Ex Parte Pastor et alDownload PDFPatent Trials and Appeals BoardFeb 8, 201913983985 - (D) (P.T.A.B. Feb. 8, 2019) Copy Citation 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. 2 Appeal 2018-002028 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 3 Appeal 2018-002028 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 ). 4 Appeal 2018-002028 Application 13/983,985 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 5 Appeal 2018-002028 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 6 Appeal 2018-002028 Application 13/983,985 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. 7 Appeal 2018-002028 Application 13/983,985 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. 8 Appeal 2018-002028 Application 13/983,985 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). 9 Appeal 2018-002028 Application 13/983,985 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 10 Copy with citationCopy as parenthetical citation