Ex Parte Pastor et al

Patent Trials and Appeals Board

Feb 8, 2019

13983985 - (D) (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/983,985 10/22/2013
48116 7590 02/12/2019
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Alain Pastor
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUTZ 201682US01 1286
EXAMINER
LUU,DAVIDV
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
docketing@faysharpe.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAIN PASTOR and CEDRIC MIVIELLE
Appeal 2018-002028
Application 13/983,985
Technology Center 2100
Before JOSEPH L. DIXON, SCOTT B. HOW ARD, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-002028
Application 13/983,985
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-6 and 8-18. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a determining active real objects for
running a software application. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method to run a software application accessible from a
communication terminal using at least one real object, said
method comprising:
describing a curve m space from said communication
terminal;
identifying a geographic zone based on said curve;
determining, by the communications terminal, a set of
active real objects located within said geographic zone having a
communication interface with a communication network;
identifying, by the communications terminal, an
application that is compatible with at least one of said active real
objects by querying a database associating available applications
with required conditions, said query indicating abilities offered
by the active real objects, and determining a set of applications
for which associated required conditions correspond to abilities
offered by the real objects in said set; and
interfacing said application with said active real objects.
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Application 13/983,985
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Khosravy et al.
Holden et al.
Hilton et al.
US 2009/0315766 Al
US 2010/0233961 Al
US 2010/0318929 Al
REJECTIONS
Dec. 24, 2009
Sept. 16, 2010
Dec. 16, 2010
The Examiner made the following rejections:
Claims 1---6, 9, 10, and 13-18 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable by Holden in further view of Khosravy.
Claims 8, 11, and 12 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable by Holden in view of Khosravy and in further view of
Hilton.
ANALYSIS
With regards to independent claim 1, Appellants argue:
Holden is not concerned with defining a geographic zone
to identify a set of accessories, and it is in impermissible
hindsight, based only on information gleaned from the present
application, that the Office Action struggles to find definition of
a geographic zone in Holden ( e.g., see the Office Action in the
middle paragraph on page 5 ["Accessories can be many kinds
of objects, most of which can reside in a user's home [i.e.,
geographic zone]"]) and asserts that some of the possible
accessories listed in paragraph 31 might be found in a user's
home, which the Office Action asserts is a geographic zone.
However, Holden does not disclose or suggest describing
a curve in space from said communication terminal; identifying
a geographic zone based on said curve and determining, by the
communications terminal, a set of active real objects located
within said geographic zone having a communication interface
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Application 13/983,985
with a communication network as is called for, for example, in
claim 1. Instead, the process of Holden begins with a user
making a connection to a selected accessory ( e.g., 704 of cited
Fig. 7 of Holden).
Furthermore, it is respectfully submitted that Khorsravy3
does not cure the deficiencies of Holden. Even if the pointing
described by Khorsravy3 is considered to be suggestion of
describing a curve in space (which is disputed) identifying a
geographic zone, the points of interest identified by the pointing
of Khorsravy3 [ 1] are, for example, bridges and restaurants and
are not fairly construed to disclose or suggest an identification
or selection of active real objects ( e.g., see page 1, line 3 - page
2, line 14 of the present application).
Moreover, and in any event, it is respectfully submitted
that the Office has not met its burden of presenting a prima facie
case of obviousness. For example, the Office Action alleges that
motivation for modifying Holden according to the suggested
combination would have been for selecting a subset of the total
real objects available within the user's current geographic
location. However, this is a motivation gleaned only from the
present application. It is respectfully submitted that Holden
expresses no interest selecting a subset of real objects within a
user's current geographic location. To the contrary, it is
respectfully submitted that Holden suggests a connection with a
specific device or sensor that the user is specifically interested in
and Holden discloses consideration of such a device only after
they have been connected to the mobile communication device
of Holden (e.g., paragraphs 113 and 114; cited Fig. 7, 704,
Figs. lA and lB).
Accordingly, it is respectfully submitted that the suggested
motivation for making the suggested combination is specious
and based on impermissible hindsight.
(App. Br. 11-12) (underlining omitted).
1 Appellants refer to the currently cited Khosravy document as Khosravy3
for clarity of the record. The presently cited document is a third document
by Khosravy et al. (See App. Br. 10 fn. 1 ).
