Ex Parte Piett et al

Patent Trial and Appeal Board

Mar 20, 2017

13441148 (P.T.A.B. Mar. 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.
13/441,148 04/06/2012 William Todd Piett 30026-019001 3861
69713 7590 03/22/2017
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
EXAMINER
EL-ZOOBI, MARIA
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
INFO @ORP ATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM TODD PIETT
and MATTHEW A. SERRA
Appeal 2014-006634
Application 13/441,1481
Technology Center 2600
Before JEAN R. HOMERE, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—15. App. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on March 8, 2017.
We affirm.
1 According to Appellants, the real party in interest is Rave Wireless,
Incorporated. App. Br. 1.
Appeal 2014-006634
Application 13/441,148
STATEMENT OF THE CASE
Appellants’ application relates to emergency response data
management. Abstract. Claim 1 is illustrative of the appealed subject
matter and reads as follows:
1. A method for providing emergency response information
associated with an individual emergency call source from a
plurality of emergency call sources, said method comprising:
accepting first emergency response information associated
with the individual emergency call source from a first
information source other than an individual directly
corresponding to the individual emergency call source;
validating the first emergency response information; and
maintaining the validated first response information for
enabling provision thereof in association with an emergency call
from the individual emergency call source.
REJECTIONS
Claims 1—10 and 12—15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Agarwal et al. (US 2003/0012344 Al; published Jan. 16,
2003) (“Agarwal”).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Agarwal and Oxley (US 2003/0091159 Al;
published May 15, 2003).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Action from which this
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appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusions reached by the Examiner. We highlight the following
additional points.
Rejection of Claims 1—3, 5—7, 10, and 12—15 under 35 U.S.C. § 102(b)
Appellants first contend the Examiner erred in rejecting claim 1 as
anticipated by Agarwal because the cited portions of Agarwal do not
disclose the “validating” step of claim 1. App. Br. 5. Appellants argue that
“the majority of the paragraphs do not even mention the [Emergency System
Response File (“ESRF”)]” and those that do “only describe uploading it,
allowing access to it, or encrypting it.” Id. at 12. Appellants further argue
that the caller ID disclosed in paragraph 53 of Agarwal “simply tells you the
telephone number of the calling telephone. It has nothing to do with
validating the ESRF.” Id. at 12.
Appellants’ arguments do not persuade us of Examiner error. The
Examiner in the Answer explained that paragraphs 53—55 of Agarwal
disclose that the phone number used to place the emergency call is
automatically recognized at the emergency response center using the caller
ID function and information on an associated web site can be automatically
displayed there. Ans. 7. Thus, the Examiner relies on the information on a
web site associated with a URL as the recited “first emergency response
Information,” not the ESRF disclosed in Agarwal, as Appellants contend.
The Examiner also explained that “the Emergency Utility may initiate
a chat (audio, text, video, multi-media) session with the 911 emergency
response center to communicate the nature of the emergency and seek
assistance (so the provided information can be validated since a multimedia
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session is opened with the caller).” Id. Thus, the Examiner interprets the
disputed limitation “validating the first emergency response information” as
broad enough to encompass automatically recognizing the phone number
used to place the emergency call using a caller ID function, discussed above,
and automatically displaying associated information from a web site based
thereon or opening a multimedia session with the caller. Ans. 7.
Appellants have not persuasively shown that the Examiner’s
interpretation is overly broad, unreasonable, or inconsistent with Appellants’
Specification. Rather, Appellants argue in the Reply Brief that “there is no
actual disclosure of validating any information” in the cited paragraphs.
Reply Br. 2. The Examiner, however, does not contend, nor is the Examiner
required to demonstrate, that the identical text of rejected claim 1 appears in
the cited references. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Appellants further argue that, in the claimed invention, “the caller and
the person who provided the information are different. Thus, the caller
cannot validate the information for the simple reason that he does not know
what it is.” Reply Br. 2. The plain language of claim 1, however, does not
require the caller to validate the first emergency response information. See
App. Br. 32. Moreover, claim 1 does not require that a person or individual
provide the first emergency response information. Rather, the claim requires
“a first information source other than an individual directly corresponding to
the individual emergency call source.” Id. The examples of first
information sources set forth in Appellants’ Specification include an
“automated information source” and describe that “information may be
provided in a machine-to-machine interaction.” See Spec, 15—17.
