Ex Parte Patel et al

Patent Trial and Appeal Board

Apr 25, 2016

11373025 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111373,025 03/10/2006
86846 7590 04/27/2016
Baker Botts L.L.P.
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Labhesh Patel
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.
01236.P041 6660
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAB HE SH PATEL, SANJEEV KUMAR, SHMUEL SHAFFER,
and MUKUL JAIN
Appeal2014-000742 1
Application 11/373,0252
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-8, and 10-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 10, 2013) and Reply Brief ("Reply Br.," filed October 21, 2013), and
the Examiner's Answer ("Ans.," mailed August 19, 2013) and Final Office
Action ("Final Act.," mailed January 10, 2013).
2 Appellants identify Cisco Technology, Inc. as the real party in interest.
App. Br. 2.
Appeal2014-000742
Application 11/373,025
CLAIMED INVENTION
Appellants' claimed invention "relates generally to the related fields
of communication equipment and advertising systems; more specifically, to
systems and methods of operation for presenting advertisement information
to a mobile target" (Spec. i-f 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for wireless transmission of an
advertisement to a mobile device, comprising:
means for determining a geographic location of the mobile
device;
a database to store the advertisement along with associated
information that includes a telephone number, coordinates
corresponding to a location of the advertisement, and a boundary
range extending from the geographic location of the
advertisement; and
means for comparing the geographic location of the
mobile device against the coordinates and the boundary range,
and also for automatically mapping at least the telephone number
associated with the advertisement to an input command of the
mobile device when the geographic location of the mobile device
is within the boundary range extending from the geographic
location of the advertisement, the mapping of the at least the
telephone number being initiated without any contemporaneous
action or input of a user of the mobile device and irrespective of
any spatial orientation of the mobile device; and
means for filtering the advertisement based on certain
criteria, such that the telephone number associated with the
advertisement is only mapped to the input command of the
mobile device when the advertisement satisfies the certain
criteria.
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Application 11/373,025
REJECTIONS
Claims 1-3, 5-8, and 10-18 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as unpatentable over
claims 1, 3, 6-12, and 14 of copending Application No. 11/373,023 in view
of Official Notice.
Claims 1-3, 5-8, 10-12, 15, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ellenby (US 2002/0140745 Al, pub. Oct. 3,
2002) and Philyaw (US 6,961,555 Bl, iss. Nov. 1, 2005).
Claims 13, 14, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ellenby, Philyaw, and Engle (US 2004/0024640 Al, pub.
Feb. 5, 2004).
ANALYSIS
Double Patenting
Appellants do not request review of the provisional double patenting
rejection, and indicate that they may consider filing a terminal disclaimer to
obviate the rejection "upon indication of allowable subject matter of the
claims in their current form and prior issuance of the current claims of
U.S. Patent Application No. 11/373,023" (App. Br. 14).
In view of Appellants' statements, we decline to reach the double
patenting rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
(Panels have the flexibility to reach or not reach provisional obviousness-
type double patenting rejections).
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Application 11/373,025
Obviousness
Appellants argue pending claims 1-3, 5-8, and 10-12, 15, 17, and 18
as a group (App. Br. 14--20). We select claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
Ellenby discloses substantially all of the limitations of the claim except that
Ellenby does not disclose that "the mapping of the at least the telephone
number [is] initiated without any contemporaneous action or input of a user
of the mobile device," as recited in claim 1 (Final Act. 3). The Examiner
finds that Philyaw discloses wirelessly transmitting a message to a mobile
communication device when the device is within a predetermined boundary
range of an advertising location, and also discloses that the message includes
a code for responding to the advertisement, and that transmission of the
message is initiated automatically without contemporaneous user action or
user input (Final Act. 3 (citing Philyaw, col. 23, 1. 36- col. 24, 1. 55; col. 25,
11. 21---67; Figs. 25-27); see also Ans. 9). The Examiner, thus, concludes
that it would have been obvious to a person of ordinary skill in the art at the
time of Appellants' invention to "combine Philyaw's automatic transmission
of a message (signal) (without an action or input form the user), with
Ellenby' s transmission of [a] telephone number" and further that " [ o ]ne
would be motivated to transmit the message without an action from the user
when there are no other signals being received by the wireless device, as in
Philyaw's (see fig. 25)" (Final Act. 4).
Appellants argue that Philyaw and Ellenby cannot properly be
combined, as the Examiner proposes, because in Ellenby, in order for a
telephone number to be transmitted, a user action is required, i.e., the user
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Application 11/373,025
must point the mobile device at the object for which a telephone number is
desired and click a switch (App. Br. 15). Therefore, according to
Appellants, Ellenby teaches away from any combination with Philyaw' s
"alleged disclosure" of transmitting a message "without any
contemporaneous action or input of a user of the mobile communication
device" (id. at 15-16). Appellants' argument is not persuasive.
There is no dispute that, in Ellenby, a mobile device user triggers a
request to establish a telephone type connection by pointing to an object,
e.g., a restaurant, with which a telephone number may be associated
(see, e.g., Ellenby i1i129-31, 224, 325). Yet this disclosure is insufficient to
establish a teaching away absent some showing (and Appellants have made
no such showing) that Ellenby criticizes, discredits, or otherwise discourages
providing functionality for transmitting a telephone number to a mobile
device without user action or input. The law is clear that a prior art
reference does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (A teaching away occurs when a reference
discourages one skilled in the art from following the claimed path, or when
the reference would lead one skilled in the art in a direction divergent from
the path that was taken by the applicant).
We also are not persuaded by Appellants' further argument that
modifying Ellenby to no longer require user action would impermissibly
change its principle of operation and render Ellenby unsatisfactory for its
intended purpose (App. Br. 16-18). The test for obviousness is not whether
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Application 11/373,025
the features of one reference may be bodily incorporated into the structure of
a second reference. Instead, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."). The Examiner does not propose any bodily incorporation of
Philyaw into Ellenby or vice versa. Moreover, modifying Ellenby in light of
Philyaw, as the Examiner proposes, allows a user to be connected by
telephone to a desired entity, consistent with Ellenby' s intended purpose
(see Ellenby i-f 386).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 1, and claims 2, 3, 5-8, 10-12, 15,
17, and 18, which fall with claim 1.
Claims 13 and 14 and claim 16 ultimately depend from independent
claims 7 and 15, respectively. Appellants do not present any argument in
support of the separate patentability of these dependent claims. Therefore,
we sustain the Examiner's rejection of claims 13, 14, and 16 under
35 U.S.C. § 103(a).
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Application 11/373,025
DECISION
The Examiner's rejection of claims 1-3, 5-8, and 10-18 under
35 U.S.C. § 103(a) is affirmed.
We do not reach the Examiner's provisional rejection of claims 1-3,
5-8, and 10-18 on the ground ofnonstatutory obviousness-type double
patenting.
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).
AFFIRMED
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