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The Examiner maintains that Appellants have a broader interpretation
of "active real objects" as identified by paragraphs 44--46 of the present
Specification and the Examiner
takes on a broader interpretation of active real objects, for
example, objects is a broad term that can refer to a computing
device e.g. DVD player or a building such as a restaurant. Hence,
active real object can mean a restaurant (i.e., object) that have a
router [i.e., communication interface] that interfaces with the
internet [i.e., communication network] in order to provide free
wifi service to its customers. Thus, Khosravy is able to teach
active real objects. See Khosravy3 paragraph [0059] which
teaches a local in-store set of transceivers located inside a store,
in others a store e.g. restaurant contains computing devices with
connection to a communication network. Another example
interpretation of "active real objects" could be a person [i.e.,
object] carrying a smartphone [i.e., communication interface]
that connects to the internet via wifi [i.e., communication
network]; a person carrying the smartphone with network
interface is considered an active real object. See Khosravy3 Fig.
21 John Smith POI2 which suggests this.
(Ans. 3--4). In response to Appellants' hindsight argument, the Examiner
further maintains that
Examiner did not glean the motivation from applicant's
specification because the motivation is present in the reference
used. Examiner has cited in the Final Rejection as evidence:
Khosravy3 paragraph [0008] which mentions determining of a
subset of POI objects using directional and location information
instead of only using location information as further stated in
paragraphs [0039]-[0040]. In addition, Fig. 15 with paragraphs
[O 115]-[0117] which suggests this motivation of using
directional and location information to determine a subset of POI
objects out of the total POI objects within a user's area and would
have been obvious to a person of ordinary skill of the art at the
time of invention to improve users experience by identifying
object in the specific direction of users interest. MPEP 2144
states "the rationale to modify or combine the prior art does not
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Application 13/983,985
have to be expressly stated in the prior art; the rationale may be
expressly or impliedly contained in the prior art or it may be
reasoned from knowledge generally available to one of ordinary
skill in the art, established scientific principles, or legal precedent
established by prior case law.". Therefore it would be obvious
to take Khosravy3 's curve-describing techniques applied to
active real-objects and carry it over to Holden's active-real
objects to improve users experience by identifying object in the
specific direction of user's interest.
(Ans. 4--5).
The Examiner attempts to include non-patent literature reference in
the combination, but the Examiner has not included this reference in the
combination and the obviousness rejection. (Ans. 5). Additionally, the
Examiner did not rely upon this feature as being well-known in mobile
computing devices in the grounds of the rejection. See In re Hoch, 428 F.2d
1341, 1342 n.3 (CCPA 1970) ("Where a reference is relied on to support a
rejection, whether or not in a 'minor capacity,' there would appear to be no
excuse for not positively including the reference in the statement of the
rejection."). As a result, we do not consider this reference in the
combination.
In response to Appellants' argument that paragraph 31 of the Holden
reference lists examples and does not disclose the terminals are within a
geographical zone, the Examiner maintains:
Appellant appears to have interpreted the Examiner's citations
above to mean a communication terminal that is able to
determine the set of accessories (i.e., active real objects) AND to
be aware of the geographic zone associated with the determined
set of accessories. The Examiner's citations was not intended to
mean this. The Examiner interpreted Holden's citations to teach
a communication terminal that determines a set of active real
objects (i.e., see Fig. 3 300-302), wherein the set of accessories
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are located within a geographic zone (i.e., suggested by
paragraph [0031] which mentions dishwasher and refrigerator);
In other words, the claim language does not make it clear that the
communications terminal is determining the set of active real
objects as well as the geographic zone associated with them.
Thus the argument is not persuasive. However the Examiner
notes that even if the claim were to be amended to clearly recite
that the communication terminal is able to determine the set of
active real objects as well as their associated geographic zone,
Holden's paragraph [0111] would teach this since it mentions
that the accessories send their location information to the mobile
computing device. In other words, the paragraph teaches that the
communication terminal not only determines a set of accessories,
but their location (i.e., geographic zone) as well.
(Ans. 6). From our review of the communications terminals and Figures IA
and 1 B of the Holden reference, we agree with the Examiner that the
terminals can be any type of object which has either a wired or wireless
connection to the mobile computing device but the connection is one to one.
