SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Mar 15, 2022

2021000685 (P.T.A.B. Mar. 15, 2022)

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. 16/199,500 11/26/2018 Jae-woo KO Q243152 8411 23373 7590 03/15/2022 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER SHAHEED, KHALID W ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAE-WOO KO and TAE-HWAN WI Appeal 2021-000685 Application 16/199,500 Technology Center 2600 Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and MINN CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-15. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to Appellant’s Appeal Brief filed May 29, 2020 (“Appeal Br.”) and Reply Brief filed November 3, 2020 (“Reply Br.”); and the Examiner’s Final Office Action mailed December 31, 2019 (“Final Act.”) and Answer mailed September 3, 2020 (“Ans.”). We also refer to the Specification filed November 26, 2018 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal Br. 3. Appeal 2021-000685 Application 16/199,500 2 We reverse and enter a new ground of rejection for claims 1-15. CLAIMED SUBJECT MATTER The subject matter of the present application pertains to “providing service that is related to objects nearby a device.” Spec. ¶ 2. An “object is goods or a device including a marker or a tag attached to the object for performing close-distance communication.” Id. ¶ 52. An object “may include a QR code, a barcode, a RFID tag, or a NFC tag.” Id. An object may also include “a passive smart poster (PSP) or an active smart poster (ASP).” Id. “However, the object is not limited thereto.” Id. Claims 1, 8, 9, and 15 are independent. Claims 1 and 9, reproduced below with the disputed limitations emphasized, are illustrative of the claimed subject matter. 1. A method by which an object provides information with respect to a service to a device, the method comprising: forming a communication network with the device, when the device is located within a predetermined range from the object, transmitting property information of the object to the device via the communication network, receiving, from the device, context information of the device related to the property information of the object, based on the context information of the device, determining an intention of a user of the device; transmitting, to the device, information with respect to the service corresponding to the intention of the user. Appeal Br. 17 (Claims App.) (emphases added). 9. A method by which a device receives information with respect to a service from an object, the method comprising: Appeal 2021-000685 Application 16/199,500 3 forming a communication network with the object, when the object is located within a predetermined range from the device; receiving property information of the object from the object via the communication network; transmitting, to the object, context information of the device related to the property information of the object; and receiving, from the object, information with respect to the service corresponding to the property information of the object and the context information of the device related to the property information of the object for satisfying an intention of a user of the device. Id. at 19-20 (emphases added). REJECTIONS The Examiner relies on the following references: Name3 Reference Date Nadler US 2009/0131080 A1 May 21, 2009 Miller US 2013/0013417 A1 Jan. 10, 2013 Sim US 2013/0013419 A1 Jan. 10, 2013 Claims 1-5, 8-12, and 154 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Miller. Final Act. 7-12. Claims 6 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Miller and Sim. Final Act. 13. 3 All citations herein to the prior art are by reference to the first named inventor only. 4 Claim 13 is inadvertently included in the statement of rejection over Miller. Final Act. 7. The body of the rejection, however, discusses claims 1-5, 8- 12, and 15. Id. at 7-12. Appeal 2021-000685 Application 16/199,500 4 Claims 7 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Miller and Nadler. Final Act. 13-15. OPINION Rejections of Claims 1-15 Under 35 U.S.C. §§ 102 or 103 In rejecting the pending claims, the Examiner finds that Miller discloses all limitations of independent claims 1, 8, 9, and 15. Final Act. 7- 12. In particular, the Examiner identifies “items 1 or 2 or item of interest 112” and the “mobile device” shown in Figure 1 of Miller as the recited “object” and “device,” respectively. Id. at 7 (citing Miller, Fig. 1). The Examiner also finds that Miller’s “target item,” which includes “one or more of: universal product code; QR Code; a barcode; a NFC TAG; a RFID; product model number; product name; or image of the target item,” discloses the “object” recited in the claims. Ans. 3 (citing Miller ¶ 8, Fig. 1, claim 12). The Examiner further finds that Miller discloses “based on the context information of the device, determining an intention of a user of the device” and “transmitting, to the