Ex Parte Morris

Patent Trial and Appeal Board

Nov 30, 2012

10869699 (P.T.A.B. Nov. 30, 2012)

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.
10/869,699 06/16/2004 Robert P. Morris I236/US 7965
49278 7590 11/30/2012
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
KIM, WESLEY LEO
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
11/30/2012 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 ROBERT P. MORRIS
____________________

Appeal 2010-007387
Application 10/869,699
Technology Center 2600
____________________

Before DAVID M. KOHUT, JOHNNY A. KUMAR, and BRYAN F.
MOORE, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007387
Application 10/869,699

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method for collecting location sensitive information
over a wireless local area network by an electronic device
comprising:
specifying a request for a product or service via an
electronic device directly coupled to a wireless local area
network (LAN), the request including device information
describing a system environment of the electronic device, the
system environment representing at least one of a capability and
an operating environment of the electronic device;
receiving via the wireless LAN advertising information
related to a local merchant from a local merchant device
dedicated only to the local merchant and directly coupled to the
wireless LAN, the advertising information including merchant
preference information for customizing a displaying of the
advertising information in the system environment of the
electronic device according to the at least one of the capability
and the operating environment of the electronic device; and
displaying the advertising information in the system
environment of the electronic device based on the merchant
preference information if a product or service offered by the
local merchant matches the request;
wherein the electronic device collects location sensitive
information without requiring the electronic device to specify
its location and the dedicated local merchant device distributes
advertising information directly to the electronic device,
eliminating the need for a third party directory service.

Appeal 2010-007387
Application 10/869,699

3
Rejections
The Examiner rejected claims 1-4, 13, 15-17, 21, 22, 24, 28, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Treyz (US 6,587,835
B1, Jul. 1, 2003) and Minborg (US 6,826,403 B1, Nov. 30, 2004). (Ans. 3-
6).
The Examiner rejected claims 10-12, 14, 23, 25-27, and 30-32 under
35 U.S.C. § 103(a) as being unpatentable over Treyz and Minborg, further in
view of O’Toole (US 6,279,112 B1, Aug. 21, 2001). (Ans. 6-8).
The Examiner rejected claims 33-35 under 35 U.S.C. § 103(a) as
being unpatentable over Treyz and Minborg, further in view of Claiborne
(US 2002/0169662 A1, Nov. 14, 2002). (Ans. 8-9).
The Examiner rejected claims 5-9 and 18-20 under 35 U.S.C. § 103(a)
as being unpatentable over Treyz and Minborg, further in view of Eran (US
2004/0156399 A1, Aug. 12, 2004). (Ans. 9).
Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103(a) for numerous reasons including but not limited to:
(1) because the references in combination fail to disclose certain claim
limitations, (2) teaching away, and (3) insufficient articulated reason to
modify or combine. (Br. 11-28).

Issue on Appeal
Did the Examiner err in rejecting claims 1-35 as being obvious over
the combination of the references, as indicated above?

Appeal 2010-007387
Application 10/869,699

4
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief) that the Examiner has erred.
We disagree with Appellant’s conclusions. We 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 set forth by the Examiner in
the Examiner’s Answer (pages 3-24) in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner.

CONCLUSIONS
(1) The Examiner has not erred in rejecting:
a) claims 1-4, 13, 15-17, 21, 22, 24, 28, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Treyz and Minborg;
b) claims 10-12, 14, 23, 25-27, and 30-32 under 35 U.S.C.
§ 103(a) as being unpatentable over Treyz, Minborg, and
O’Toole;
c) claims 33-35 under 35 U.S.C. § 103(a) as being unpatentable
over Treyz, Minborg, and Claiborne; and
d) claims 5-9 and 18-20 under 35 U.S.C. § 103(a) as being
unpatentable over Treyz, Minborg, and Eran.
(2) Claims 1-35 are not patentable.

Appeal 2010-007387
Application 10/869,699

5

DECISION
The Examiner’s rejections of claims 1-35 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)(1)(iv).

AFFIRMED

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