Ex Parte Lalancette et alDownload PDFPatent Trial and Appeal BoardOct 20, 201712956714 (P.T.A.B. Oct. 20, 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. 12/956,714 11/30/2010 Richard Lalancette ALC 3677 9850 76614 7590 10/24/2017 Terry W. Kramer, Esq. Kramer & Amado, P.C. 330 John Carlyle Street 3rd Floor Alexandria, VA 22314 EXAMINER PACK, CONRAD R ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 10/24/2017 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): mail@krameramado.com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD LALANCETTE, MIKE ELIAS, and STEPHEN NELSON WEST Appeal 2015-003999 Application 12/956,714 Technology Center 2100 Before ERIC S. FRAHM, JOYCE CRAIG, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-003999 Application 12/956,714 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application is directed to “providing a method for managing a human-readable icon associated with a user for displaying the human- readable icon on one or more target displays in response to a request for a service from the user.” (Abstract.) Claim 1, reproduced below, is representative: 1. A method of managing a human-readable icon from a user- operable device, the method comprising: transmitting a request for a service to a service provider from said user-operable device, wherein said request for a service comprises a request to display said human-readable icon on a target display; receiving, at the user operable device, a first copy of the human-readable icon from the service provider as confirmation, wherein a second copy of the human-readable icon subsequently appears on a taxi at a location of the user. 1 Appellants identify Alcatel Lucent as the real party in interest. (See App. Br. 1.) 2 Appeal 2015-003999 Application 12/956,714 THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ando et al. US 2004/0076280 Al Apr. 22, 2004 Reynolds US 2004/0266460 Al Dec. 30, 2004 Cope US 2005/0224543 Al Oct. 13, 2005 Weinstein US 2007/0136095 Al June 14, 2007 Boncyk et al. US 2009/0141986 Al June 4, 2009 Zou et al. US 2010/0317377 Al Dec. 16, 2010 Karpinsky US 2011/0175754 Al July 21, 2011 THE REJECTIONS 1. Claims 1—20 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (See Final Act. 3—4.) 2. Claims 1—4, 6—12, 14, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ando, Reynolds, and Zou. (See Final Act. 5—16.) 3. Claims 5, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ando, Reynolds, Zou, and Weinstein. (See Final Act. lb- 19.) 4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ando, Reynolds, Zou, and Boncyk. (See Final Act. 19- 21.) 5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ando, Reynolds, Zou, and Cope. (See Final Act. 21—22.) 3 Appeal 2015-003999 Application 12/956,714 6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ando, Reynolds, Zou, and Karpinsky. (See Final Act. 22— 23.) ANALYSIS Section 112 The Examiner rejects claims 1—20 as failing to comply with the written description requirement, finding no support in the original disclosure for the relative timing indicated by the limitation ‘receiving, at the user operable device, a first copy of the human-readable icon from the service provider as confirmation, wherein a second copy of the human-readable icon subsequently appears on a taxi at a location of the user’ recited in amended Claim 1 and the limitation ‘receiving, at the user operable device, a first copy of the human-readable icon from the service provider as confirmation, wherein a second copy of the human-readable icon subsequently appears on the target display’ recited in amended Claim 20. (Final Act. 3.) The Examiner explains that “the claimed relative timing is not indicated as words such as ‘subsequent,’ ‘after,’ or related variants are not used in the original disclosure and no discussion appears to suggest the concept using other language” and “[t]he word ‘appears’ or its variants are also not used in the original disclosure.” (Id.) Appellants respond that “[t]he subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement” and cite paragraphs 21—24 of the original disclosure as providing the required support. (App. Br. «.) 4 Appeal 2015-003999 Application 12/956,714 “Whether a patent claim satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1 depends on whether the description ‘clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed.’” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562— 63 (Fed. Cir. 1991)). The Specification describes how when the user orders a taxi using a handset, the service provider validates the request, compares the user’s location to known locations of taxis to select the most suitable taxi, and requests a personal human readable icon for the user from the icon server. (Spec. 21—23.) The Specification goes on to describe how the service provider “then dispatches the selected taxi car 118 to the location of user 102 and displays the user’s icon on the taxi roof-top electronic display 122 and to the driver’s dashboard display 124” and “also transmits a copy of the icon to user device 104 for confirmation to the user 102.” (Id. 124.) Then, “[w]hen taxi car 118 approaches user (102)’s location, user 102 can view the rooftop display 122 to identify taxi car 118 as being the taxi responding to user (102)’s request, from among other taxi cars in the vicinity” and “[t]he user can compare the display of the icon on rooftop display 122 to the copy of the icon on the user’s device 104 to confirm the identity of the taxi.” (Id. 125.) We agree with Appellants that the foregoing disclosure is sufficient to show what is now recited in claims 1 and 20, as it reflects a user having received the first copy of the icon before the second copy appears on a taxi at a location of the user, in that the first copy would be needed in order for 5 Appeal 2015-003999 