Dominic KotabDownload PDFPatent Trials and Appeals BoardJul 1, 20212020002646 (P.T.A.B. Jul. 1, 2021) Copy Citation 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. 15/409,444 01/18/2017 Dominic M. Kotab DOM1P007C 1005 28875 7590 07/01/2021 Zilka-Kotab, PC 1155 N. 1st St. Suite 105 SAN JOSE, CA 95112 EXAMINER ELHAG, MAGDI ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 07/01/2021 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): zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOMINIC M. KOTAB Appeal 2020-002646 Application 15/409,444 Technology Center 2600 Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, 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 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Dominic M. Kotab as the real party in interest. Appeal Brief filed September 16, 2019 (“Appeal Br.”) at 2. Appeal 2020-002646 Application 15/409,444 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter relates to “sharing geographical data between devices.” Spec. ¶ 2.2 In particular, a location of a mobile device of a friend of a user is sent from a server in response to a request from a mobile device of the user. Id. ¶¶ 3, 56. The mobile device of the user establishes a link with a global positioning service (GPS) system and then transmits geographical data to the GPS system including the location of the mobile device of the friend of the user. Id. ¶¶ 3, 92. The mobile device of the user outputs a geographic solution including a calculated route between the location of the mobile device of the user and the location of the mobile device of the friend of the user and other route information. Id. ¶¶ 3, 63. Illustrative Claim Claims 1, 9, 10, 13, 16, and 18 are independent. Claim 1, reproduced below with certain dispositive limitation at issue italicized, illustrates the claimed subject matter: 1. A system, comprising: a first mobile device comprising a processor; and a computer usable medium, the computer usable medium having computer usable program code embodied therewith, which when executed by the processor causes the processor to: 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed January 18, 2017 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed April 25, 2019; (3) the Examiner’s Answer (“Ans.”) mailed December 26, 2019; and (4) the Reply Brief filed February 19, 2020 (“Reply Br.”). Appeal 2020-002646 Application 15/409,444 3 send, from the first mobile device, a request including information associated with a mobile device of a friend of a user; determine a first location of the first mobile device; receive, in response to the request, a location of the mobile device of the friend of the user; establish a link with a global positioning service (GPS) system; transmit geographical data to the GPS system, wherein the geographical data includes the location of the mobile device of the friend of the user and the first location of the first mobile device; and output a geographic solution on the first mobile device, wherein the geographic solution includes: a calculated route between the first location of the first mobile device and the location of the mobile device of the friend of the user, and information associated with the calculated route, the information including one or more of an estimated travel time, an average travelling speed, and an elapsed travel time. Appeal Br. 24 (Claims Appendix). REFERENCES The Examiner relies on the following prior art references:3 Name Reference Date Sheena US 2005/0272473 A1 Dec. 8, 2005 Tengler US 2008/0027635 A1 Jan. 31, 2008 Ohki US 2008/0036586 A1 Feb. 14, 2008 Shintani US 2008/0114541 A1 May 15, 2008 Vengroff US 2009/0005968 A1 Jan. 1, 2009 3 All citations to the references use the first-named inventor only. Appeal 2020-002646 Application 15/409,444 4 REJECTIONS The Examiner rejects the claims as follows under 35 U.S.C. § 103(a): Claims References Final Act. 1–7, 9, 13, 14, 16, 17 Sheena, Shintani, Vengroff 6 8 Sheena, Shintani, Vengroff, Tengler 15 15 Sheena, Shintani, Vengroff, Ohki 16 10, 11, 18, 19 Sheena, Shintani 17 12, 20 Sheena, Shintani, Ohki 22 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner finds that Sheena teaches most of the limitations of independent claim 1, but finds that “Sheena does not expressly teach the navigation information is calculated and obtained by using a GPS system associated with or linked to the first mobile device,” as recited in claim 1. Final Act. 8. The Examiner relies on Shintani, which the Examiner finds “teaches methods, processes and systems for use in determining navigation (abstract).” Id. According to the Examiner, “Sheena also does not expressly teach details of the navigation information as to the information including one or more of an estimated travel time, an average travelling speed, and an elapsed travel time.” Id. at 10. The Examiner relies on Vengroff to teach the specific information associated with the calculated route, as claimed. The Examiner determines that sufficient motivation existed to combine the teachings of the references. Id. at 9–11. Claim 1 recites “receive, in response to the request, a location of the mobile device of the friend of the user.” Appeal Br. 24. Appeal 2020-002646 Application 15/409,444 5 The Examiner relies on Sheena to teach or suggest this limitation. Sheena relates to a directory assistance system that uses a human operator to field telephone or SMS queries from mobile users. Sheena ¶¶ 32–35. The operator fields queries by using a database stored in directory assistance server 108 to look up place data items associated with a person such as a fixed “residential and work addresses of the person.” Id. ¶ 23. Of particular relevance, the Examiner relies on Sheena’s operator providing such fixed address data in response to a user query, finding “Sheena clearly teaches the directory assistance query is matched with entries in an extensive and sometimes proprietary directory of telephone and address information stored in the directory database of directory assistance server 108.” Ans. 8 (emphasis omitted) (citing Sheena ¶¶ 19, 23). Appellant argues that “matching a directory assistance query with entries stored in a database, where person data items may include residential and work addresses, as in Sheena, fails to teach ‘receiv[ing], in response to the request, a location of the mobile device of the friend of the user.’” Appeal Br. 14; Reply Br. 10. Because the rejection turns on whether “a location of the mobile device” is described or suggested by the cited combination of Sheena, Shintani, and Vengroff, we must interpret this phrase before we compare the claim to the cited prior art. During prosecution, claims must be given their broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading Appeal 2020-002646 Application 15/409,444 6 of the claim term adopted by the examiner.