Proxicom Wireless, LLC

Patent Trials and Appeals Board

Aug 17, 2021

2020005573 (P.T.A.B. Aug. 17, 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.
15/271,410 09/21/2016 James Arthur Proctor JR. 111054-0001U4C7 7653
86012 7590 08/17/2021
VLP Law Group LLP
555 Bryant Street
Suite 820
Palo Alto, CA 94301
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/17/2021 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):
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES ARTHUR PROCTOR JR. and
JAMES ARTHUR PROCTOR III
___________

Appeal 2020–005573
Application 15/271,410
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., ERIC S. FRAHM and
IRVIN E. BRANCH, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1, 2, 4, 8, 12, 13,
15, 17, 31, 35, 41, 42 and 44–60 under 35 U.S.C. § 134(a). See Appeal Brief

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed April 27, 2020), the
Reply Brief (filed July 23, 2020), the Final Action (mailed January 22, 2020)
and the Answer (mailed June 10, 2020), for the respective details.

2 Appellant refers to “applicant” as defined in 37 C.F.R. 1.42(a). (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
§§ 1.43, 1.45, or 1.46.”). Appellant identifies Proxicom Wireless, LLC as
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8. Claims 1 and 31 are independent. Claims 3, 5–7, 9–11, 14, 16, 18–30,
32–34 and 36–40 are canceled; claim 43 is withdrawn. See Claims
Appendix. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Introduction
According to Appellant, “The present invention is generally
concerned with facilitating the exchange of information and transactions
between two entities associated with two wireless devices when the devices
are in close proximity to each other utilizing both a short range and a long
range wireless capability.” Specification 4.

Independent Claims
1. A mobile wireless device comprising:
a first radio;
a second radio;
one or more processors;
one or more non-transitory memory devices coupled to the one or more
processors, the one or more non-transitory memory devices storing a set of
instructions that when executed by the one or more processors cause the one or
more processors to perform operations including:
receiving, using the first radio, identifier related information associated
with a proximity beacon service, from one or more servers;
receiving, using the second radio, a plurality of short range transmissions,
including a plurality of proximity beacon transmissions when the device is

the real party in interest. Appeal Brief 4.

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located within a detection range of one or more beacon transmitter devices
associated with the proximity beacon service, each of the proximity beacon
transmissions including a respective MAC address, a respective unique
identifier, and a proximity beacon service identifier (PBSI);
determining if a particular short range transmission of the plurality of
short range transmissions a) includes a MAC address, and b) includes the
proximity beacon service identifier (PBSI) and if c) the PBSI indicates the
particular short range transmission is a proximity beacon transmission associated
with the proximity beacon service;
then:
determining if an entity or object associated with the proximity
beacon service is in proximity to the mobile wireless device, by utilizing
the identifier related information and the unique identifier.

31. A method for facilitating use of proximity beacons, the method executing
within a mobile device, and the method comprising:
communicating between the mobile device and one or more servers and
receiving, at the mobile device, identifier related information, using a first radio;
receiving, at the mobile device using a second radio, a plurality of short
range transmissions, including a plurality of proximity beacon transmissions
from one or more beacon transmitter devices associated with the proximity
beacon service, each of the proximity beacon transmissions including a
respective MAC address, a respective unique identifier (UID), and a proximity
beacon service identifier (PBSI);
a) determining that a particular short range transmission of the plurality of
short range transmissions includes a MAC address,
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b) determining that the proximity beacon service identifier (PBSI) is
present, and
c) determining that the PBSI indicates the particular short range
transmission is a proximity beacon transmission associated with the proximity
beacon service; and
when the three determining steps a) b) and c) are each true, then d)
determining that an entity or object associated with the proximity beacon service
is within proximity to the mobile device, by utilizing the identifier related
information and the unique identifier.

Rejections on Appeal3
Claims 1, 2, 4, 8, 12, 13, 15, 17, 31, 35, 41, 42 and 44–60 stand
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Final Action 3–4.
Claims 13, 44–46, 50 and 57 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Action 4–5.
Claims 1, 2, 4, 8, 12, 13, 15, 17, 31, 35, 41, 42 and 44–60 stand
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicant regards as the invention. Final Action 6–7.
Claim 13 stands rejected under 35 U.S.C. § 112, second paragraph, as

3 The Examiner incorrectly list claim 5 as being rejected however claim 5, as
noted above, was canceled. We view this as harmless error. The Examiner
withdraws the 35 U.S.C. § 112, second paragraph of claim 17 for lack of
antecedent basis. See Answer 3.
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being incomplete for omitting essential steps, such omission amounting to a
gap between the steps. Final Action 7.