device, information with respect to the service corresponding to the intention of the user,” as recited in claim 1 and similarly recited in independent claim 8. Id. at 7-8 (citing Miller ¶¶ 8, 30). Similarly, the Examiner finds that Miller discloses the “receiving, from the object, information with respect to the service . . . for satisfying an intention of a user of the device,” as recited in independent claim 9 and similarly recited in independent claim 15. Id. at 9-10 (citing Miller ¶¶ 8, 23, 30). Appellant argues that the Examiner’s rejection is in error because Miller does not disclose at least two features recited in the independent claims. First, Appellant asserts that “item of interest (112, 124, 126) in Miller does not perform any determination, much less determine ‘an Appeal 2021-000685 Application 16/199,500 5 intention of a user of the device.’” Appeal Br. 12. Similarly, Appellant argues that “there is no teaching that a tag (‘a near field communication (NFC) tag, a RFID, an audio message, a product's Universal Product Code, QR code or other barcode’)-the purported ‘object’ recited in claim 1- performs any determination whatsoever.” Id. Second, Appellant asserts that “item of interest (112, 124, 126) in Miller does not perform any transmission of ‘information with respect to the service corresponding to the intention of the user.’” Id. Appellant further argues that “[t]here is no teaching that a tag (‘a near field communication (NFC) tag, a RFID, an audio message, a product's Universal Product Code, QR code or other barcode’)-the purported ‘object’ recited in [the independent claims]” “transmits” the recited information to Miller’s mobile device, the claimed “device” in the Examiner’s rejection. Id. We agree with Appellant. As an initial matter, we agree with Appellant that independent claims 1 and 8 require the recited “object” to “determin[e] an intention of a user of the device.” We also agree with Appellant that independent claims 1 and 8 require the recited “object” to “transmit[], to the device, information with respect to the service corresponding to the intention of the user” and independent claims 9 and 15 similarly require the recited “device” to “receiv[e], from the object” “information with respect to the service . . . for satisfying an intention of a user of the device.” Beginning with the language of the claims, claim 8 plainly recites that the “object” or the “controller” of the “object” “determine[s] an intention of a user” based on the context information of the device. Appeal Br. 19 (emphasis added). Claim 1 similarly recites “[a] method by which an object provides information with respect to a service to a device,” where the Appeal 2021-000685 Application 16/199,500 6 method of the “object” includes the step of “determining an intention of a user of the device” based on the context information of the device. Id. at 17 (emphasis added). Likewise, claim 8 recites that the “object” or the “controller” of the “object” “transmit[s], to the device, information with respect to the service corresponding to the intention of the user.” Id. at 19 (emphasis added). Similarly, claim 1’s method of an “object” providing “information” includes the step of “transmitting, to the device, information with respect to the service corresponding to the intention of the user.” Id. at 17 (emphases added). Claims 9 and 15 recite similar subject matter except that the claims are directed to a “device” receiving information from the “object.” For example, Claim 9 recites “[a] method by which a device receives information with respect to a service from an object” including the step of “receiving, from the object, information with respect to the service . . . for satisfying an intention of a user of the device.” Id. at 19-20 (emphases added). Claim 15 similarly recites that a “device” or a controller of the “device” “receive[s], from the object” “information with respect to the service . . . for satisfying an intention of a user of the device.” Id. at 21 (emphases added). This plain meaning interpretation of the claims is also consistent with the description in the Specification. Appeal 2021-000685 Application 16/199,500 7 Figure 8 of Appellant’s Specification is reproduced below.5 Figure 8 is a flowchart showing a method by which the device acquires intention information related to services and provides services to the device. Spec. ¶ 35. 