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Instead, a proper claim construction analysis endeavors to assign a meaning to a disputed claim term “that corresponds with . . . how the inventor describes his invention in the specification.” Id. at 1383. We, therefore, turn to the Specification. According to the Examiner, “the original specification at most discloses a directory storing information about subscribers such as name, telephone number and fixed address” and “[t]he disclosed directory in the original specifications as filed Does Not maintain [a] current location of subscribers and/or relationship between subscribers.” Ans. 8 (citing Spec. ¶¶ 55, 56). The Examiner concludes that “[t]herefore the location of the mobile phone is interpreted to mean the registered fixed location of the subscriber and/or his associated telephone number, whether said telephone number is a mobile telephone number or a fixed telephone number.” Ans. 8 (Examiner’s emphasis omitted, emphasis added). Appellant responds that the Specification clearly discloses that: “[a request including] a telephone number for a friend’s mobile telephone may result in the location of the friend’s mobile telephone being returned to the mobile device, and a route between the present location of the mobile device and the friend’s mobile telephone can be determined” (emphasis added), and not merely “a simple directory server that maintains names, telephone numbers and fixed addresses of subscribers,” as alleged by the Examiner. Reply Br. 7–8. Appeal 2020-002646 Application 15/409,444 7 We agree with Appellant that the Examiner’s interpretation of “location of the mobile device,” as claimed, is unreasonably broad in view of the Specification. The claim language itself recites “a location of the mobile device of the friend of the user.” Appeal Br. 24. Thus, interpreting the claim language to mean a fixed address such as a residential or work address stored in a database is unreasonable in view of the claim itself. Also, as Appellant points out, the Specification specifically discloses receiving a “‘location of the friend’s mobile telephone.’” Appeal Br. 4 (citing Spec. ¶¶ 3, 56). The Specification further discloses that in a query response, “a telephone number for a friend’s mobile telephone may result in the location of the friend’s mobile telephone being returned to the mobile device, and a route between the present location of the mobile device and the friend’s mobile telephone can be determined. Spec. ¶ 56. According to the Examiner, “[t]he disclosed directory in the original specification[] as filed Does Not maintain [a] current location of subscribers and/or relationship between subscribers.” Ans. 8. But, Appellant’s Specification fails to even mention a directory, and the Examiner does not provide sufficient evidence in the form of a citation or additional explanation to establish that the Specification does not contemplate providing current locations of subscribers, particularly in view of the claim language itself and the Specification’s disclosure of basing route directions on “the present location of the mobile device and the friend’s mobile telephone.” Spec. ¶ 56; see also Spec. ¶ 42 (“Referring to FIG. 6, in operation 602, a present geographical location of a remote mobile device is received at a local mobile device.”). Appeal 2020-002646 Application 15/409,444 8 Put another way, the Examiner has not sufficiently explained why Appellant’s claimed invention should be interpreted as providing route directions between the first mobile device and a friend’s residential address when the location of the mobile device of the friend may often be different than the location of the friend’s residential address. Such an interpretation contradicts the claim language itself, is overly broad in view of the Specification, and would also not be particularly useful. Based on the Specification, we agree with Appellant that the phrase “a location of the mobile device” must be interpreted more narrowly to include a location of the mobile phone itself, rather than the Examiner’s broader interpretation that “the location of the mobile phone is interpreted to mean the registered fixed location of the subscriber and/or his associated telephone number, whether said telephone number is a mobile telephone number or a fixed telephone number.” Answer 8 (emphasis omitted). Now that we have interpreted “a location of the mobile device” in view of the Specification, we consider Appellant’s arguments distinguishing the claim over the prior art. We find persuasive Appellant’s argument that “matching a directory assistance query with entries stored in a database, where person data items may include residential and work addresses, as in Sheena, fails to teach ‘receiv[ing], in response to the request, a location of the mobile device of the friend of the user.’” Appeal Br. 14. Although Sheena’s directory assistance provides a fixed address, such as residential and work addresses, of the subscriber, registered in a database, in response to a query, the Examiner has not established sufficiently that Sheena teaches or suggests providing a location of a mobile device, as claimed. See Sheena ¶ 19 (“the directory Appeal 2020-002646 Application 15/409,444 9 assistance query is matched with entries in an extensive and sometimes proprietary directory of telephone and address information stored in the directory database of directory assistance server 108.”). The Examiner also fails to show that Shintani and Vengroff, alone or in combination, compensate for the noted deficiencies of Sheena. Thus, given the current record, the Examiner has not demonstrated that the combination of Sheena, Shintani, and Vengroff teaches or suggests “receive, in response to the request, a location of the mobile device of the friend of the user,” as recited in claim 1. Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. For similar reasons, we do not sustain the Examiner’s rejection of independent claims 9 and 10, which recite limitations similar to those at issue in claim 1. Independent claims 13, 16, and 18 similarly recite “sending [from the server] to the first mobile device the location of the mobile device of the friend of the user.” Appeal Br. 27. In addition, we do not sustain the Examiner’s rejections of claims 2–8, 11, 12, 14, 15, 17, 19, and 20, which depend directly or indirectly from claims 1, 10, 13, 16, and 18. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–7, 9, 13, 14, 16, 17 103(a) Sheena, Shintani, Vengroff 1–7, 9, 13, 14, 16, 17 8 103(a) Sheena, Shintani, 8 Appeal 2020-002646 Application 15/409,444 10 REVERSED Vengroff, Tengler 15 103(a) Sheena, Shintani, Vengroff, Ohki 15 10, 11, 18, 19 103(a) Sheena, Shintani 10, 11, 18, 19 12, 20 103(a) Sheena, Shintani, Ohki 12, 20 Overall Outcome 1–20 Copy with citationCopy as parenthetical citation