LOON LLC

Patent Trials and Appeals BoardMar 24, 2021

2019006844 (P.T.A.B. Mar. 24, 2021)

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. 15/350,209 11/14/2016 Eric Teller LOON 3.0-2074 CON 3663 159782 7590 03/24/2021 LOON LLC Botos Churchill IP Law LLP 430 Mountain Ave Suite 401 New Providence, NJ 07974 EXAMINER LAFONTANT, GARY ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): loon@bciplaw.com pto@bciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERIC TELLER ____________________ Appeal 2019-006844 Application 15/350,209 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and PHILLIP A. BENNETT, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–9, 11–17, 19, and 20. Claims 2, 10, and 18 have been cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest is LOON LLC. Appeal Br. 2. Appeal 2019-006844 Application 15/350,209 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. A computer-implemented method comprising: [A.] determining that a first balloon is at a location associated with a legally-defined geographic area, [i.] wherein a balloon network provides service in a plurality of legally-defined geographic areas, [ii.] wherein the first balloon accesses an area profile that identifies geographically-restricted data that must not be removed from the legally-defined geographic area, and [iii.] wherein the area profile further requires that the geographically-restricted data be saved in at least one location in the legally-defined geographic area; [B.] determining that the first balloon contains at least some of the geographically-restricted data; [C.] determining that the first balloon is likely to move out of the legally-defined geographic area; and; [D.] responsive to the determination that the first balloon is likely to move out of the legally-defined geographic area, both (i) transferring the geographically-restricted data from the first balloon to a device that is located in the legally- defined geographic area, and (ii) removing the geographically-restricted data from the memory of the first balloon, prior to the first balloon leaving the legally-defined geographic area. Appeal 2019-006844 Application 15/350,209 3 REFERENCES2 The Examiner relies on the following references: Name Reference Date McKenna US 2007/0021117 A1 Jan. 25, 2007 Knoblach US 2008/0299990 A1 Dec. 4, 2008 Buer US 2009/0085761 A1 Apr. 2, 2009 Malnati US 2011/0134781 A1 June 9, 2011 Bharali US 8,566,900 B1 Oct. 22, 2013 REJECTIONS A. The Examiner rejects claims 1, 3–5, 7–9, 11–13, 15–17, 19, and 20, under 35 U.S.C. § 103 as being unpatentable over the combination of Knoblach, Bharali, Buer, and Malnati. Final Act. 7–19. Appellant argues separate patentability for claim 1. Appeal Br. 5–10. We select claim 1 as the representative claim for this rejection. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 3–5, 7–9, 11–13, 15–17, 19, and 20 further herein. B. The Examiner rejects claims 6 and 14 under 35 U.S.C. § 103 as being unpatentable over the combination of Knoblach, Bharali, Buer, Malnati, and McKenna. Final Act. 19–20. To the extent that Appellant discusses claims 6 and 14, Appellant merely references the arguments directed to claim 1. Appeal Br. 10. Such a 2 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. Appeal 2019-006844 Application 15/350,209 4 referenced argument (or repeated argument) is not an argument for “separate patentability.” Thus, the rejection of these claims turn on our decision as to claim 1 (from which claim 6 depends). Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 6 and 14 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A.1. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. The Examiner alleges that Knoblach and Bharali are properly combined/[“]analogous arts[”] because they both [“]pertain to telecommunication technology that provides communication services dependent on geographical boundary area.” . . . . Appellant respectfully submits that the FOA has not demonstrated sound reasoning as to why one would combine these references to achieve the claimed features. To be sure, Bharali teaches “firewalls and other security devices that can enforce policies against network transmissions based on a set of rules. In some cases, the rules may be based on a source or destination IP address . . . [, such as] denying access to a particular destination IP address.” (Bharali, col.l ll.5-10.) In one example, “geographical information associated with an IP address is determined . . . .” In this regard, while the Bharali source or destination IP address can be assigned a fixed geographical location, none of the receiving or transmitting devices are moving toward a boundary or moving within a geographical area. Thus, Appellant respectfully submits that there is no reason why one skilled in the art would look to combine Bharali (a fixed IP address assigned a fixed Appeal 2019-006844 Application 15/350,209 5 geographical location) - with Knoblach (current GPS location of moving balloon is identified to assess proximity to geographical boundary). Appeal Br. 6–7. Appellant argues that one would not look to combine Bharali with Knoblach, i.e., the references are not analogous art. However, prior art is analogous if either (1) “the art is from the same field of endeavor, regardless of the problem addressed” or (2) regardless of field of endeavor, the reference is “reasonably pertinent to the particular problem with which the inventor is involved.