ANALYSIS4
Claims 1, 2, 4, 8, 12, 13, 15, 17, 31, 35, 41, 42 and 44–60 – written
description rejection
The Examiner determines that the Specification fails to provide
written support for the first and second radio limitations recited both in
independent claims 1 and 31. Specification 3–4. Appellant contends that
there is support for the radio limitations in paragraphs 39 and 43 of the US
Patent Publication 2017/0011425 A1 of the instant application which
coincides with pages 9 and 11 of the Specification. Appeal Brief 12–13.
We find Appellant’s argument persuasive of Examiner error because
the Specification discloses, referring to Figure 1, “The cellular network is
connected to devices 106 and 108 by wide area wireless links 104 and 103”
(Specification 9), and “a given device 106, 108 uses a short range wireless
link 107 such as a Bluetooth (IEEE802.15.l) or Wi-Fi (IEEE802.l l) link to
detect the presence of other devices such as device 108” (Specification 11).
Further, Appellant readily admits that “Most mobile phones on the market
today support at least two wireless standards; one for the cellular wireless
wide area network connection (WWAN) and one for a wireless personal or
local area network (WPAN, WLAN).” Specification 3. We agree with
Appellant that the Specification provides sufficient support for the disputed

4 Appellant and Examiner refer to the paragraphs of US Patent Publication
2017/0011425 A1 of the instant application. We make note of this and refer
to the corresponding pages of the Specification of the instant application for
clarity.
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claim limitations because we find the Specification discloses multiple
wireless standards employed in communicating via radio waves. See
Specification 11. We further find Appellant’s argument that the Examiner
fails to provide adequate reasoning for the rejection by explaining why the
Specification was not sufficient to support the disputed claim limitations
persuasive of Examiner error. See Appeal Brief 10; Final Action 3–4. We
find Appellant’s arguments persuasive of Examiner error in regard to claims
1 and 31 written description rejection. Accordingly, we reverse the
Examiner written description rejection of independent claims 1 and 31, as
well as, dependent claims 2, 4, 8, 12, 13, 15, 17, 35, 41, 42 and 44–60.
The Examiner further determines that the Specification does not
support non-transitory memory devices recited in independent claims 1 and
31. See Final Action 4; Answer 4–5. Appellant contends, “Claim 31 is a
method claim and does not actually recite any ‘memory device’. For this
reason alone, the rejection of at least claim 31 is prima facie deficient as a
matter of law.” Appeal Brief 14. Appellant’s argument is persuasive of
Examiner error in regard to claim 31 written description rejection because
claim 31 does not recite non-transitory memory devices as claim 1 does.
Accordingly, we reverse the Examiner’s written description rejection of
claim 31, as well as, dependent claims 35, 41, 42, 44–57 and 60.
In regard to claim 1, the Specification discloses, “Memory provides
volatile storage for computer software instructions and data used to
implement an embodiment of the present invention (e.g., applications
programs and the like). Disk storage can provide non-volatile storage for
computer software instructions and data used to implement an embodiment
of the present invention.” Specification 10 (emphasis added). Appellant
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argues that “The words ‘non-transitory’ and ‘non-volatile’ mean the same
thing in English, and to one of skill in the art.” Specification 15; see
Declaration ¶ 97 (“Such a person would have, therefore, understood the use
of the word ‘non-transitory’ in claim 1 to mean the same thing as ‘non-
volatile’ as stated in the specification.”).
Here, Appellant’s arguments are not persuasive of Examiner error in
regard to the written description rejection of claim 1. The Declaration states
that an artisan at the time the invention was made “would have understood
paragraph [0042] to mean that computer programs may be stored on a
variety of non-volatile, non-transitory computer readable media, and that
these would have included DVD ROMs, CD-ROMs, diskettes, tapes, and
other non-volatile media.” Declaration ¶ 99. We do not agree with
Appellant’s position that the terms non-volatile and non-transitory mean the
same because not all non-volatile storage is non-transitory. For example,
rewritable CDs and DVDs, as well as, rewritable hard drives are not
considered to be volatile, however because data stored on them can be
rewritten, that means they are transitory. Accordingly, we sustain the
Examiner’s written description rejection of claim 1, as well as, claims 2, 4,
8, 12, 13, 15, 17, 58 and 59.