Application 12/956,714 the user to identify the approaching taxi by the second copy on the rooftop display.2 Regarding claim 4, the Examiner finds the limitation “wherein said request for service comprises the first copy of said human-readable icon” to lack written description support because “[t]he original disclosure does not provide support for a specific copy of an icon, in the sense of a digital instance or entity, being both received at a user operable device as confirmation and comprised in a request for service transmitted from the device.” (Final Act. 4.) As Appellants present no arguments directed to this ground of rejection, it is summarily affirmed. See 37 C.F.R. § 41.31 (c)(l)(iv) (“Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested (e.g., by claim number, statutory basis, and applied reference, if any).”); MPEP § 1205.02 (9th ed. March 2014) (“[T]he Board may summarily sustain any grounds of rejections not argued.”). We accordingly sustain the rejection of claim 4 as lacking written description support but not the written description rejection of claims 1—3 and 5—20. Section 103: Claims 1—15 and 17—20 The Examiner finds that Ando describes most of the limitations of claim 1, but that “Ando does not explicitly describe use of an icon as the user-readable identifier.” (Final Act. 5—7.) The Examiner also finds that 2 The Examiner suggests there is uncertainty in the claim if the taxi is at the user’s location before the process is started. (See Ans. 3.) While this may raise indefmiteness or claim construction issues, however, we do not find it to present a written description problem. 6 Appeal 2015-003999 Application 12/956,714 “Ando does not explicitly describe a single embodiment in which an identifier is sent to the taxi and sent to the user operable device.” (Id. at 7.) The Examiner further finds, however, that it would have been obvious to modify Ando’s method of identifying a called taxi with a public display “by use of a human-readable icon as taught by Reynolds” and “to send a copy of an identifier to a user-operable device and a copy to another display for subsequent appearance of the identifier on a display at a location of the user as taught by Zou.” (Id. at 9.) Appellants first argue “Reynolds actually discloses ‘a personal cursor based upon a personal profile’ in paragraph [0026],” that the cursor “identifies a specific person,” and that “Reynolds lacks any disclosure of using first and second copies of a human-readable icon in two separate transactions.” (App. Br. 7.) They argue that because “Reynolds only discloses the use of a human-readable icon for a single purpose: identifying a person,. . . Reynolds cannot remedy the deficiencies of Ando.” (Id.) We are not persuaded of error because the Examiner only relies on Reynolds for the notion of using a human readable icon. In the combination, the “two separate transactions” are found in Ando and Zou. (See, e.g., Final Act. 5—6 (citing Ando as describing “a car specifying function for displaying an ID specific to a specific passenger” and “enabling a passenger who has received mediation information to visually confirm a pertinent taxi”); id. at 8 (citing Zou for “receiving, at the user operable device, a first copy of the human- readable identifier from the service provider as confirmation, wherein a second copy of the human-readable icon subsequently appears on a display at a location of the user”).). 7 Appeal 2015-003999 Application 12/956,714 Appellants next argue that “[o]n page 8, the Office Action further cites Zou for a ‘human-readable identifier,” but that “Zou does not disclose an icon” because it “provides a queue number that the Examiner refers to as a ‘now serving’ number” and “[o]ne of ordinary skill in the art would not regard this number as being the same as an icon.” (App. Br. 7—8.) This argument is not persuasive because, as noted above, the Examiner relies on Reynolds, not Zou, for the human-readable identifier. Finally, Appellants argue that “[i]n the Advisory Action, the Examiner again relies upon ‘a first copy and a second copy of an identifier’ in Zou, alleging that these copies are not addressed in context with the other references” but that “the rejections fail to show either use of a first copy as confirmation and the subsequent arrival of a taxi at the user’s location.” (App. Br. 8.) We are not persuaded by Appellants’ argument because the Examiner relies on Ando for the taxi related aspects of the combination and only cites Zou for the concept of “send[ing] a copy of an identifier to a user- operable device and a copy to another display for subsequent appearance of the identifier on a display at a location of the user.” Because we are not persuaded of error, we sustain the Section 103 rejection of claims 1 and 20, as well as the Section 103 rejection of claims 2—15 and 17—19, for which no additional arguments are offered. Section 103: Claim 16 Claim 16 adds to claim 1 “displaying the human-readable icon on a dashboard display of the taxi.” Appellants argue the rejection of this claim is deficient because “none of the references display the human-readable icon as claimed.” (App. Br. 13.) We do not agree, and therefore sustain the 8 Appeal 2015-003999 Application 12/956,714 Section 103 rejection of claim 16, because, as the Examiner found (see Final Act. 7—8), Reynolds’ personal cursors are human-readable icons. DECISION The rejection of claim 4 under 35 U.S.C. § 112 is affirmed. The rejection of claims 1—3 and 5—20 under 35 U.S.C. § 112 is reversed. The rejections of claims 1—20 under 35 U.S.C. § 103(a) are affirmed. 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). AFFIRMED3 3 Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 1—20 is affirmed. See 37 C.F.R. § 41.50(a)(1). 9 Copy with citationCopy as parenthetical citation