Ex Parte Lalancette et al

Patent Trial and Appeal Board

Oct 20, 2017

12956714 (P.T.A.B. Oct. 20, 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.
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.)
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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.)
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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.
«.)
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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
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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.
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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”).).
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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
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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).
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