5 Appellant represents that the disputed limitations recite the subject matter described in Figure 8 of the Specification. See Appeal Br. 5-7. Appeal 2021-000685 Application 16/199,500 8 As illustrated in Figure 8, “[i]n an operation S850, the object 100 may determine an intention of a user based on properties of the object 100 and acquired context information.” Id. ¶ 146. The Specification further describes that “[i]n an operation S860, the object 100 provides intention information regarding an intention of a user and link information for receiving services to the device 200.” Id. ¶ 147. Based on the plain language of the claims and the disclosure in the Specification discussed above, we determine that independent claims 1 and 8 require the recited “object” to “determin[e] an intention of a user of the device” and “transmit[], to the device, information with respect to the service corresponding to the intention of the user.” We also determine that independent claims 9 and 15 similarly require the recited “device” to “receiv[e], from the object” “information with respect to the service . . . for satisfying an intention of a user of the device.” See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (A broadest reasonable interpretation must reasonably reflect the plain language of the claim, the specification, and teachings in the underlying patent.); In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (internal citations omitted) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is . . . an interpretation that corresponds with what and how the inventor describes [the] invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”). Under this claim interpretation, we agree with Appellant that the Examiner’s rejection is in error. As discussed above, the Examiner identifies “items 1 or 2 or item of interest 112” shown in Figure 1 of Miller as the “object” recited in the Appeal 2021-000685 Application 16/199,500 9 claims. Final Act. 7 (citing Miller, Fig. 1). The Examiner also finds that Miller’s “target item,” which includes “one or more of: universal product code; QR Code; a barcode; a NFC TAG; a RFID; product model number; product name; or image of the target item,” discloses the “object” recited in the claims. Ans. 3 (citing Miller ¶ 8, Fig. 1, claim 12). The Examiner cites paragraphs 8, 27, and 30 of Miller as disclosing “determining an intention of a user of the device” based on the context information of the device, as recited in claim 1 and similarly recited in independent claim 8. Final Act. 8 (citing Miller ¶¶ 8, 30); Ans. 7 (citing Miller ¶ 27). Paragraphs 27 and 30 of Miller, however, describe operation of Miller’s “facility,” not “items 1 or 2 or item of interest 112” or the “target item” of Miller. For example, paragraph 27 of Miller describes “FIG. 2 is a flow diagram illustrating the profiling routine invoked by the facility in some embodiments. The facility allows a user to find an item of interest in a database in an efficient manner by either scanning, entering or looking up the item using a variety of methods.” Miller ¶ 27 (emphases added). Paragraph 30 of Miller similarly describes “FIG. 5 is a flow diagram illustrating the targeting routine invoked by the facility in some embodiments. The facility, in various embodiments, can allow users to identify items on a user’s lists and then target the user with promotions or other communications or confidence information based on profile comparisons.” Id. ¶ 30 (emphases added). As described in Miller, the “facility” is a “system” of computers, network/internet connections, databases, cloud servers, websites, and mobile devices. See Miller ¶¶ 23, 26, Fig. 1. The Examiner does not identify, nor do we discern, anything in the cited paragraphs of Miller that describes “items 1 or 2 or item of interest 112,” the “target item,” or “one or more of: Appeal 2021-000685 Application 16/199,500 10 universal product code; QR Code; a barcode; a NFC TAG; a RFID; product model number; product name; or image of the target item” of Miller performing any decision making, let alone “determining an intention of a user of the device.” Paragraph 8 of Miller cited by the Examiner describes an exemplary computer implemented method for recommending a target item including the steps of locating the target item in an item database using the identification information, the item database containing metadata of the target item; comparing the metadata of the target item to metadata of a profile, the profile comprising meta data of a plurality of items located in the item database; calculating a confidence measurement, the confidence measurement quantizing an overlap between the metadata of the target item and the metadata of the profile; and contacting a user associated with the profile about the target item if the confidence measurement exceeds a pre- determined value. Miller ¶ 8. Again, the Examiner does not identify, nor do we discern, anything in paragraph 8 of Miller that describes “items 1 or 2 or item of interest 112,” the “target item,” or “one or more of: universal product code; QR Code; a barcode; a NFC TAG; a RFID; product model number; product name; or image of the target item” of Miller performing the recited step of “determining an intention of a user of the device.” Thus, the Examiner does not explain adequately how “items 1 or 2 or item of interest 112” or the “target item” of Miller, i.e., the claimed “object” according to the Examiner, “determin[es] an intention of a user