Ex Parte Trethewey et al

Patent Trial and Appeal Board

Aug 24, 2017

13893860 (P.T.A.B. Aug. 24, 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.
13/893,860 05/14/2013 James R. Trethewey P17784C/45631-266983 8846
73486 7590 08/28/2017
Barnes & Thornburg LLP (Intel)
11 S. Meridian Steet
Indianapolis, IN 46204
EXAMINER
TRUVAN, LEYNNA THANH
ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
Inteldocs_docketing @ cpaglobal.com
IN docket @ btlaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. TRETHEWEY, DHANANJAY V. KESKAR,
MATTHEW E. HOEKSTRA, UMA M. GADAMSETTY,
and MANOJ B. AGNIHOTRI
Appeal 2017-001971
Application 13/893,8601
Technology Center 2400
Before LARRY J. HUME, KIMBERLY McGRAW, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3—6, 13—17, and 23—31. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Intel Corporation.
App. Br. 3.
Appeal 2017-001971
Application 13/893,860
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “managing the privacy and
disclosure of location information related to computing systems.” Spec. 12.
Claims 1, 4, and 31 are reproduced below.
1. A method comprising:
receiving, at a computer system, a request from a requestor
for a location property associated with a location of the computer
system;
automatically determining, in response to receiving the
request, whether a user of the computer system has already
specified a location privacy preference for the requestor;
in response to determining that the user of the computer
system has not already specified the location privacy preference
for the requestor, automatically prompting the user to provide
input indicating whether the location property should be shared
with the requestor; and
sharing the location property with the requestor only if the
user of the computer system has specified the location privacy
preference for the requestor to prescribe that the location
property should be shared with the requestor; and
wherein the operation of automatically prompting the user
to provide input indicating whether the location property should
be shared with the requestor comprises:
automatically presenting a user interface that identifies the
requestor from whom the request for the location property was
received; and
enabling the user to provide input indicating whether the
location property should be shared with the requestor identified
by the user interface.
4. The method of claim 1 further comprising:
determining whether the computer system is enabled for
location-aware computing; and
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wherein the operations of (a) automatically prompting the
user to provide input indicating whether the location property
should be shared with the requestor and (b) sharing the location
property with the requestor are performed only if the computer
system is enabled for location-aware computing.
31. The method of claim 4, wherein the operation of
determining whether the computer system is enabled for
location-aware computing comprises:
using a location privacy setting stored in a location in a
basic input/output system (BIOS) memory of the computer
system to determine whether the computer system is enabled for
location-aware computing.
REJECTION ON APPEAL
The Examiner rejected claims 1, 3—6, 13—17, and 23—31 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Evans et
al. (US 6,327,535 Bl; issued Dec. 4, 2001) (hereinafter “Evans”) and
Zellner et al. (US 6,675,017 Bl; issued Jan. 6, 2004) (hereinafter “Zellner”).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner erred. We disagree with Appellants’
arguments, except as they relate to claims 25, 30, and 31. We incorporate
herein and adopt as our own the findings, conclusions, and reasons set forth
by the Examiner, except as to claims 25, 30, and 31, in (1) the August 18,
2015 Final Office Action (“Final Act.” 2—23) and (2) the September 22,
2016 Examiner’s Answer (“Ans.” 2—50). We highlight and address,
however, specific findings and arguments below for emphasis.
(1) Determining whether privacy preference already specified
Appellants argue the combination of Evans and Zellner fails to teach
or suggest “automatically determining, in response to receiving the request,
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whether a user of the computer system has already specified a location
privacy preference for the requestor,” as recited in claim 1 and recited in
commensurate scope in claims 13 and 23. App. Br. 7—11; Reply Br. 6—10.
More specifically, Appellants argue Evans instead teaches “that a privacy
level has already been assigned to each requestor, before the device handles
a request from that requestor.” App. Br. 11; see also id. 8—11 (citing Evans
3:8-12; 6:57-7:43; 17:3-16; 24:3-25:7; 25:18-21; 25:26-A5; 26:15-20).
Thus, there is no need or teaching of “the operation of determining whether
a user has already specified a location privacy preference for a requestor.”
App. Br. 8; see also id. at 12 (citing Evans 7:2—8).