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For these reasons, we are not persuaded of error in the Examiner’s
finding that Agarwal discloses the disputed “validating” step.
Appellants next contend the cited portions of Agarwal do not disclose
the “accepting” step recited in claim 1. App. Br. 13—14. Appellants argue
that:
when one attempts to read this limitation on Agarwal, the result
is:
accepting
first emergency response information
[ESRF] associated with the individual
emergency call source [computing device
executing the [Emergency Utility (“EU”)]
from
a first information source [owner of the
computing device] other than an individual
[owner of the computing device] directly
corresponding to the individual emergency
call source [computing device executing the
EU],
Id. at 14—15 (emphasis omitted).
Appellants’ arguments are not persuasive because they do not fully
address the Examiner’s rejection. As discussed above, the Examiner found
that “the web site of the URL that corresponds to the phone number of the
incoming call” disclosed in paragraph 52 of Agarwal meets the limitation
“first information source other than an individual directly corresponding to
the individual emergency call source.” Ans. 7. Appellants argue in the
Reply Brief that “[a] URL is obviously not a ‘source’ of information.”
Reply Br. 5. Appellants further argue that, based on a diagram that does not
appear in the Agarwal reference, the HTML file associated with the URL
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disclosed in Agrawal is from the same source as another file in the Agarwal
system. Id. at 5—8.
Appellants, however, do not persuasively show error in the
Examiner’s interpretation of the disputed limitation as broad enough to
encompass accepting emergency response information from the web site of a
URL that corresponds to a caller’s phone number, as is disclosed in
paragraph 52 of Agarwal. In particular, Appellants have not persuasively
shown the Examiner’s interpretation of the disputed limitation or the term
“source” is overly broad, unreasonable, or inconsistent with the
Specification. As discussed above with regard to the “validating” step, we
note that the Specification describes that “[t]he first information source
comprises an automated information source” and that “information may be
provided in a machine-to-machine interaction.” Spec. 117. Thus, we agree
with the Examiner that, under the broadest reasonable interpretation, the
disputed limitation is sufficiently broad to encompass accepting emergency
response information from the web site of the URL that corresponds to the
phone number of the incoming call, as is disclosed in paragraph 52 of
Agarwal.
In the Reply Brief, Appellants argue for the first time that the cited
prior art fails to teach “maintaining the validated response information,” as
claim 1 requires. See Reply Br. 9. Appellants, however, have waived this
argument because they presented it for the first time in the Reply Brief,
without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010
(informative opinion) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
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rebut the Examiner's rejections, but were not”). Appellants’ arguments in
the Appeal Brief were limited to the “validating” and “accepting” steps of
claim 1 (see App. Br. 5—15), and the Examiner did not have an opportunity
to respond to new arguments raised for the first time in the Reply Brief
regarding the “maintaining” step.
We note, however, that Appellants’ new arguments are based on a
narrower interpretation of the “maintaining” step than that applied by the
Examiner. Specifically, Appellants’ arguments require that the
“maintaining” step recited in claim 1 is performed by “someone.” See Reply
Br. 9. The plain language of claim 1, however, requires only “maintaining
the validated first response information for enabling provision thereof in
association with an emergency call from the individual emergency call
source,” and does not require an individual or person to perform the step.
See App. Br. 32. Appellants point to no explicit or implicit definition of
“maintaining” in the Specification that would require such a narrow
interpretation. Additionally, as discussed above, we agree with the
Examiner that Agarwal discloses the recited “validating” step recited in
claim 1. Thus, we are not persuaded by Appellants’ new argument that,
because the first response information is not validated in Agarwal, the
Examiner erred in finding that Agarwal discloses “maintaining the validated
first response information.”
Appellants also present for the first time in the Reply Brief an
argument that claim 1 “recites events that occur long before any emergency
occurs.” Reply Br. 10. Appellants argue that “[t]he claim recites steps that
occur when someone is first registering with a service provider. No
emergency is in progress.” Id. Again, Appellants have waived this
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argument because they presented it for the first time in the Reply Brief,
without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Borden, 93 USPQ2d at 1473—74. We note, however, that no such
temporal limitation appears in the plain language of claim 1, and Appellants
provide no persuasive reasoning that would lead us to interpret the claim to
require such a limitation.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 as anticipated by Agarwal. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 1, as well as
the Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 15 and
dependent claims 2, 3, 5—7, 10, and 12—14, for which Appellants made no
additional arguments. See App. Br. 3—15.