of the device” based on the context information of the device, as recited in claims 1 and 8. Appeal 2021-000685 Application 16/199,500 11 As for the limitation “transmitting, to the device, information with respect to the service corresponding to the intention of the user” recited in claim 1 and similarly recited in claim 8, the Examiner finds that Miller discloses the limitation because paragraph 30 of Miller describes “presenting the user with a promotion for the item with an associated confidence measurement.” Final Act. 8; Ans. 7 (quoting Miller ¶ 30). As discussed above, however, paragraph 30 of Miller describes the operation of Miller’s “facility,” where “[a]n email could then be generated presenting the user with a promotion for the item with an associated confidence measurement” after calculating a confidence measurement. Miller ¶ 30 (emphases added). The Examiner does not identify, nor do we discern, anything in paragraph 30 of Miller that describes “items 1 or 2 or item of interest 112,” the “target item,” or “one or more of: universal product code; QR Code; a barcode; a NFC TAG; a RFID; product model number; product name; or image of the target item” of Miller, the claimed “object,” generating an email presenting the user with a promotion for the item with an associated confidence measurement. Thus, the Examiner does not explain adequately how the “object” of Miller “transmit[s], to the device, information with respect to the service corresponding to the intention of the user,” as recited in claims 1 and 8. As discussed above, we determine that independent claims 9 and 15 require the recited “device” to “receiv[e], from the object” “information with respect to the service . . . for satisfying an intention of a user of the device.” The Examiner identifies the “mobile device” shown in Figure 1 of Miller as the “device” recited in the claims. Final Act. 7 (citing Miller, Fig. 1). Appeal 2021-000685 Application 16/199,500 12 As discussed above, the Examiner cites paragraphs 8, 23, and 30 as disclosing “receiving, from the object, information with respect to the service . . . for satisfying an intention of a user of the device,” as recited in independent claim 9 and similarly recited in independent claim 15. Final Act. 9-10 (citing Miller ¶¶ 8, 23, 30). Paragraphs 23 and 30 of Miller, however, describe operation of Miller’s “facility.” Paragraph 23 of Miller describes “[a] facility is provided for adding, identifying, comparing, organizing, annotating, sharing and discovering goods to acquire. The facility is based upon dynamic collections of item metadata stored in databases accessible through multiple internet access points including but not limited to mobile.” Miller ¶ 23 (emphases added). Thus, for the reasons similar to those discussed above with respect to claims 1 and 8, the Examiner does not explain adequately how the “device” of Miller “receiv[es], from the object,” i.e., receives from “items 1 or 2 or item of interest 112” or the “target item” of Miller, “information with respect to the service . . . for satisfying an intention of a user of the device.” Accordingly, we determine the Examiner erred, as the findings in the Examiner’s rejections are not sufficient to show Miller discloses all of the limitations of claims 1, 8, 9, and 15, and, therefore, do not sustain the Examiner’s rejection of independent claims 1, 8, 9, and 15 under 35 U.S.C. § 102(a)(1) as anticipated by Miller, together with the rejection of claims 2- 5 and 10-12, which depend from claims 1 or 9. Furthermore, we do not sustain the rejection of dependent claims 6 and 13 under 35 U.S.C. § 103 over Miller and Sim or the rejection of dependent claims 7 and 14 over Miller and Nadler because the Examiner’s Appeal 2021-000685 Application 16/199,500 13 applications of Sim or Nadler do not cure the deficiency in the rejection of the base claims addressed above. New Ground Rejection of Claims 1-15 Under 35 U.S.C. § 112 Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claims 1-15 as failing to comply with the written description requirement under 35 U.S.C. § 112. Whether the written description requirement of 35 U.S.C. § 112 has been satisfied “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must describe sufficiently an invention understandable to a person of ordinary skill in the art and “show that the inventor actually invented the invention claimed.” Id. Sufficiency of a specification’s written description is a fact question, and “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. As noted above, Appellant represents that the disputed limitations recite the subject matter described in Figure 8 and paragraphs 146-147 of the Specification. See Appeal Br. 5-7 (citing Spec., Fig. 8 (steps 850, 860), ¶¶ 146-147). In the cited paragraphs, the Specification describes: In an operation S850, the object 100 may determine an intention of a user based on properties of the object 100 and acquired context