. Final Act. 4.
R2. Claims 1, 6, 7, 10, 11, 16, 17, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Wilson and
Salmenkaita. Final Act. 5.
R3. Claims 2, 3, 5, 9, 12, 13, 15, and 19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Wilson,
Salmenkaita, and Paretti. Final Act. 7.
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R4. Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wilson, Salmenkaita, Paretti,
and Jagannathan. Final Act. 10.
R5. Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wilson, Salmenkaita, and Tobe.
Final Act. 11.
R6. Claim 49 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wilson, Salmenkaita, and Hu. Final
Act. 12. 3
CLAIM GROUPING
Although Appellant sets forth a proposed claim grouping for the
claims on appeal (App. Br. 4), based on Appellant's arguments (App.
Br. 4--18), we decide the appeal of obviousness Rejection R2 of claims 1, 6,
7, 10, 11, 16, 17, and 20 on the basis of representative claim 1. We address
separately argued Rejection RI of claims 1-10, and Rejection R6 of
claim 49, infra.
3 In the event of further prosecution, we leave it to the Examiner to
determine whether the recitation in claim 49 of "the another data sharing
scheme is more open than ... " meets the definiteness requirements of 35
U.S.C. § 112, second paragraph. When a claim term "depend[s] solely on
the unrestrained, subjective opinion of a particular individual purportedly
practicing the invention" (e.g., "more open"), without sufficient guidance in
the specification to provide objective direction to one of skill in the art, the
term is indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1350 (Fed. Cir. 2005). Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
4
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Remaining claims 2-5, 8, 9, 12-15, 18, and 19 in rejections R2
through R5, not separately or substantively argued, stand or fall with the
respective independent claim from which they depend. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-20
and 49, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
For example, Appellant contends, with respect to Rejection R3 of claims 2,
3, 5, 9, 12, 13, 15, and 19, and of the same form as presented with respect to
Rejections R4 and R5 of claims 4, 8, 14, and 18, "[a]ccordingly, since the
Examiner has erred in failing to present a prima facie case of obviousness
with regard to the subject matter of independent claims 1 and 11. Therefore,
independent claims 1and11; and dependent claims 2, 3, 5, 9, 12, 13, 15,
and 19 that depend from and incorporate the subject matter of the
independent claims, and the rejection of these claims under 35 U.S.C. 103(a)
is neither legally nor factually viable .... " App. Br. 12, 14. We find this
form of argument is not a substantive, separate argument, but instead only
relies upon arguments presented with respect to the independent claims from
which they depend.
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highlight and address specific findings and arguments regarding claims 1
and 49 for emphasis as follows.
1. § 101 Rejection RI of Claims 1-10
Issue 1
Appellant argues (App. Br. 4--5; Reply Br. 2-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being drawn to non-statutory
subject matter is in error. These contentions present us with the following
ISsue:
Did the Examiner err in relying upon the holding in Bilski5 and
concluding claim 1 and claims 2-10 depending therefrom are "not statutory
as the method is not tied to a particular machine or apparatus nor do they
transform a particular article into a different state or thing ... [and because]
the steps of 'determination', 'processing' and 'present[ing]' can be performed
by a person?" Final Act. 4--5.
Analysis
Appellant contends:
Even assuming, arguendo, that "processor" is not limited
specifically in the claim language, independent claim 1 recites,
"[a] method comprising facilitating a processing of and/or
processing, by a processor . . . " and, as conceded in the
Advisory Action, page 2, the examples presented within the
instant Specification of paragraphs [0061] and [0073], and
FIGs. 5, 6, and 7 clearly illustrate processors in combination
with computer hardware elements, and never in relation to a
human. In fact, no recitation within the Specification relates to
human processing over computer processing.
5 Bilski v. Kappas, 130 S. Ct. 3218, 3225 (2010).
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Considering the foregoing, the interpretation in the
Office Action, of ". . . a processor . . . " as encompassing a
human being is NOT reasonable. The interpretation is NOT
consistent with Applicant's specification. It is simply NOT
tenable in that the claims are to be given a reasonable
construction in light of the specification as it would be
interpreted by one of ordinary skill in the art.
For at least the foregoing reasoning, recitation of "by a
processor" in independent claim 1 sufficiently ties the claim to
statutory subject matter under 3 5 U.S. C § 101.
App. Br. 5.
We first note, "[ w ]hether a patent claim is drawn to patent-eligible
subject matter is an issue of law that is reviewed de nova." SiRF Tech., Inc.
v. Int'! Trade Comm'n, 601F.3d1319, 1331 (Fed. Cir. 2010).
Abstract ideas have been identified by the courts by way of example,
including fundamental economic practices, certain methods of organizing
human activities, an idea 'of itself,' and mathematical relationships/formulas.
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355-56 (2014).
Although claim 1 nominally recites "a method comprising facilitating a
processing of and/or processing (1) data and/or (2) information and/or (3) at
least one signal based, at least in part on ... at least one determination, by at
least one processor," a question arises as to whether a person would also be
capable of performing the acts of the claimed method as mental steps, or
with the aid of pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson."). Our reviewing
court further guides that "a method that can be performed by human thought
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alone is merely an abstract idea and is not patent-eligible under § 101."