Rejection of Claim 9 under 35 U.S.C. § 102(b)
Appellants contend the Examiner erred in rejecting claim 9 because
Agarwal fails to disclose “maintaining emergency response information
associated with the individual emergency call source from a plurality of
information sources,” as recited in claim 9. App. Br. 15. Appellants argue
that none of the paragraphs in Agarwal cited by the Examiner mentions the
ESRF or maintaining the ESRF. See App. Br. 16—22. Appellants further
argue “the information in the ESRF is not ‘from a plurality of information
sources’” as claim 9 requires because, in Agarwal, “all the information
comes from one source: the owner of the device.” Id. at 15—16.
Appellants’ arguments do not persuade us the Examiner erred. First,
Appellants present no definition of “maintaining” and point to none in the
Specification. The plain and ordinary meaning of “maintain” includes “to
preserve or retain.” See The American Heritage Dictionary 505 (5th ed.
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2012). Paragraph 18 of Agrawal, relied on by the Examiner, discloses that
“the Emergency Utility contacts the local emergency response center, alerts
it to the existence of an emergency, and automatically uploads the
emergency management system response file to the emergency response
center’s computer system.” See Final Act. 7; Agarwal 118. In the two
preceding paragraphs, Agarwal discloses the information contained in the
emergency response file. Agarwal H 16—17. Moreover, Agarwal discloses
that the web site of the URL that corresponds to the phone number of the
incoming call, disclosed in paragraph 52 of Agarwal, can be automatically
displayed at the emergency response center. Agarwal H 52—53. Thus,
because Agrawal teaches uploading and displaying emergency response
information, we find that one of ordinary skill in the art would have
understood that the emergency response information in Agarwal is at least
retained for or during those activities. Thus, we agree with the Examiner
that under the broadest reasonable interpretation of “maintaining,” Agarwal
discloses “maintaining emergency response information associated with the
individual emergency call source,” as recited in claim 9.
Second, with regard to Appellants’ argument that, in Agarwal, “all the
information comes from one source: the owner of the device,” for reasons
similar to those discussed above with regard to the “validating” and
“accepting” steps recited in claim 1, we are not persuaded that the limitation
“information source” is limited to an individual or person. The plain
language of claim 9 does not require that a person or individual be the
source of the emergency response information. App. Br. 33. The Examiner
interpreted “information sources” broadly, reasonably, and in a manner
consistent with the Specification in finding that the phrase is broad enough
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to encompass the web site associated with a URL, as disclosed in paragraph
52 of Agrawal (Ans. 4, 7), as discussed above.
As further explained in the Answer, the Examiner also found the
disputed limitation broad enough to encompass information from
governmental and non-governmental organizations that communicate
electronically with the Emergency Utility when services from those
organizations are required. Ans. 8 (citing Agarwal 126). Appellants’
argument in the Reply Brief that in paragraph 26, “[tjhere is no disclosure of
the fact that providing ‘medical and security related services (emergency or
otherwise) on a registration and/or nonregistration basis’ is the same as or
equivalent to providing ‘emergency response information’ that could then be
maintained” (Reply Br. 13) is not persuasive because the Examiner does not
point to “medical and security related services (emergency or otherwise) on
a registration and/or nonregistration basis” as meeting the “emergency
response information” recited in claim 9. See Ans. 8. Rather, the Examiner
points to information needed to assist in the emergency. See id.
Appellants next contend that, for the same reasons discussed above
with regard to the “maintaining” step, none of the cited paragraphs of
Agarwal discloses the limitation “prior to an emergency call from the
individual emergency call source, accepting emergency response
information associated with the individual emergency call source from one
or more sources or the plurality of information sources other than an
individual directly corresponding to the individual emergency call source.”
App. Br. 22. Appellants make no additional arguments specific to the
“accepting” step recited in claim 9 and do not address that limitation in the
Reply Brief. Thus, for the reasons discussed above with regard to the
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“maintaining” step, we are not persuaded by Appellants’ arguments that
Agarwal does not disclose the recited “accepting” step.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 9 as anticipated by Agarwal. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 9.