Claims 13, 44–46, 50 and 57 – written description rejection
In regard to claim 13, the Examiner determines, “The Specification
does not support performing down loading application software in response
to sending the unique identifier to the server. (See PgPub US 2017/0011425
at para. 99).” Final Action 4; see Specification 32–33.
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However, the Specification discloses:
For instance, an account associated with one or more identifiers
may belong to a museum. As a museum patron walks to an
exhibit, the patron’s device 202 will receive an identifier sent
from museum broadcast device 204 operated by the museum.
The patron device 202 passes the identifier or museum device
204 to the central server 100, which in-turn recognizes it as being
associated with that exhibit within that museum and passes
relevant information back to the user’s device 202. A
distinguishing feature of this approach relative to prior art is that
the patron device 202 in this example may move out of proximity
of broadcast device 204, yet continue to view the content being
provided by the server 100 related to the detected broadcast
device 204. Content may include text, pictures, web pages,
application software such as games, informative display
applications, or other content such as audio or video to be offered
to the user’s device as well.
Specification 12 (emphasis added).
Appellant argues, the Examiner only initially refers paragraph 99
(Specification 32–33) “without any reference to any other part of the
specification, or providing any reason.” Appeal Brief 16; see Final Action 4.
Appellant contends, “paragraph [0046] specifically provides an example
where an application is ‘downloaded’ after the ‘unique identifier’ is sent to
the server.” Appeal Brief 16 (citing Specification 12). We find Appellant’s
argument is persuasive of Examiner error because the Specification provides
support for downloading application software as recited in claim 13.
Accordingly, we reverse the Examiner’s written description rejection of
claim 13.
In regard to claims 45 and 50 which depend upon independent claims
1 and 31 respectively, the Examiner determines that the Specification does
not provide support for the limitation “sending the unique identifier, using
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the first radio, to at least one server of the one or more servers, and receiving
further information relating to an object or entity associated with being
within proximity to the mobile device” in context with the independent
claims. Final Action 4–5 (citing paragraph 111, Specification 33).
Appellant contends that support for the claims is found in Figures 1 and 4–7,
as well as, paragraph 61 (Specification 18). See Appeal Brief 16–21; Reply
Brief 7–11. The Examiner does not explain in the Final Action why the
Figures and the Specification are deficient. See Final Action 4–5. The
Examiner provides an explanation of why the Specification and Figure 7 are
considered to be deficient in the Answer, however we find Appellant’s
contention is persuasive of Examiner error because the Specification, as well
as the Figures, provide support for the disputed claim limitations. See
Answer 6–8. Accordingly, we reverse the Examiner’s written description
rejection of claims 45 and 50.
In regard to dependent claims 44 and 46, the Examiner determines,
“The Specification does not support both receiving identifier related
information from the server as recited in claims 1 and 31, and preventing the
sending of the unique identifier to the servers as recited in claims 44 and 46.
(See PgPub US 2017/0011425 at para. 111).” Final Action 5 (citing
Specification 33). Appellant contends the Specification provides support for
the claims in paragraphs 47 and 48. See Appeal Brief 22–23. Appellant’s
argument is persuasive of Examiner error because the Specification
discloses, “The idealized effect of the action function would be to reduce the
number of requests to the server by not re-requesting recently requested
identifiers which have already been passed to the server, for some period of
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time.” Specification 33. Accordingly, we reverse the Examiner’s written
description rejection of claims 44 and 46.
In regard to claim 57, the Examiner determines, “The Specification
does not support the steps of ‘retrieving a stored user email’ and ‘sending an
Email ... based upon the stored proximity user behavior’. (See PgPub US
2017/001425 at para. 67).” Final Action 5 (citing Specification 23).
Appellant contends that support for the claim is provided by the
Specification. Appeal Brief 23–24. The Specification discloses:
Finally, the transaction details may be stored by the server,
or sent to a thirdly party server for tracking spending habits of
that account holder, or customers of that merchant allowing the
merchant to track that specific customer’s behavior and cater to
them in the future with various specials delivered via email, or
during their next visit via their device in the form of an electronic
coupon. This process can be performed with a goal to help the
merchant expose the customer to other products or services the
merchant believes the customer might find desirable.
Specification 23 (emphasis added).
Appellant contends, “One of skill in the art inherently understands,
without further explanation, that in order for the server to send an email to
that user account, it must have previously stored the associated email
address. Otherwise, the server would not know where to send the customized
content.” Appeal Brief 24. The Examiner does not provide an explanation
for why claim 57 is not supported by the Specification in the Final Action.
See Final Action 5. Further, we do not agree with the Examiner’s response
or position in the Answer that paragraph 67 is deficient. See Answer 8.
Appellant’s contention is persuasive of Examiner error and, accordingly, we
reverse the Examiner’s written description rejection of claim 57.
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Claims 1, 2, 4, 8, 12, 13, 15, 17, 31, 35, 41, 42 and 44–60 –
indefiniteness rejection
The Examiner determines that:
The terms “respective MAC Address”, “respective unique
identifier” and “determining . . . is in proximity” in claims 1 and 31
are relative terms which render the claim indefinite. The terms
“respective” and “proximity” are not defined by the claim, the
specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention.
Final Action 6.
Appellant contends, “While a conclusion is reached that the words
‘respective’ and ‘proximity’ are ‘relative terms’, no analysis of the claim
language, nor any attempt to interpret these terms in light of the specification has
been made. Nor is any reasons why they are supposedly ‘relative’ is given.”
Appeal Brief 27. Appellant’s contention is persuasive of Examiner error. We
are not persuaded that the claims are indefinite merely because terms are broad
or that the terms might be relative terms because the scope of the claimed subject
matter is clearly defined. See M.P.E.P. §§ 2173.04, 2173.05(b).5 Accordingly,