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quotation omitted). “A reference is reasonably pertinent if it . . . is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. (quotation omitted). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. (quotation omitted). However, “[t]he pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.” Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). In Innovention, the patentee argued the references “describ[ed] computer-based, chess-like strategy games” and were “non-analogous art because the [asserted] patent’s inventors were concerned with making a non-virtual, three-dimensional, laser-based board game, a project that involves mechanical engineering and optics, not computer programming.” Appeal 2019-006844 Application 15/350,209 6 637 F.3d at 1316, 1321. The Federal Circuit found “an electronic, laser- based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably pertinent to the problem facing an inventor of a new, physical, laser-based strategy game” because both “relate to the same goal: designing a winnable yet entertaining strategy game.” Id. at 1322. Given the record before us, we are not persuaded by Appellant’s argument. First, Appellant too narrowly interprets the field of endeavor of the prior art, limiting the field of endeavor to “the receiving or transmitting devices are moving toward a boundary or moving within a geographical area.” Appeal Br. 7 (emphasis added). Yet Knoblach repeatedly points out that as an initial matter his invention determines its location in order to be in compliance with legal requirements when performing its operation. E.g., Knoblach Abst. Bharali also describes his field more broadly as: “Using Geographical Information In Policy Enforcement.” Bharali, Title. Further, Appellant’s Abstract shows the invention to be in the field of “determining that a balloon is at a location associated with a legally-defined geographic area.” Abst. (emphasis added). We conclude that the field of endeavor is the broader policy compliance based on location. Second, we also determine that Bharali is “reasonably pertinent to the particular problem with which the inventor is involved” because Bharali’s policy enforcement mechanism would logically have commended itself to an inventor’s attention in considering the inventor’s location based policy compliance problem. Appeal 2019-006844 Application 15/350,209 7 A.2. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. First, the FOA improperly disregards the sequence of events recited in claim 1: “removing data . . . prior to the first balloon leaving the legally-defined geographic area.” The Office instead generally argues that this feature is met since Buer teaches that “the geographic usage policy may erase specific data from a terminal if a violation of the geographic usage policy is detected.” (OA 12.) However, Buer only teaches that a “geographic usage policy 224 may define a list of data which must be erased from the terminal if a violation of the geographic usage policy is detected.” (Buer, ¶[0027]). Appeal Br. 7. Second, the FOA has also failed to show how Buer ties into the claim 1 feature of “responsive to the determination that the first balloon is likely to move out of the legally defined geographic area . . .” Relying on FIGS. 1 and 4, the FOA alleges that Buer teaches “removing . . . data . . . if a communication terminal exits the legally-defined geographic area.” (FOA 18 (emphasis added).) However, the “communication terminal” of Buer does not move or change location toward or away from a legally-defined geographic area. Appeal Br. 8. We are unpersuaded by Appellant’s argument. Appellant does not address the actual reasoning of the Examiner’s rejection. Instead, Appellant attacks the Buer reference singly for lacking a teaching that the Examiner relied on a combination of Knoblach and Buer to show. In particular, the rejection does not rely on Buer for teaching the “responsive to the determination that the first balloon is likely to move out of the legally- defined geographic area” aspect disputed by Appellant. Rather, the Appeal 2019-006844 Application 15/350,209 8 Examiner relied on Knoblach to show “responsive to the determination that the first balloon is likely to move out of the legally-defined geographic area” perform a function prior to moving out of the area (“terminating balloon flight”) (Final Act. 8), and relied on Buer to show it was known to perform the function of data erasing based related to exiting an area (Final Act. 12). The Examiner then reasoned that it would have been obvious to modify the pre-exiting function of Knoblach to include functionality from Buer. Final Act. 11. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining the relevant inquiry is 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). A.3. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Once again, the FOA improperly disregards the sequence of events recited in claim 1: “responsive to the determination that the first balloon is likely to move out of the legally defined geographic area . . .(i) transferring the geographically-restricted data . . . .” The FOA instead relies upon Malnati for the general teaching of “a computer device ability to check other mobile devices location . . . and store data and can transfer data to the other device related to position data.” (FOA 13-14; see also OA 18.) Indeed, the FOA makes no mention of a Malnati data transfer in “response to the determination that the first balloon is likely to move out of the legally defined geographic area . . . .” Moreover, nothing in Malnati suggests a transfer of data in response to movement of a balloon, let alone any device, within a “legally-defined geographic area.” As with each of the Appeal 2019-006844 Application 15/350,209 9 aforementioned references, there is no transferring of data to a device located in the legally-defined geographic area responsive to a determination that the first balloon is likely to move out of the legally defined geographic area as claimed in claim 1. Appeal Br. 8–9. Again, Appellant does not address the actual reasoning of the Examiner’s rejection. As we noted above, the Examiner relied on Knoblach to show “responsive to the determination that the first balloon is likely to move out of the legally-defined geographic area” perform a function prior to moving out of the area (“terminating balloon flight”) (Final Act. 8). The Examiner relied on Malnati to show it was known to perform “transmitting packets data between computer devices related to positional data.” Final Act. 13. Also again, one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425 (explaining the relevant inquiry is 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). A.4. Furthermore, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Even assuming for the sake of argument that the combination of a few of the cited references is proper (which Applicant does not contend to be the case), Knoblach, Bharali, Buer and Malnati are not analogous art as suggested in the FOA. . . . It is therefore improper to combine these four references together to achieve all of the features of independent claim 1. Appeal 2019-006844 Application 15/350,209 10 Appeal Br. 9 (emphasis added). We are unpersuaded by Appellant’s argument. As discussed above, we determine that Knoblach and Bharali are both in the field of endeavor of location based policy compliance. We also determine that Buer is “reasonably pertinent to the particular problem with which the inventor is involved” because Buer’s policy enforcement mechanism (“The geographic usage policy 224 may define a list of data which must be erased from the terminal if a violation of the geographic usage policy is detected.” Buer paragraph 27) would logically have commended itself to an inventor’s attention in considering the inventor’s location based policy compliance problem. We further determine that Malnati is “reasonably pertinent to the particular problem with which the inventor is involved” because Malnati’s location tracking mechanism (“[E]ach mobile device 10-80 will know the position of other mobile devices 10-80.” Malnati paragraph 63) would logically have commended itself to an inventor’s attention in considering the inventor’s location based policy compliance problem. CONCLUSION The Examiner has not erred in rejecting claims 1, 3–9, 11–17, 19, and 20 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejections of claims 1, 3–9, 11–17, 19, and 20 as being unpatentable under 35 U.S.C. § 103 are affirmed. Appeal 2019-006844 Application 15/350,209 11 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7–9, 11–13, 15– 17, 19, 20 103 Knoblach, Bharali, Buer, Malnati 1, 3–5, 7–9, 11–13, 15– 17, 19, 20 6, 14 103 Knoblach, Bharali, Buer, Malnati, McKenna 6, 14 Overall Outcome 1, 3–9, 11– 17, 19, 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED