Ex Parte 5,555,376 et alDownload PDFPatent Trial and Appeal BoardJan 27, 201690013082 (P.T.A.B. Jan. 27, 2016) 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. 90/013,082 12/05/2013 5,555,376 642122800100 4263 7590 01/27/2016 FARNEY DANIELS PC 800 S. AUSTIN AVENUE SUITE 200 GEORGETOWN, TX 78626 EXAMINER CARLSON, JEFFREY D ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/27/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UBICOMM, LLC Appellant ____________ Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 Technology Center 3900 ____________ Before STEPHEN C. SIU, JEREMY J. CURCURI, AND IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This proceeding arose out of a request for ex parte reexamination of U.S. Patent No. 5,555,376 (“the ’376 patent”) issued Sept. 10, 1996, to Marvin M. Theimer, et al., entitled Method For Granting A User Request Having Locational And Contextual Attributes Consistent With User Policies For Devices Having Locational Attributes Consistent With The User Request, and assigned to UbiComm, LLC. (“Patent Owner” or “Owner”). Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 2 Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the Examiner’s rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b). This matter is related to Reexamination Control No. 90/013,085. The disclosed invention relates to “detecting, selecting and interacting with computers and computer-controlled devices in the proximity of a user, based on the location of the devices relative to the user, the current context of the user, the location and context of other nearby users and devices, and the current state of the devices.” Spec. 1:35–40. Independent claim 1 reads as follows: 1. A method for superimposing prespecified locational, environmental, and contextual controls on user interactions, including interactions of mobile users, with computational resources of a distributed computer system for performing a multiplicity of operations and with processes running on equipment residing on said system, each device of the distributed computer system having a location and at least one allowable operation, the method comprising the steps of: registering interaction policies, including user specified interaction policies, on an identifiable address path; registering user and equipment locations, including dynamically updated indications of the locations of mobile users; registering interaction requests, each interaction request including a requested operation; identifying locational and contextual attributes of each of said interaction requests by reference to contextual information, including registered locations; for each interaction request, identifying a device having locational attributes consistent with the locational attributes of the interaction request and an allowable operation consistent with the requested operation of the interaction request; granting interaction requests that have locational and contextual attributes that are consistent with said interaction Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 3 policies and for which a device has been identified whose allowable operation is consistent with the requested operation; and denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies. The Examiner rejects claims 1–6 under 35 U.S.C. § 102(b) as anticipated by Want.1 Ans.2 2–8. RELATED PROCEEDINGS We are informed of the related proceedings in the Related Appeals, Interferences, and Trials section of Owner’s appeal brief, which includes Ex Parte Reexamination No. 90/013,084. PO App. Br. 2–3. ANALYSIS Patent Owner’s arguments (PO App. Br. 3 7–16; PO Reply Br. 4 2–9) that the Examiner erred in rejecting claims 1–6 as anticipated by Want raise the following issues: 1) Did the Examiner improperly combine different systems from Want? See PO App. Br. 7–10; PO Reply Br. 2–3. 2) Does Want enable the claimed subject matter? See PO App. Br. 10–14; PO Reply Br. 3–6. 1 Want and Hopper, “Active Badges and Personal Interactive Computing Objects,” 38(1) IEEE Transactions on Consumer Electronics 10–20, February 1992 (“Want”). 2 Examiner’s Answer, mailed April 23, 2015. 3 Patent Owner Appeal Brief, filed March 12, 2015. 4 Patent Owner Reply Brief, filed June 23, 2015. Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 4 3) Does Want describe “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies” as recited in claim 1? See PO App. Br. 14–16; PO Reply Br. 6–9. ISSUE 1 Owner contends that the Examiner erred in rejecting the claims as anticipated by Want because [t]he different applications discussed in the Want Article that are cited by the Examiner in the §102 rejection are not describing the same system. The only thing that these applications have in common is the use of some location tracking device. In fact, these applications do not even rely on the same badge. PO App. Br. 8. See also id at 7–10; PO Reply Br. 2–3. We are unpersuaded of error for essentially the reasons stated by the Examiner in response to Owner’s arguments. Ans. 8–11. For emphasis, we note Owner’s overly narrow use of “system” (see, e.g., PO App. Br. 7, 8, 9) to imply that Want describes mutually exclusive “embodiments” that have been improperly combined for an anticipation rejection. We agree with the Examiner that Want’s description “of a single badge to operate both doors and workstations indicates they are part of the same badge-enabled, office- wide system.” Ans. 10–11. We do not find, as Owner argues, that Want describes “applications [that] do not even rely on the same badge” (PO App. Br. 8) in view of the Examiner’s unrebutted finding that Want discloses “the versatile, second generation transponding (i.e. duplex) authenticated badge can provide the combined functionality of the first generation simplex devices in addition to the newer duplex functionality.” Ans. 9 (citing Want 10). Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 5 Owner’s rebuttal arguments (PO Reply Br. 2–3) are unavailing inasmuch as these arguments persist in asserting that Want’s description of different systems is fatal to the Examiner’s rejection. Even if true that, for example, Want “clearly indicates that the functions shown in Figure 4 are carried out by multiple separate systems” (id. at 3), we would be persuaded nevertheless that one skilled in the art would have recognized the various functionalities Want describes are integrated by virtue of the single badge as the Examiner finds. Ans. 9–11. Accordingly, we see no error in the Examiner’s rejection based on Owner’s argument that the Examiner improperly combined different disclosures within Want. ISSUE 2 Owner argues that, because Want does not enable the claims of the ’376 Patent, it cannot anticipate them. PO App. Br. 10–14; PO Reply Br. 3– 6. Owner relies on the Milliken Declaration5 in support of the contentions. Owner contends that “the Want Article omits crucial technical details, and would not have enabled a person of ordinary skill in the art to make or use the claimed inventions of the ’376 Patent, without undue experimentation.” PO App. Br. 10. Owner compares the Want article to the Specification of the ’376 Patent, citing, for example, Want’s lack of details “concerning the various registries and user and device agents that are described in the patent,” without which “the method as recited in claim 1 of the patent could not have been implemented without undue 5 Declaration of Tim Milliken, August 1, 2014 (“the Milliken Declaration”). Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 6 experimentation.” Id. at 11. Owner makes various assertions regarding the intent of the Want article (id. (“[T]he Want Article’s primary focus is on the Active Badge and its associated sensor network. In the context of the patent, however, this is just one source of location information” that is used by the system recited in claim 1.)), admissions made therein (id. (“[T]he authors of the Want Article actually acknowledge that some of the features discussed in the Article are not enabled.”)), and the sophistication of Xerox, which sponsored the research leading to the article (id. at 13 (“It is thus highly doubtful that Xerox would have allowed its researchers to publish an invalidating disclosure on the results of this research one year before it filed for a patent.”)). In short, Owner contends that, because Want lacks the enabling detail of the ’376 Patent Specification, Want does not enable the claims based thereon. We are unpersuaded of error at least because Owner fails to identify specific claim elements from the claims of the ’376 Patent that are not enabled by Want. In coming to our decision regarding enablement of the Want article, we reviewed the Milliken Declaration, relied on by Owner, and the Balakrishnan Declaration6 relied on by the Examiner. We also reviewed the claims of the ’376 Patent, the ’376 Patent Specification, and Want. We give weight to all of Owner’s assertions regarding the content of the ’376 Patent Specification as compared to Want and Owner’s characterizations of the admissions of the authors of Want. Fatal to Owner’s position, however, is 6 Declaration of Ravin Balakrishnan, Ph.D., December 4, 2013 (“the Balakrishnan Declaration”). Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 7 the Examiner’s unrebutted finding that “Patent Owner fails to indicate any actually claimed term, phrase or limitation which is not enabled.” Ans. 12. See also id. at 12 (“Neither the particularities of any registries nor any agents are required by the claims.” (in response to Owner’s argument that “Want Article never discusses any details concerning the various registries and user and device agents that are described in the patent” (PO App. Br. 11)); Ans. at 13 (“Nowhere does Patent Owner indicate what particular technology, commensurate with the claims, is not enabled . . . .”). Owner acknowledges the Examiner’s response with respect to the shortcomings of Owner’s arguments in this regard (PO Reply Br. 5). But rather than replying with specific references to claim elements, Owner again references the ’376 Patent Specification, including unclaimed elements discussed therein: In response, Patent Owner points to the specification of the patent, which discloses the full details of what is actually needed to implement the inventive system. As one example, the patent’s specification describes the use of “agents,” which are implemented as background processes programmed to track the locations of users and devices. As another example, the specification explains in detail how location registries are implemented. The Want Article never even suggests these design choices, let alone how they are implemented. Id. Nowhere do the claims of the ’376 Patent recite “agents” or “background processes.” See ’376 Patent claims 1–6. And while the claims recite “registering” “interaction policies,” “user and equipment locations,” and “interaction requests,” (claim 1), Owner has not established that this registering must be performed by the location registries Owner asserts to be Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 8 described in the ’376 Patent Specification. PO Reply Br. 5. Of ultimate importance, however, is Owner’s failure to identify a specific claim element in a claim of the ’376 Patent that one of ordinary skill in the art would have been unable to implement without undue experimentation in view of Want. Accordingly, we are unpersuaded of error in the Examiner’s determination that the claims of the ’376 Patent are enabled by Want. ISSUE 3 Owner last argues that Want fails to describe “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies” as recited in claim 1. PO App. Br. 14–16. This is the only substantive limitation Owner argues is missing from Want. Among other