Ex Parte Crowther et alDownload PDFPatent Trial and Appeal BoardMay 26, 201713763166 (P.T.A.B. May. 26, 2017) Copy Citation 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. 13/763,166 02/08/2013 Scott Ryan Crowther YOR920120729US1 9443 59144 7590 CAHN & SAMUELS, LLP 1100 17th STREET, NW SUITE 401 WASHINGTON, DC 20036 05/26/2017 EXAMINER KIM, HEE SOO ART UNIT PAPER NUMBER 2457 MAIL DATE DELIVERY MODE 05/26/2017 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 SCOTT RYAN CROWTHER, GRANT DOUGLAS MILLER, NADER M. NASSAR, and TAMER NASSAR Appeal 2017-003924 Application 13/763,1661 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, 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 Final Rejection of claims 1—7. Appellants have previously withdrawn claims 8—25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 3. Appeal 2017-003924 Application 13/763,166 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to "validation of service management requests of a mobile device in a geographically bounded space." Spec. 11. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitations): 1. A method for disabling at least one application in a mobile device, said method comprising: receiving in a communications component of the mobile device a request to disable the at least one application and a certificate, the certificate defining a geographic area in which the at least one application is to be disabled; determining the geographic location of the mobile device with a location component in the mobile device; comparing the geographic location of the mobile device to the geographic area defined in the certificate with a processor in the mobile device to determine whether the geographic location of the mobile device is within the geographic area; validating the certificate with the processor to determine whether the request to disable the at least one application is authorized; and disabling the at least one application with a controller in the mobile device when the certificate is valid and when the geographic location of the mobile device is within the geographic area. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed July 13, 2016); Reply Brief ("Reply Br.," filed Jan. 6, 2017); Examiner's Answer ("Ans.," mailed Nov. 11, 2016); Final Office Action ("Final Act.," mailed Feb. 4, 2016); and the original Specification ("Spec.," filed Feb. 8, 2013). 2 Appeal 2017-003924 Application 13/763,166 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Fischer US 5,659,617 Aug. 19, 1997 Moreau US 2005/0262345 A1 Nov. 24, 2005 Ferren et al. ("Ferren") US 2010/0317336 A1 Dec. 16, 2010 Tadayon et al. ("Tadayon") US 2011/01015097 Al May 5, 2011 Rejections on Appeal Rl. Claims 1—3, 5, and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Ferren and Fischer. Final Act. 4. R2. Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Ferren, Fischer, and Moreau. Final Act. 6. R3. Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Ferren, Fischer, and Tadayon. Final Act. 7. CFAIM GROUPING Based on Appellants' arguments (App. Br. 6—10), we decide the appeal of obviousness rejection Rl of claims 1—3, 5, and 6 on the basis of representative claim 1. Remaining claims 4 and 7 in Rejections R2 and R3, not argued separately or substantively, stand or fall with the respective independent claim from which they depend.3 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together 3 Appeal 2017-003924 Application 13/763,166 ISSUE Appellants argue (App. Br. 6—8; Reply Br. 1 4) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Ferren and Fischer is in error. These contentions present us with the following issue: Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) because the cited prior art combination purportedly teaches away from the suggested combination, specifically, in regards to the limitations of "[a] method for disabling at least one application in a mobile device, said method comprising . . . disabling the at least one application with a controller in the mobile device when the certificate is valid and when the geographic location of the mobile device is within the geographic area," as recited in claim 1? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv). § 103(a) Rejection R1 of Claims 1—3, 5, and 6 We disagree with Appellants' arguments with respect to claim 1, 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 shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 4 Appeal 2017-003924 Application 13/763,166 (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants contend "Fischer teaches away from claimed invention because the location certificates in Fischer define the area in which the items are enabled (not disabled)." App. Br. 7 (emphasis omitted). Specifically, Appellants contend: More specifically, the device of Ferren is not disabled due to a determination that the device is in the restricted zone. Instead, the device is disabled because "the device does not know its location". As described in Ferren, "if the device does not know its location 305, such