The Examiner finds the combination of Evans and Zellner teaches the
disputed limitation. Ans. 29—30. More specifically, the Examiner finds
Evans teaches or suggests a device that can (i) determine its location,
(ii) determine what level of location information (i.e., levels of privacy are
set based on user input “to include more or less specific information about
the location of a particular device”) to provide to a particular requesting
application or entity, and (iii) answer location queries from various
applications/entities by providing the appropriate location information based
on the user assigned privacy level. See Ans. 29-30 (citing Evans 5:5—15;
6:57—63; 7:1—13 (finding Evans teaches or suggests a user can assign a
privacy level to an entity so that when that entity sends a query for the
device’s location, the privacy manager “determines who the query is from
and the privacy level associated with the” entity)). The Examiner finds
Evans teaches or suggests “determin[ing] whether a user has already
specified a location privacy preference for a requestor.” Ans. 30.
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We agree with the Examiner’s findings and adopt them as our
own. For example, Evans teaches or suggests, inter alia,
“determin[ing] who the query is from and the privacy level associated
with the application or entity,” set by the user. See, e.g., Evans
7:1—13. Based on the determined privacy level, appropriate location
information is shared with the requesting entity. Id. Accordingly, we
find Evans, teaches, or at least suggests, to one of ordinary skill in the
art determining whether a user has already specified a location privacy
preference for a requestor — if the privacy level is found for the
requestor, it was already specified by the user; otherwise, it was not
already specified. See Evans 5:5—15; 6:57—63; 7:1—13; see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into
account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected
to draw therefrom.”).
(2) Automatically prompting
Appellants argue the combination of Evans and Zellner fails to teach
or suggest “in response to determining that the user of the computer system
has not already specified the location privacy preference for the requestor,
automatically prompting the user to provide input indicating whether the
location property should be shared with the requestor,” as recited in
claims 1, 13, and 23. App. Br. 7—12; Reply Br. 6—10. Appellants argue
Evans instead teaches assigning a privacy level to an entity that might
request location information before a request is received from the entity.
App. Br. 12 (citing Evans 7:2—3, 5—8). As to Zellner, Appellants argue it
instead teaches (i) responding to prompts before each transmission and
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(ii) establishing a user profile that can include conditions (e.g., who is the
recipient) for blocking location information. App. Br. 18 (citing Zellner
4:1-2; 7:49-8:1).
The Examiner finds the combination of Evans and Zellner teaches or
suggests the disputed limitation. Ans. 21—25; Final Act. 5—9. As above, the
Examiner finds Evans teaches or suggests a device that can determine what
level of location information to provide to a particular requestor based on a
user inputted privacy level, as well as whether a level has been assigned yet.
See Ans. 21—23 (citing Evans 5:5—15; 6:57—63; 7:1—13; 24:50-60
(“Individual applications that call the location service module can have
privacy levels associated with them. These privacy levels can be assigned by
individual users.”)). The Examiner also finds the above teachings from
Evans at least suggest “the ability [to] automatically prompt[] the user to
provide input indicating whether the location property should be shared with
the requestor in response to a location privacy preference determination.”
Ans. 22; see also id. at 23—24.
As to Zellner, the Examiner finds it teaches or suggests:
a user can block location information for individual
transmissions, for specified types of transmissions, or for ah
transmissions where these various location blocking options
could be set up as an initial profile that could be modified directly
by the user through the user interface, or could be modified by
the network at the request of the user. The user could select the
options by establishing default preferences, by entering
commands before each transmission, or responding to prompts
before each transmission.
Ans. 24 (emphasis added); see also Ans. 25 (citing Zellner 3:60-4:15). The
Examiner finds that this teaching from Zellner (e.g., “the interface where the
user can specify the location information” and responding to prompts) at
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least suggests that the user can be prompted “for input to share the location
or not to share the location.” Ans. 25. The Examiner concludes a person of
ordinary skill would have found the disputed limitation obvious in light of
Evans and Zellner’s combined teachings, including to allow users to have
options of inputting the privacy preferences of whether to share location
information, which “would be beneficial for particular types of people with
different security measures.” Id.
We agree with the Examiner’s findings and adopt them as our own.