Rejection of Claim 4 under 35 U.S.C. § 102(b)
Claim 4 depends from claim 1 and further recites “wherein the first
information source comprises an entity associated with the individual
emergency call source.” App. Br. 32. Appellants contend the Examiner
erred in rejecting claim 4 as anticipated by Agarwal because “the various
entities in [Agarwal paragraph] 26 are not sources of information that would
ultimately be in the ESRF.” Id. at 23 (emphasis omitted).
We are not persuaded the Examiner erred. In the Answer, the
Examiner explained that paragraph 52 of Agarwal discloses the disputed
limitation. Ans. 8. Specifically, the Examiner pointed to Agrawal’s
disclosure of a web site accessed by a URL associated with the phone
number that placed the emergency call as the recited “first information
source.” See id. In the Reply Brief, Appellants argue in a conclusory
manner that, in Agarwal, “[t]he source of the emergency call in the cited art
is the device that is running the EU. The URL is not associated with this
device. The URL is associated with whatever web site to which it points.”
Reply Br. 12. Appellants’ arguments are not persuasive because they do not
address the rejection actually made by the Examiner.
Rejection of Claim 8 under 35 U.S.C. § 102(b)
Claim 8 depends from claim 1 and further recites:
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further comprising accepting second emergency response
information associated with the individual emergency call source
from the individual directly corresponding to the individual
emergency call source, and maintaining the second emergency
response information for providing in conjunction with the first
emergency response information in association with an
emergency call from the individual emergency call source.
App. Br. 32—33. Appellants contend the Examiner erred in rejecting claim 8
as anticipated by Agarwal because the entities disclosed in paragraph 26 of
Agarwal provide medical services, not information. Id. at 25. Appellants
also argue that paragraphs 27, 32, 52, 53, 64, and 72 of Agarwal do not
disclose the limitation recited in claim 9. Id. Appellants further argue it is
“unclear what could possibly be regarded as ‘second emergency response
information associated with the individual emergency call source, ’ or what
could be an ‘individual directly corresponding to the individual emergency
call source’ in these paragraphs.” Id.
Appellants’ arguments are not persuasive. In the Answer, the
Examiner explained that Agarwal discloses communications with the 911
emergency response center and with other persons, such as friends and
lawyers. Ans. 9 (citing Agarwal 121). The Examiner further explained that
Agarwal discloses that “information is being provided to the emergency
personnel to further assist in the situation.” Id. (citing Agarwal 125).
Paragraph 25 of Agarwal, relied on by the Examiner, discloses
“communication from emergency response vehicles back to the emergency
response center to provide updates concerning ongoing or completed
emergency responses, or to request additional information necessary for
effective emergency response.” Id. In the Reply Brief, Appellants merely
argue that [tjhere is no disclosure of the fact that a chat session with a friend
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or a lawyer would necessarily involve ‘accepting second emergency
response information.Reply Br. 12. Appellants, however, do not
persuasively rebut the Examiner’s finding that paragraph 25 discloses an
exchange of information with emergency personnel. See id. Thus, we agree
with the Examiner that paragraphs 21 and 25 disclose the limitation recited
in claim 8.
For these reasons, we are not persuaded the Examiner erred in finding
that Agrawal’s disclosure of the communication and retention of information
from emergency personnel meets the disputed limitation of claim 8.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection of
claim 8.
Rejection of Claim 11 under 35 U.S.C. § 103(a)
In rejecting claim 11, the Examiner found that Agarwal teaches or
suggests all of the recited limitations, except “providing the maintained
emergency response information comprises providing references to the parts
of the information,” for which the Examiner relied on Oxley. Final Act. 9
(citing Agarwal 70-73, Oxley ]Hf 34, 55).
Appellants contend the cited portions of Oxley do not disclose the
“providing” step recited in claim 11. App. Br. 26—29. Appellants argue that
“[i]t is unclear how just naming the parts of a wireless communication
device describes” the disputed limitation. Id. at 27 (citing Oxley 1 55).
