Drance, Kaiann et al.

Patent Trials and Appeals Board

Apr 13, 2020

12571839 - (D) (P.T.A.B. Apr. 13, 2020)

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.
12/571,839 10/01/2009 Kaiann Drance 521075 - P7518US1 2742
77970 7590 04/13/2020
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1661 Page Mill Road
Suite A
Palo Alto, CA 94304
EXAMINER
JOSEPH, TONYA S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAIANN DRANCE, STANLEY CARL NG,
and COURTNEE WESTENDORF
____________

Appeal 2019-005429
Application 12/571,839
Technology Center 3600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1, 4, 6–10, and 24–35.1,2 (Appeal Br. 1;
see also Reply Br. 1.)

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Apple Inc., as the real party in interest.
(See Appeal Br. 2.)
2 We consider the Final Office Action mailed June 15, 2018 (“Final
Act.”); the Appeal Brief filed December 17, 2018 (“Appeal Br.”); the
Examiner’s Answer mailed on May 10, 2019 (“Ans.”); and the Reply Brief
filed July 10, 2019 (Reply Br.).
Appeal 2019-005429
Application 12/571,839

2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

INTRODUCTION
Appellant’s Specification provides an application for integrating hotel
services on a portable electronic device. (Abstract) The electronic device
including the application allows a user to access and control hotel room
setting such as lighting, heat, audio settings, video settings, and bath
settings. (Spec. ¶ 36.) The electronic device can interface with a hotel
system by securely connecting with hotel servers to access various hotel
services. (Spec. ¶ 37.)
Appellant’s claim 1 recites:
1. A method comprising:
detecting, by a computer server, that a geographic
location of a portable computing device is within a
predetermined distance of a geographic location of a hotel
computing system currently maintaining a plurality of
reservations;
requesting, by the computer server and from the portable
computing device, reservation identifying information
associated with the portable computing device, the reservation
identifying information related to a reservation of the plurality
of reservations maintained at the hotel computing system;
determining, by the computer server and based on the
reservation identifying information, that a check-in at the hotel
computing system is authorized during a period of time;
receiving input during the period of time from a graphical
user interface presented by an application configured to execute
on the portable computing device, the graphical user interface
including one or more components controlling at least one
function of an electrical device located in a hotel room;
performing the check-in at the hotel computing system
using the reservation identifying information, by the computer
Appeal 2019-005429
Application 12/571,839

3
server, based on the determination that the check-in at the hotel
computing system is authorized; and
transmitting, by the computer server and to the portable
computing device, an electronic key configured to be presented
by the application, wherein the electronic key configures the
portable computing device to itself operate as a room key to
open an electronic lock associated with a door of the hotel room
by enabling the portable computing device to interact with the
electronic lock associated with the door, and the electronic key
configures the portable computing device to configure one or
more settings of the electrical device located within the hotel
room.

(Appeal Br. 26, (Claims App.).) Independent claims 25 and 29 recite “[a]
computing system” and “[a] non-transitory computer-readable medium
storing instructions” including similar features to claim 1, respectively. (See
id. at 28–30, Claims App.).) Independent claim 33 recites “a method”
similar to claim 1, further including the limitation “wherein the electronic
key is transmitted as a signal to the electronic lock associated with the door
using near field communication.” (See id. at 30–31, Claims App.).)
The Examiner rejects the claims as follows:3
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Final Office
Action
citation
1, 4, 6–10,
24–354
112, first
paragraph
Written Description 4

3 The Examiner withdrew a rejection of the claims under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. (Ans. 3.)
4 The Examiner did not separately list claim 35 in the rejection. (See Final
Act. 4–5.) Because claim 35 depends from claim 1, we assume that the
same rejections for lack of written description and indefiniteness apply to
claim 35.
Appeal 2019-005429
Application 12/571,839

4
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Final Office
Action
citation
1, 4, 6–10,
24–35
112, second
paragraph
Definiteness 4–5
1, 4, 6, 7, 24–
32
103(a) Sunyich,5 Burger,6 Barnes
Jr.,7 HospitalityNet,8
Brondrup9
5–8
8, 9 103(a) Sunyich, Burger, Barnes Jr.,
HospitalityNet, Brondrup,
Deygout10
8–9
33, 34 103(a) Sunyich, Burger, Barnes Jr.,
Kuhl,11 Brondrup
9–11
10 103(a) Sunyich, Burger, Barnes Jr.,
HospitalityNet, Kiely12
11

ANALYSIS
35 U.S.C. § 112, second paragraph

The Examiner rejects claims 1, 4, 6–10, 24–32, and 35 under 35
U.S.C. § 112, second paragraph, as being indefinite. (Final Act. 4–5.) The

5 Sunyich, US 2003/0149576 A1; published August 7, 2003.
6 Burger et al., US 2002/0099665 A1; published July 25, 2002, (“Burger”).
7 Barnes, Jr., US 2003/0065805 A1; published April 3, 2003.
8 HospitalityNetTM, Signature RFID by VingCard + NFC-Compatible Cell
Phones Coming to ‘The Hotel Show’ Dubai, MBA In Hospitality, (2007),
https://www.hospitalitynet.org/news/4031654.html (last accessed April 1,
2020).
9 Brondrup, US 2003/0208386 A1; published November 6, 2003.
10 Deygout et al., US 2008/0243561 A1; published October 2, 2008
(“Deygout”).
11 Kuhl et al., US 2006/0280149 A1; published December 14, 2006
(“Kuhl”).
12 Kiely et al., US 2002/0077960 A1; published June 20, 2002 (“Kiely”).
Appeal 2019-005429
Application 12/571,839

5
Examiner finds the claimed limitation “the electronic key configures the
portable computing device to configure one or more settings of the electrical
device located within the hotel room” is unclear. (Id. at 5 (emphasis
omitted).)
Appellant contends “[o]ne [of ordinary skill] in the art would
understand the cited claim limitations,” particularly in view of the
Specification, citing paragraph 59. (Appeal Br. 17.)
We are persuaded by Appellant’s argument. “The definiteness inquiry
focuses on whether those skilled in the art would understand the scope of the
claim when the claim is read in light of the rest of the specification. Even if
the written description does not enable the claims, the claim language itself
may still be definite.” Union Pacific Resources Co. v. Chesapeake Energy
Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) (citation omitted).
The independent claims require transmitting an electronic key that:
(1) configures the portable computer device to itself operate as a room key to
open an electronic lock; and (2) configures the portable computer device to
configure one or more settings of the electrical device located within the
hotel room. We find the plain meaning of the claim limitation to be
straightforward and unambiguous. “[A]mbiguity in claim scope is at the
heart of the definiteness requirement of 35 U.S.C. § 112, ¶ 2.” Amgen, Inc.
v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003).
Accordingly, we do not sustain the indefiniteness rejection. We address
whether the plain language is supported by the Specification below.

Appeal 2019-005429
Application 12/571,839

6
35 U.S.C. § 112, first paragraph, written description

The Examiner rejects claims 1, 4, 6–10, 24–32, and 35 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. (Final Act. 4.) The Examiner finds the claimed
limitations: (1) “authorization during a period of time and receiving input
during the time period” and (2) “the electronic key configures the portable
computing device to configure one or more settings of the electrical device
located within the hotel room” were added by amendment and were not
supported by the original Specification as filed. (Id.) We address
Appellant’s arguments against each of these rejections in turn.
First, Appellant contends the Specification supports “check-in . . .
authorized during a period of time” in at least paragraphs 7, 49, and Figure
6. (Appeal Br. 14.) Appellant contends the Specification supports
“receiving input during a period of time” in at least paragraphs 36, 37, 46,
48, 50, and Figure 7. (Id.)
We are persuaded by Appellant’s argument as to the limitations for
performing the method “during a period of time.” Id. For example, the
Specification describes identifying whether the user is currently checked into
the hotel or scheduled to check into the hotel and is thus authorized to check
in during a period of time. (See Spec. ¶ 49.) Likewise, the Specification
discloses authorized guests configuring room settings during suitable time
periods or for certain timeframes. (See Spec. ¶¶ 48, 50.)
Second, Appellant contends support for “transmitting . . . an electronic
key” as recited by the last paragraph of claim 1, “can be found in at least
paragraphs [0048], [0050], [0058], [0059], and FIGS. 5 and 7.” (Appeal Br.
15.) Appellant argues only that “the Examiner must overcome a strong
Appeal 2019-005429
Application 12/571,839

7
presumption that the rejected claims satisfy the written description
requirement since a description as originally filed is presumed to be
adequate, unless or until evidence or reasoning to the contrary has been
presented by the Examiner sufficient to rebut the presumption.” (Id. at 16–
17.)
We are not persuaded by Appellant’s argument as to this limitation.
As discussed above, the independent claims recite transmitting “an
electronic key configured to be presented by the application” that (1)
configures the portable computer device to itself operate as a room key to
open an electronic lock and (2) configures the portable computer device to
configure one or more settings of the electrical device located within the
hotel room. (Id. at 26.) Moreover, the electronic key is transmitted “by the
computer server and to the portable computing device.” (Id.) Accordingly,
we review the Specification for written description support of an electronic
key transmitted by a server to a portable electronic device that configures the
device to perform the two recited tasks.

Paragraphs 48 and 50 of the Specification describe the steps of Figure
5, reproduced below.
Appeal 2019-005429
Application 12/571,839

8

Figure 5 illustrates a process for configuring a room setting.
(Spec. ¶ 15.)
In paragraph 48, the Specification describes a server of the hotel
system receiving a request to configure a room setting at step 504. (Id. at
¶ 48.) In paragraph 50, the Specification explains “[a]t step 508, in response
to determining the user is an authorized guest of the hotel, a hotel room can
be configured with the requested room setting that was received at step 504.”
(Id. ¶ 50.) Neither paragraph, nor any description of Figure 5 in the
Specification, describes transmitting an electronic key by the server to a
portable electronic device.
Paragraphs 58 and 59 describe the steps of Figure 7, reproduced in
part below.
Appeal 2019-005429
Application 12/571,839

9

Figure 7 is a schematic view of functions available to a user
within the hotel room. (Id. ¶ 17.)
In paragraph 58, the Specification discloses “a user can control power,
audio, and video available in the room and enhance room settings. For
example, through the integrated application, the electronic device can
function as a universal remote controller allowing a user to control audio and
video available for playback.” (Id. ¶ 58.) In paragraph 59, the Specification
discloses “through the integrated application, the electronic device can
function as a universal remote to control room settings.” (Id. ¶ 59.) Neither
paragraph, nor any description of Figure 7 in the Specification, describes
transmitting an electronic key by the server to a portable electronic device or
an electronic key configured to be presented by the application.
As to an “electronic key,” the Specification states “[t]he electronic
device can receive the appropriate electronic key at any suitable time,
Appeal 2019-005429
Application 12/571,839

10
including for example upon checking-in remotely (e.g., through notification
412 of FIG. 4). In this scenario, the key can be securely transmitted to the
electronic device through, for example, a secure wireless network.” (Id.
¶ 54.) This disclosure may support an electronic key transmitted by a server
to an electronic device to perform the first function of operating as a room
key. However, the Specification does not describe an electronic key
performing the second claimed function, i.e., configuring a portable device
to configure one or more settings within the hotel room.
We agree with Appellant that the Specification need not recite the
claimed limitation in haec verba. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). But Appellant merely reiterates
the portions of the Specification asserted to provide support for the claim
limitations, without any explanation. We fail to understand how the cited
portions describe an electronic key meeting the requirements of Appellant’s
claims. “[A] description that merely renders the invention obvious does not
satisfy the requirement.” (Id.) Appellant has not provided persuasive
evidence that the Specification provides descriptive support for the recited
limitation. Accordingly, we sustain the Examiner’s rejection of the claims
as lacking written description.