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266,
1373 (Fed. Cir. 2012).
Method claim 1 on appeal is optionally directed to: (a) "facilitating a
processing," and/or (b) "processing" either/or: "(1) data and/or (2)
information and/or (3) at least one signal," to determine a data sharing
scheme and "substantial[ ] complian[ ce]" of applications and/ or services
with the data sharing scheme for one or more devices, and which appears to
be directed to data intended for human perception. 6 App. Br. 20 (emphasis
added).
Under the two-part test described by the Supreme Court in Alice,
" [ w ]e [must first] determine whether the claims at issue are directed to a
patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct.
at 2355. Regarding claim 1, "a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101." CyberSource, 654 F.3d at 1373.
6 Note the final limitation of claim 1: "a presentation of the one or more
applications, the one or more services, or a combination thereof."). See Fig.
3A, step 305, i.e., "Present to a user the compliant applications/services." In
the event of further prosecution, including any review for allowance, we
leave it to the Examiner to determine whether the recited "presentation of the
one or more applications" is directed to non-functional descriptive material.
See MPEP § 2111.05, 9th ed., Mar. 2014 ("[W]here the claim as a whole is
directed conveying a message or meaning to a human reader independent of
the intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship
exists.").
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As a matter of claim construction, and in light of the holdings in
Alice 7 and CyberSource cited, supra, we find the optional nature of the
recitations of claim I, e.g., "facilitating a processing" "and/or processing"
along with only the nominal recitation of a processor, the claim does not
preclude the method from being carried out by human thought alone (e.g.,
"facilitating"), notwithstanding the nominal recitation of "at least one
processor."
Therefore, based upon the factual findings and legal precedent cited
above, and on this record, we are not persuaded of error in the Examiner's
conclusion that claims I-IO are directed to non-statutory subject matter such
that we sustain the Examiner's Rejection RI of claims I-I0. 8
2. § I 03 Rejection R2 of Claims 1, 6, 7, I 0, I I, I 6, I 7, and 20
Issue 2
Appellant argues (App. Br. 6-IO; Reply Br. 3---6) the Examiner's
rejection of claim I under 35 U.S.C. § I03(a) as being obvious over the
combination of Wilson and Salmenkaita is in error. These contentions
present us with the following issue:
7 We point out the Examiner's statement, "[t]he examiner notes that at the
time of the Office action the provisions of Alice Corp. was not considered
with respect to claims I-20 and 49." Ans. 3.
8 We note the Examiner omitted dependent claim 49 from the explicit
statement of the rejection of§ I 0 I Rejection RI. Final Act. 4. Although
claim 49, depending from claim I, appears to also be eligible for rejection
under § I 0 I for the same reasons as claim I, in the event of further
prosecution, we leave it to the Examiner to determine whether this claim was
inadvertently omitted from Rejection RI.
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Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the limitation of "a processing
of context data and metadata associated with one or more applications, one
or more services, or a combination thereof, to determine whether the one or
more applications, one or more services, or a combination thereof, are at
least substantially compliant with the at least one data sharing scheme," as
recited in claim 1?
Analysis
"Appellant respectfully disagrees with the Examiner's continued
assertions that Wilson in view of Salmenkaita makes obvious the features of
at least independent claims 1 ... and 11. . . . Appellant will focus their
arguments on independent claim 1. ... " App. Br. 6-7.
Further, after extensive quotation of the portions of Salmenkaita relied
upon by the Examiner for teaching or suggesting the contested limitation
(i.e., i-fi-f 105, 109, 112, and 114), Appellant contends:
As best understood, it is clear Salmenkaita does not teach that
the application's context information (the alleged 'context data')
is processed to determine whether the requesting program (the
alleged 'one or more applications') is compliant with the user's
privacy profile (the alleged data sharing scheme).
At best, Salmenkaita teaches that a program's level of
permission to access user's context information is determined
during a program registration step ....
App. Br. 9 (citing Salmenkaita i-f 105).
Appellant further alleges, "Salmenkaita also does not provide for the
use metadata as well as context data to determine compliance, even though it
is shown above, that context data is not even used for compliance
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determination" (App. Br. 10), "[t]hus Salmenkaita fails to disclose the
claimed feature, at least because Salmenkaita does not teach that the user's
current context information (the alleged 'context data') is itself utilized in
any way to determine whether the registered programs (the alleged 'one or
more applications') comply with the user's privacy profile (the alleged 'data
sharing scheme')." Id.
In response to Appellant's contentions, the Examiner finds
"Salmenkaita teaches sensor data such as position, temperature, audio etc. to
be processed and then fed to various application programs" (Ans. 4, citing
Salmenkaita i-fi-f 108 and 112), and "Salmenkaita also teaches registering
application programs such that they can access the sensor data." Id. The
Examiner further explains his findings:
Id.