Appellants further argue that paragraph 34 of Oxley “appears to have
nothing to do with ‘providing references to the parts of the information
[associated with the individual emergency call source][’]” because “nobody
is making a call. Subscribers 44 are just providing information to entity 40,
which adds the information to a database 36.” Id. at 29. Appellants also
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argue that the index taught in paragraph 34 of Oxley refers to the entirety of
the information associated with a subscriber 44 and not “parts of the
information” associated with an individual emergency call source, as claim
11 requires. Id.
Appellants’ arguments do not persuade us of Examiner error.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
In the Answer, the Examiner explained that Agarwal teaches that a
computing device can communicate different information to different third
parties for use in emergency situations and, thus, teaches that emergency
information is stored in more than one system. Ans. 10 (citing Agarwal
173). The Examiner further explained that Agarwal teaches that part of the
emergency information associated with an individual emergency call source
can be stored on a web site accessible by a URL based a phone number. Id.
(citing Agarwal 52—54). The Examiner relied on Figure 1 and paragraphs
34 and 55 of Oxley as teaching that a database containing emergency
information can be indexed by a code unique to each subscriber. Ans. 10.
The Examiner concluded that it would have been obvious to index each of
the multiple databases or systems of Agarwal by a code unique to each
subscriber and to access information based on those indexed, as taught by
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Oxley. Id. at 10—11; see also Final Act. 9. Thus, the Examiner relies on the
combination of Agarwal and Oxley as teaching or suggesting the disputed
limitation in claim 11.
In the Reply Brief, Appellants argue that in Agarwal, “there would be
a second copy of the information” at the third party taught in paragraph 73,
which is not the same as “maintaining separate parts in different locations,”
as claim 11 requires. Reply Br. 14. Appellants also argue that in Agarwal
paragraphs 52—54, “there are multiple pointers to the same information,”
which also does not teach or suggest the disputed limitation. Id. at 15.
Appellants further argue that Oxley Figure 1 and paragraph 34 teach
“multiple databases stored at one single location” (emphasis omitted), which
is not the same as multiple parts of a database stored at multiple locations.
Id.
We disagree with Appellants that claim 11 requires maintaining
separate parts of information at different locations. The plain language of
the claim requires “maintaining parts of the emergency response information
in separated systems,” with no requirement that the parts be different from
each other or that the systems be located in different locations. See App. Br.
33. Appellants point to no definition of the term “parts” in the Specification,
and we find none. The plain and ordinary meaning of “parts” includes
“portions of a whole.” See The American Heritage Dictionary 609 (5th
ed. 2012). Paragraph 73 of Agarwal, cited by the Examiner, teaches an
exchange of medical information between a user’s computing device and a
cruise operator’s system, and also teaches the exchange of critical phone
numbers between the computing system of an amusement park and the
user’s computing system. Thus, under the broadest reasonable interpretation
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of the claim, we agree with the Examiner that Agarwal teaches that parts of
emergency information are maintained in separate systems, as claim 11
requires. See Ans. 10.
Appellants also contend “[t]he examiner has made no attempt at some
‘articulated reasoning with some rational underpinning to support the legal
conclusion’ that it would have been so obvious to modify Agarwal as
disclosed by Oxley in order to simplify access to data and to reduce
unnecessary access.” App. Br. 30 (emphasis omitted). Appellants also
argue that the reason to combine the references proffered by the Examiner
“lacks technical merit” because, in Oxley, the subscriber sends an
identifying message in a variety of formats, which would not save time “if a
receiver understands one format.” Id.
We find neither argument persuasive. We find the Examiner has
provided persuasive articulated reasoning with rational underpinning for an
artisan of ordinary skill to have modified the separate systems taught in
Agarwal with the indexing scheme taught in Oxley—“to simplify the access
to the required information which will save time and avoid obtaining
information that may not be needed.” See Final Act. 9. In addition,
Appellants have not persuaded us how Oxley’s teaching of sending an
identifying message in a variety of formats means the Examiner’s proposed
rationale for combining the references lacks technical merit. In particular,
Appellants have not sufficiently or persuasively explained the relationship
between sending an identifying message in a variety of formats and the
combination proposed by the Examiner.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combined teachings of Agarwal and Oxley teach or suggest
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the limitations of claim 11. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of dependent claim 11.
DECISION
We affirm the decision of the Examiner rejecting claims 1—15.
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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