Dominic Kotab

Patent Trials and Appeals Board

Jul 1, 2021

2020002646 (P.T.A.B. Jul. 1, 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.
15/409,444 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