(See Abstract "an accessory"). 2 But we cannot agree with the Examiner that
the Holden reference discloses or suggests any geographic zone.
The Examiner contends that "the claim language does not make it
clear that the communications terminal is determining the set of active real
objects as well as the geographic zone associated with them." (Ans. 6).
Additionally, we cannot agree with the Examiner that
communications terminal does not determine the set of active real objects as
2 We note that para. 13 8 of the Holden reference discusses termination of
process 1000 and returning to block 1004 to look for a compatible accessory
and start a new session in Figure 10 and in paragraph 140, discusses
concurrently interacting with multiple applications or multiple accessories,
but the Holden reference does not detail how the compatible accessories are
found.
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well as the geographic zone because the first three limitations are
inextricably tied to communications terminal. ("[D]escribing a curve in
space from said communication terminal; • identifying a geographic zone
based on said curve; • determining, by the communications terminal").
(App. Br. 29). We find the communications terminal is expressly or
implicitly recited in each step.
The Examiner maintains that Appellants are arguing the references
individually. However, the Examiner has parsed the limitations between the
two prior art references. For the first three limitations of determining
communication terminals within a geographic zone which has been
described and identified, the Examiner relies on the teachingsof the
Khosravy reference. And for the two subsequent steps of identifying and
interfacing with the active real objects (which were identified previously),
the Examiner relies on the teachings of the Holden reference. But the
Examiner has not shown any teaching or provided a convincing line of
reasoning for suggesting a linkage between the two distinct sets of steps.
Appellants challenge the motivation cited for modifying Holden
to adopt the selective identification of real objects within a geographic area
as taught by Khosravy. 3 (App. Br. 11 ).
The Examiner identifies plural locations within the Khosravy
reference to suggest determining a subset of points of interest relative to the
portable device (citing paragraphs 8, 39, 40, 115-117), but these portions of
the reference merely teach and suggest the identifying within an area and the
3 Throughout the prosecution, the Examiner has relied upon various
Khosravy references as the secondary reference and has changed the primary
references. After each change, Appellants have disputed the combination
and contended the Examiner has relied upon hindsight.
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Examiner merely relies upon the knowledge generally available to one of
ordinary skill in the art for the combination. (Ans. 4--5). The Examiner then
summarily concludes that "it would be obvious to take Khosravy3 's curve-
describing techniques applied to active real-objects and carry it over to
Holden's active-real objects to improve users experience by identifying
object in the specific direction of user's interest." (Ans. 5). But the
Examiner does not provide any evidence beyond general reliance upon the
MPEP.
Based upon the totality of the references and reading the claims as a
whole, we cannot agree with the Examiner's proffered combination of
Holden and Khosravy to teach and suggest the invention as recited in the
language of independent claim 1. Consequently, we cannot sustain the
Examiner's obviousness rejection of illustrative independent claim 1 and
dependent claims 2-6, 9, 10, 13-15, and 18.
Independent claims 16 and 1 7
With respect to independent claims 16 and 17, Appellants rely upon
the same arguments advanced with respect to independent claim 1. (App.
Br. 21-22).
The Examiner relies upon the prior findings for the showing of
obviousness of claims 16 and 17 and generally finds Appellants' arguments
to be unpersuasive and generally relies upon the MPEP ("known work in
one field of endeavor may prompt variations of it for use in either the same
field or a different one based on design incentives or other market forces if
the variations are predictable to one of ordinary skill in the art.") (Final Act.
19, 23).
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Because we found error in the Examiner's conclusion of obviousness
of independent claim 1, we similarly find error in the Examiner's showing of
obviousness with respect to independent claims 16 and 17.
Dependent claims 2---6, 8-15, and 18
With respect to dependent claims 8, 11, and 12, the Examiner does not
identify how the Hilton reference remedies the deficiency in the base
combination. Therefore, we cannot sustain the Examiner's rejection of
claims 8, 11, and 12.
CONCLUSION
The Examiner erred in rejecting claims 1---6 and 8-18 based upon
obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we reverse the Examiner's obviousness
rejection of claims 1---6 and 8-18 under 35 U.S.C. § 103(a).
REVERSED
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