information. The object 100 may determine types of services and may determine types of specific information to be provided by the services. Furthermore, if the object 100 determines a plurality of services and a plurality of specific information to be provided by the services, the object Appeal 2021-000685 Application 16/199,500 14 100 may recommend types of the determined services and types of the specific information to be provided by the services to the device and may receive information related to types of services and types of specific information to be provided by the services from the device 200. In an operation S860, the object 100 provides intention information regarding an intention of a user and link information for receiving services to the device 200. The link information may include a link address of the server 300 which provides services related to the object 100. Spec. ¶¶ 146-147. The Specification describes that an object is goods or a device including a marker or a tag attached to the object for performing close-distance communication. The object may include a QR code, a barcode, a RFID tag, or a NFC tag. Furthermore, the object may include a passive smart poster (PSP) or an active smart poster (ASP). However, the object is not limited thereto. Spec. ¶ 52 (emphases added). Thus, the Specification broadly describes an “object” as an open-ended generic entity that may include a marker, a tag, or a smart poster, but is not necessarily limited to those examples. Although paragraphs 146-147 of the Specification broadly describe operations of a generic “object,” the Specification does not describe any specific example. For example, we do not discern anything in the Specification that describes “a QR code, a barcode, a RFID tag, or a NFC tag” making any determination, let alone determining an intention of a user based on the context information of the device. Similarly, although the Specification describes embodiments where the “object” is a “smart poster” (see, e.g., Spec. ¶¶ 52, 63, 64, 67, 68, 119), we do not discern any description of a Appeal 2021-000685 Application 16/199,500 15 smart poster in the Specification, let alone a smart poster determining an intention of a user based on the context information of the device. Likewise, we do not discern any description in the Specification of a QR code, a barcode, a RFID tag, a NFC tag, or a smart poster “transmitting, to the device” information relating to “the service corresponding to the intention of the user.” As our reviewing court has repeatedly stated, the purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Ariad Pharmaceuticals, 598 F.3d at 1353- 54 (emphasis added). See also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1298-1299 (Fed. Cir. 2014) (“The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” (emphasis added)). Here, we determine that the broad description of the operation of an open-ended, generic “object” in paragraphs 146-147 of the Specification is insufficient to satisfy the written description requirement for the disputed limitations recited in independent claims 1, 8, 9, and 15 because the description in the Specification essentially repeats or paraphrases the broad claim language of the independent claims. See Spec. ¶¶ 52, 146-147. “Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the Appeal 2021-000685 Application 16/199,500 16 art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.” Enzo Biochem, Inc. v. Gen- Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (emphasis added). This is because such indistinct description “may not both put others on notice of the scope of the claimed invention and demonstrate possession of that invention.” Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr. Reddy’s Lab’ys Inc., 923 F.3d 1368, 1380 (Fed. Cir. 2019) (citing Enzo Biochem, 323 F.3d at 968-69). Accordingly, we newly reject independent claims 1, 8, 9, and 15 as failing to comply with the written description requirement under 35 U.S.C. § 112. Each of the dependent claims recites or includes by virtue of its dependency operations of the generic “object” recited in the disputed limitations of the independent claims. Thus, we also newly reject dependent claims 2-7 and 10-14 as lacking written description in the Specification. In sum, we newly reject claims 1-15 as failing to comply with the written description requirement under 35 U.S.C. § 112. CONCLUSION The decision of the Examiner to reject claims 1-15 is reversed. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-15 under 35 U.S.C. § 112 as failing to comply with the written description requirement. Appeal 2021-000685 Application 16/199,500 17 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1-5, 8-12, 15 102 Miller 1-5, 8-12, 15 6, 13 103 Miller, Sim 6, 13 7, 14 103 Miller, Nadler 7, 14 1-15 112 Written Description 1-15 Overall Outcome 1-15 1-15 Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED 37 C.F.R. § 41.50(b)