Evans teaches, inter alia, having a user provide input indicating whether the
location information should be shared with the requestor. See Evans 6:57—
63; 7:1—13; 24:50-60. Similarly, Zellner teaches or suggests that a user can
be prompted to respond with whether location information should be shared
with a recipient. See Zellner 3:59-4:16; 7:50-60. We find the disputed
limitation would have been obvious to one of ordinary skill in the art in light
of Evans and Zellner’s combined teachings. There are only a finite number
of reasonable options (i) where a user has not set a privacy level yet for a
particular requestor (i.e., in some fashion ignore the request or prompt the
user for the information) and (ii) when privacy levels are set (i.e., before the
request or after the request), and picking one of a finite number of known
solutions (i.e., prompting the user for the level after receiving a request) to a
known problem would have been obvious here. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of
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ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that is was obvious under
§ 103.”); see also Preda, 401 F.2d at 826 (“[I]t is proper to take into account
not only specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom.”).
Furthermore, we are unpersuaded by Appellants’ argument (Reply
Br. 4—8) the Examiner “implicitly relies on common sense” in making the
findings — the Examiner instead finds one of ordinary skill in the art would
have found the disputed limitation obvious for the reasons discussed above.
We also are unpersuaded by Appellants’ argument (App. Br. 13) that the
combination, and Evans in particular, fails to teach a user interface that
identifies the requestor — as discussed above, the combined teachings of
Evans and Zellner teach or suggest automatically prompting the user for
sharing input when the user has not already provided such information for
the particular requestor, which at least suggests the requestor is identified to
the user to allow for meaningful user input. See Zellner 3:60-4:15; 7:49—60;
see also Evans 5:29-50. We also are unpersuaded by Appellants’ argument
(App. Br. 19) that the combination fails to teach the disputed limitation
because “Zellner primarily involves location privacy for transmissions that
are initiated by the user” — Appellants incorrectly focus on Zellner’s
teachings without persuasively addressing the combined teachings of Evans
and Zellner. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references”).
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(3) Location privacy setting stored in BIOS
Appellants argue the combination of Evans and Zellner fails to teach
or suggest “using a location privacy setting stored in a location in a basic
input/output system (BIOS) memory of the computer system to determine
whether the computer system is enabled for location-aware computing,” as
recited in claim 31, and similarly recited in claims 25 and 30. App. Br. 20;
Reply Br. 13—14. Appellants argue Evans simply teaches computers used in
accordance with Evan’s teachings can contain “[a] basic input/output system
(BIOS) 142, containing the basic routines that help to transfer information
between elements within” the computer, including during start-up. App.
Br. 20 (citing Evans 8:4—16) (emphasis added). According to Appellants,
“Evans does not actually disclose or suggest any connection between the
BIOS memory and any location privacy settings.” Reply Br. 13.
We are persuaded by Appellants’ arguments. The Examiner’s finding
(Ans. 49-50) that Evans teaches or suggests the disputed limitation because
“the location privacy setting can be stored in a computer that has a computer
memory which includes the ROM (BIOS) which is part of the computer,” is
unsupported by the record evidence. The Examiner has not identified where
Evans teaches or suggests that the location privacy setting is stored in the
BIOS memory of the computer system or that any such stored location
privacy setting is used to determine whether the computer system is enabled
for location-aware computing. Nor has the Examiner shown that such
features are necessarily present in Evans. See In re Oelrich, 666 F.2d 578,
581 (CCPA 1981) (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”).
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(4) Conditional limitation
We note, to facilitate potential future prosecution, at least one of the
above disputed limitations occurs within a conditional step (i.e., “in response
to determining that the user of the computer system has not already specified
the location privacy preference for the requestor”) for independent claim 1.
App. Br. 23. During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable
interpretation of claim 1 encompasses instances in which the prerequisite
condition for the disputed limitation is not met (i.e., “determining that the
user of the computer system has . . . already specified the location privacy
preference for the requestor”). Conditional steps employed in a method
claim need not be found in the prior art if, under the broadest reasonable
interpretation, the method need not invoke those steps. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28,
2016) (precedential) (holding “[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim”); see also Ex parte Katz, No. 2010-006083, 2011 WL 514314,
at *4—5 (BPAI Jan. 27, 2011) (distinguishing conditional limitations in non­
method claims).
CONCLUSION
Based on our findings and conclusions above, we sustain the
Examiner’s rejection of claims 1, 13, and 23, as well as claims 3—6, 14—17,
and 24—29, as Appellants do not provide separate arguments for their
patentability. We do not sustain the Examiner’s rejection of claims 25, 30,
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and 31 for the above stated reasons.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3—6, 13—17, 23,
24, and 26-29.
We reverse the Examiner’s decision rejecting claims 25, 30, and 31.
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-IN-PART
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