things, the Examiner cites Want’s disclosure of rules not to interact, including rules not to create beep notifications when a user misses a call while in his boss’s office and not to video record when a user is present. Ans. 6 (citing Want 15; see, e.g., id. (“[A]n automatic ‘Busy’ system may be operating [so] the user can choose to be informed when he has missed a call. In this case the user has asked for two beeps if this happens everywhere except his boss’s office.”)). Owner contends that the Examiner’s citation of a user’s badge not beeping to alert the user to a missed phone call while in his boss’ office fails to describe “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies” for several reasons. Owner argues that “[t]he email or telephone system that is responsible for generating the badge notifications may perceive from the system that the user is [in] a place where he does not wish to be disturbed, Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 9 and as a result not even attempt to issue a badge notification.” PO App. Br. 15. Owner reasons that “[i]n this situation, there is never an issuance of a request to the badge, and thus never a denial of any request.” Id. Owner also argues that “the badge cannot be the target device of claim 1 . . . because the Want Article never discloses that the badge is identified by its locational attributes, as required by the claim.” Id. at 16 (referring to claim 1’s limitation that, for each interaction request, a device is identified “having locational attributes consistent with the locational attributes of the interaction request”). Owner contends that Want “never describes that the badge is identified in this way [and] . . . does not indicate that the system can send a beep notification to all badges that are currently in room X.” Id. In sum, Owner contends that “the badge itself cannot be the target device of claim 1, and the incoming events to the badge listed in Figure 4 are not the ‘interaction requests’ recited in claim 1.” Id. We are not persuaded by Owner’s arguments. The Examiner also refers (Ans. 18–19) to Want’s disclosure that “telephone calls in an integrated service network could also be automatically transferred to the telephone extension nearest the person for whom they were intended” and that “[t]his mechanism could also be qualified by many constraints concerning time, the office you are in, the people you are with, and, if modern ISDN features are available, who is calling.” Want 19. We see no persuasive reason why the “constraints” on the telephone system that cause it not to forward a call to the phone nearest the user cannot be claim 1’s “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies.” In this case, the Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 10 interaction request would be the initiation of the call by the user placing it, the called user’s interaction policy would be “when a call is placed to me, ring the nearest phone unless one of the constraints is true,” and the denial of the interaction request would be the telephone system not ringing the nearby phone because a constraint is true. Hence, the interaction request (i.e., the request to contact the user by phone) is denied because the request has a “locational or contextual” attribute (“time, the office you are in, the people you are with, and . . . who is calling” (id.)) that is inconsistent with the interaction policy (ring the phone nearest my location). Even if it is the telephone system that denies the interaction request by not issuing it, as Owner argues (PO App. Br. 15), Want nevertheless describes “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies,” as the Examiner finds (Ans. 6). The telephone system denies the request to interact with the user made by the calling party by not ringing a nearby phone. We also are not persuaded that Want “never discloses that the badge is identified by its locational attributes,” as Owner argues. PO App. Br. 16. We agree with the Examiner that “[t]he badge is clearly identified with current location, as that is the essence of Want.” Ans. 20 (citing Want 10 (“The name and location of a badge wearer can be ascertained by looking up the badge ID in a table and looking up the location where the sighting was made.”) and Abstract (“Personal Active Badges developed for location of people and devices in the computer environment. Applications include location and paging of individuals as well as control of computer Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 11 systems.”)). Accordingly, we do not find that “the badge itself cannot be the target device of claim 1.” PO App. Br. 16. Owner’s Reply Brief arguments (PO Reply Br. 6–9) do not persuasively rebut the Examiner’s determination. For instance, Owner argues that “a situation where a target device fails to respond because it never receives a request” cannot be claim 1’s denial of an interaction request. Id. at 6–7. We find this unpersuasive because the target device is not the only component that can meet the claim’s “denying” limitation. The telephone system not ringing the nearest phone because the user is in a particular office (location) (Want 19) is sufficient. Accordingly, we are unpersuaded of error in the Examiner’s determination that Want anticipates claim 1’s “denying interaction requests that have locational or contextual attributes that are inconsistent with said interaction policies.” In view of the foregoing, we find that the Examiner did not err in rejecting claims 1–6 as anticipated by Want. SUMMARY We affirm the Examiner’s decision to reject claims 1–6 under 35 U.S.C. § 102(b) as anticipated by Want. 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)(iv). AFFIRMED Appeal 2016-000243 Reexamination Control 90/013,082 Patent 5,555,376 12 peb PATENT OWNER: FARNEY DANIELS PC 800 S. 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