as when the mobile device cannot receive a GPS signal, the camera function may be disabled 320". Ferren, para. 0026 (emphasis added). Additionally, the device of Ferren is not disabled due to a valid certificate. As described above, the device is disabled because "the device does not know its location". Reply Br. 2. Our reviewing court guides, "in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Further, the Federal Circuit has held "'[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from 5 Appeal 2017-003924 Application 13/763,166 the path that was taken by the applicant.'" In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Here, we find Appellants are arguing the references separately. We are not persuaded by Appellants' arguments because the Examiner cites Fischer, not Ferren, for teaching or suggesting the recited "certificate." Final Act. 5. Although Fischer teaches disabling operation of a device in certain locations (Final Act. 5 (citing Fischer, col. 3,11. 63—67)), the Examiner cites Ferren as the primary reference teaching the “disabling†limitation. Final Act. 4. We also are not persuaded by Appellants' arguments because Appellants overlook the sentences immediately following the excerpt they quote from Ferren 126. Reply Br. 2. Specifically, the remainder of paragraph 26, in fact, teaches the disputed "disabling" limitation. Thus, Appellants ignore the Examiner's specific findings regarding the disputed "disabling" limitation. In particular: If the device is within a restricted zone 310, the camera function may be disabled or limited 320. In some cases, the camera may be completely disabled, such as a restricted government location. In some case, the camera may be restricted such that the flash is not usable, such as in locations that allow non-flash photography only, such as concerts and sporting events or in museum. Final Act. 4; Ans. 2—3 (citing Ferren 126). We agree with the Examiner's findings because Ferren's disabling a camera function when in a restricted government location teaches or at least suggests the disputed limitation "disabling the at least one application with a controller in the mobile device . . . when the geographic location of the mobile device is within the geographic area," as recited in claim 1. Id. 6 Appeal 2017-003924 Application 13/763,166 We further find Fischer does not teach away from Ferren's teachings because Fischer's use of certificates to control the use of devices by limiting their operation to certain locations teaches or at least suggests the disputed limitation "a certificate, the certificate defining a geographic area in which the at least one application is to be disabled," as recited in claim 1. Final Act. 5 (citing Fischer col. 1,11. 49—56). We note a teaching of something different is not a teaching away, i.e., teaching an alternative or equivalent method does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). We find limiting the use of a phone feature to a certain area is not divergent from disabling it outside of that area as both provide locational limits to phone features. Moreover, we agree that the Examiner's combination of references doesn't teach away because Fischer's LCU's, which are installed in digital signaling devices with means for disabling the use of such devices, control the location where the devices can be used teaches or at least suggests "a certificate, the certificate defining a geographic area in which the at least one application is to be disabled," as recited in claim 1. Final Act. 5 (citing Fischer col. 3,11. 63—67). Therefore, we find Fischer's certificates control the locations where the devices can be enabled or disabled. We, therefore, find Fischer's teaching is not divergent from Ferren's disabling camera functions in certain restrictive locations. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the cited prior art combination to teach or suggest the disputed limitations 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 7 Appeal 2017-003924 Application 13/763,166 claim 1, and grouped claims 2, 3, 5, and 6 which fall therewith. See Claim Grouping, supra. § 103(a) Rejections R2 and R3 of Claims 4 and 7 In view of the lack of any substantive or separate arguments directed to the obviousness Rejections R2 and R3 of claims 4 and 7 under § 103, we sustain the Examiner's rejections of these claims. App. Br. 9—10. Arguments not made are waived. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1—4) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a reply brief that were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause, which Appellants have not shown. See 37 C.F.R. § 41.41(b)(2). CONCLUSION The Examiner did not err with respect to obviousness Rejections Rl— R3 of claims 1—7 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejections. 8 Appeal 2017-003924 Application 13/763,166 DECISION We affirm the Examiner's decision rejecting claims 1—7. 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 9 Copy with citationCopy as parenthetical citation