5 A broad claim is not indefinite merely because it encompasses a wide
scope of subject matter provided the scope is clearly defined. M.P.E.P. §
2173.04.

The use of relative terminology in claim language, including terms of
degree, does not automatically render the claim indefinite under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Seattle Box Co., Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir.
1984). Acceptability of the claim language depends on whether one of
ordinary skill in the art would understand what is claimed, in light of the
specification. M.P.E.P. § 2173.05(b).
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we reverse the Examiner’s indefiniteness rejection of claims 1, 2, 4, 8, 12, 13,
15, 17, 31, 35, 41, 42 and 44–60.
In regard to claim 1, the Examiner determines that, “A single claim which
purports to be both a product or machine and a process is ambiguous and is
properly rejected under 35 USC 112, second paragraph, for failing to particularly
point out and distinctly claim the invention.” Final Action 7. The Examiner
determines that “claim 1 is directed to a ‘mobile wireless device’ and further
recites ‘receiving . . .when the device is located within a detection range…”,
rendering the claim ambiguous. Final Action 8.
Appellant argues that the Examiner’s determination is in error because the
claim is in a permissible format. See Appeal Brief 34–36. Appellant’s argument
is persuasive of Examiner error because the claim “merely use[s] permissible
function language to describe the capabilit[y] of the claimed [device]” and is
therefore distinguish from a claim that claims “both an apparatus and a method
of using the apparatus within a single claim [that makes] it ‘unclear whether
infringement ... occurs when one creates a[n infringing] system, or whether
infringement occurs when the user actually uses [the system in an infringing
manner].” Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1316
(Fed. Cir. 2017); see M.P.E.P. § 2173.05(p) II; see also Appeal Brief 34. We
reverse the Examiner’s indefinite rejection of claim 1.
In regard to claim 13, the Examiner determines, “Claim 13 recites that
‘downloading’ is performed ‘in reaction to sending of the unique identifier,’
but claim 1 does not include a step of sending the unique identifier to the
server” and therefore claim 13 is incomplete for omitting essential steps.
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Final Action 7; see M.P.E.P. § 2172.01.6 Appellant contends, “the claimed
steps involve first sending the unique identifier from the mobile wireless device
to the server. Then, and only then, in response to having performed that sending
step, is the step of ‘downloading the application software’ performed.” Appeal
Brief 33. Appellant argues that, “The claim is simply specifying an order in
which the operations are performed for the claimed embodiment. There is
nothing ambiguous or indefinite at all.” Appeal Brief 33. Appellant argument is
persuasive of Examiner error. Accordingly, we reverse the Examiner’s
indefiniteness rejection of claim 13.

CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 8, 12,
13, 15, 17, 31,
35, 41, 42,
44–60
112 Written description 1, 2, 4, 8, 12,
13, 15, 17,
58, 59
1, 2, 4, 8,
12, 13, 15,
17, 31, 35,
41, 42, 44–
60
13, 44–46, 50,
57
112 Written description 13, 44–46,
50, 57
1, 2, 4, 8, 12,
13, 15, 17, 31,
35, 41, 42,
44–60
112 indefiniteness 1, 2, 4, 8,
12, 13, 15,
17, 31, 35,

6 Depending on the specific facts at issue, a claim which omits matter
disclosed to be essential to the invention as described in the specification or
in other statements of record may be rejected . . . under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite (see,
e.g., In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976)). M.P.E.P. §
2172.01.

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41, 42, 44–
60
13 112 indefiniteness 13
Overall
Outcome
1, 2, 4, 8, 12,
13, 15, 17,
58, 59
31, 35, 41,
42, 44–57,
60

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED-IN-PART