[T]he examiner is interpreting the user's security data associated
with the application programs as taught by Salmenkaita as the
context data and metadata. It is clear that Salmenkaita teaches
the user's security data associated with the application is
processed to determine whether or not the application can
access the sensor data. In other words, it is determined whether
or not the application is compliant with a data sharing scheme
based on the user's security data in order to receive sensor
data." Therefore, Salmenkaita teaches [the disputed limitation
of claim 1]."
We agree with the Examiner's finding that Salmenkaita teaches or at
least suggests both context data and metadata, as well as compliance with a
data sharing scheme, specifically as recited in claim 1. Final Act. 6; Ans. 4.
We agree with the Examiner because Salmenkaita teaches determining
whether or not the application is compliant with a data sharing scheme based
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on the user's security data, which is interpreted as both context data and
metadata, so that sensor data may be received in accordance with the data
sharing scheme, i.e., a privacy profile.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 6, 7, 10, 11, 16, 17, and 20 which fall therewith. See Claim
Grouping, supra.
3. § 103 Rejection R6 of Claim 49
Issue 3
Appellant argues (App. Br. 15-18; Reply Br. 6-7) the Examiner's
rejection of claim 6 under 35 U.S.C. § 103(a) as being obvious over the
combination of Wilson, Salmenkaita, and Hu is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the limitation of "a processing
of the context data and the metadata associated with the one or more
applications, one or more services, or a combination thereof, to recommend
another data sharing scheme, wherein the another data sharing scheme is
more open than the at least one data sharing scheme," as recited in claim 49?
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Analysis
Hu merely teaches privacy policies may be evaluated to find a
better privacy policy recommendation. Hu, at best, describes
the updating/modification or suggestion of a second privacy
policy based on an evaluation of whether a change would
increase information provided. However, none of those
modifications explicitly include an evaluation based on "the
context data and the metadata associated, with the one or more
applications, one or more services, or a combination thereof as
claimed. In contrast to claim 49 . . . which requires "a
processing of the context data and the metadata associated
with the one or more applications, one or more services, or
a combination thereof, to recommend another data sharing
scheme," Hu does not provide any details as to how such an
evaluation is made.
App. Br. 17.
Appellant further contends,
Hu acts on a [deep packet inspection (DPI)] not on the user
device, thus Hu never contemplates context data of any sort
since the context does not matter to the DPI engine since Hu
isn't determining compliance with a scheme, rather Hu is
determining if the correlated "scheme" can comply with greater
information provisioning to the user.
App. Br. 17-18. "[E]ven if the Examiner is correct that Hu teaches the
above-recited feature, which Appellant does not concede, Hu cannot
correctly be combined with Salmenkaita." App. Br. 18. Additionally,
"Salmenkaita does not teach the 'processing of the context data and the
metadata' as claimed nor does Hu teach the above-recited feature.
Therefore, Hu does not remedy the deficiencies of Wilson in view of
Salmenkaita and Wilson in view of Salmenkaita and Hu does not teach the
features of claim 49 .... " Id.
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We note, because the Examiner rejects the claims as obvious over the
combined teachings of Wilson, Salmenkaita, and Hu, the test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Contrary to Appellant's contentions with respect to claim 49, we agree
with the Examiner's findings that Wilson and Salmenkaita teaches or
suggests the disputed limitations of claim 1, as discussed with respect to
claim 1, Issue 1, supra. We also agree with the Examiner's finding that "Hu
teaches evaluating a privacy rule(s) to determine whether modification of the
privacy rule(s) can enable additional information to be shared and providing
the suggested privacy rule modification to the user ([0092]). In other words,
processing data to determine and recommend to a user a more open data
sharing scheme." Ans. 8.
In response to the Examiner's findings, Appellant asserts, "even if the
Examiner is correct that Salmenkaita discloses the 'context data and
metadata', which Appellant does not concede, the Examiner fails to further
provide reasoning as to how the combination with Hu would be done."
Reply Br. 6. We disagree with Appellant's contentions.
We disagree with Appellant because the Examiner finds
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to implement the teachings of
Hu into Wilson in view of Salmenkaita, because by
recommending a more open privacy policy enables additional
information to be provided to the user based on analysis of
additional context and metadata associated with the user.
Final Act. 13.
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Additionally,
Ru's known technique of recommending a more open privacy
rule( s ), sharing scheme, would have been recognized by one of
ordinary skill in the art as applicable to the process of
Salmenkaita and the results would have been predictable and
resulted in the applications receiving the requested sensor data
based on the more open sharing scheme which results in
improved recommendations provided by the applications to the
user based on the received sensor data.
Ans. 8.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 49, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 49.
4. Reiections R3-R5 of Claims 2-5, 8, 9, 12-15, 18, and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R5 of claims 2-5, 8, 9, 12-15, 18, and
19 under§ 103 (see App. Br. 11-15), we sustain the Examiner's rejection of
these claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1-8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
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Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to non-statutory subject
matter Rejection RI of claims 1-10 under 35 U.S.C. § 101, and we sustain
the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R6 of claims 1-20 and 49 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 and 49.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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