35 U.S.C. § 103(a), Obviousness

Appellant argues all of the obviousness rejections together with
respect to claim 1. (Appeal Br. 13.) Accordingly, we discuss the rejection
of claim 1 below.
The Examiner finds Sunyich teaches a method of identifying hotel
reservation information from a portable computing device and receiving
Appeal 2019-005429
Application 12/571,839

11
input controlling at least one function of an electrical device located in a
hotel room. (Final Act. 5–6.) The Examiner finds Burger teaches a method
for authorizing a hotel check-in and transmitting an electronic key from a
server to a portable electronic computing device to configure the device to
act as a room key. (Id. at 6.) The Examiner finds Barnes Jr. teaches using
the geographical location of the device to permit remote check-in. (Id.) The
Examiner finds HospitalityNet teaches opening a hotel room lock using Near
Field Communication (“NFC”). (Id. at 6–7.) The Examiner finds Brondrup
teaches a portable computing device configured with a “graphical interface
including one or more components controlling functionality with respect to a
hotel room.” (Id. at 7.)
Appellant contends the prior art does not teach “an application that
presents an electronic key that ‘configures the portable computing device to
configure one or more settings of the electrical device located within the
hotel room.’” (Appeal Br. 10.) For example, Appellant argues Sunyich
teaches “activating user preferences through a centralized system’s
electronic network.” (Id.) Appellant argues “Brondrup’s opening a door
based on Bluetooth signals with a secret key token, does not teach or suggest
an electronic key that ‘configures the portable computing device to
configure one or more settings of the electrical device located within the
hotel room.’” (Id. at 9 (emphasis omitted).)
We are persuaded by Appellant’s argument. Sunyich teaches a
proximity or smart card that can be used as a hotel room door key and for
storing hotel room setting preferences accessed through an electronic
network. (Sunyich ¶¶ 26, 27, and 29.) Sunyich further suggests the hotel
guest can control a number of settings by remote communication using a
Appeal 2019-005429
Application 12/571,839

12
computer network. (Sunyich ¶¶ 31, 32.) Burger teaches downloading a key
card from a hotel server onto a portable computing device. (Burger ¶ 628.)
The key card configures the device with an icon (graphical user interface)
for the hotel room key that allows the device to encode a separate card to
open an electronic lock. (Burger ¶ 628.) Likewise, Brondrup teaches a user
interface on a mobile wireless terminal for controlling a door lock after
receiving a key token. (Brondrup ¶ 43.) We agree with the Examiner that it
would have been obvious to use the key card or token to configure the
electronic device to unlock the hotel room door. However, the Examiner has
not explained how the combined art teaches or suggests downloading the
key card to configure the device to configure one or more hotel room
settings. Accordingly, we do not sustain the Examiner’s obviousness
rejection.
CONCLUSION
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 4, 6–10,
24–35
112, first
paragraph 
Written Description 1, 4, 6–10,
24–35

1, 4, 6–10,
24–35
112, second
paragraph 
Definiteness 1, 4, 6–10,
24–32, 35
1, 4, 6, 7,
24–32
103(a)  Sunyich, Burger, Barnes
Jr., HospitalityNet,
Brondrup
1, 4, 6, 7,
24–32
8, 9 103(a)  Sunyich, Burger, Barnes
Jr., HospitalityNet,
Brondrup, Deygout
8, 9
Appeal 2019-005429
Application 12/571,839

13
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
33, 34 103(a)  Sunyich, Burger, Barnes
Jr., Kuhl, Brondrup
33, 34
10 103(a)  Sunyich, Burger, Barnes
Jr., HospitalityNet, Kiely
10
Overall
Outcome
1, 4, 6–10,
24–35

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

AFFIRMED