Ex Parte Crowther et al

Patent Trial and Appeal Board

May 26, 2017

13763166 (P.T.A.B. May. 26, 2017)

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 Appellants have previously withdrawn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).
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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
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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).
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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
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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.
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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
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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.
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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
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