Ex Parte 5,611,050 et alDownload PDFPatent Trial and Appeal BoardJan 27, 201690013084 (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. 90/013,084 12/05/2013 5,611,050 642122800200 4947 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 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 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. 5,611,050 (“the ’050 patent”) issued March 11, 1997, to Marvin M. Theimer, et al., entitled Method For Selectively Performing Event On Computer Controlled Device Whose Location And Allowable Operation Is Consistent With The Contextual And Locational Attributes Of The Event, and assigned to UbiComm, LLC. (“Patent Owner” or “Owner”). Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 2 Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the Examiner’s rejection of claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b). This matter is related to Reexamination Control No. 90/013,082. 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. 1:41–46. Independent claim 1 reads as follows: 1. A method for selectively triggering events of a computer controlled device based on the context of a system, the system including the computer controlled device, and further including mobile users, mobile and fixed computer controlled devices, the system having a multiplicity of allowable operations, each computer controlled device having an allowable operation, the system having computing resources for registering and responding to requests for events, the method comprising the steps of: registering a request for a particular event of a computer controlled device; identifying contextual attributes of the system for said particular computing event; determining location and identities of mobile users and mobile or fixed computer controlled devices in the system whose allowable operation is consistent with the particular computing event; perceiving said contextual attributes for said particular computing event; and performing said particular computing event on a one of the computer controlled devices whose location and allowable operation is consistent with the particular event and the contextual and locational attributes of the particular computing event. Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 3 The Examiner rejects claims 1–5 under 35 U.S.C. § 102(b) as anticipated by Want.1 Ans.2 2–6. 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. 90/013,082. PO App. Br. 2–3. ANALYSIS Patent Owner’s arguments (PO App. Br. 3 7–18; PO Reply Br. 4 2–11) that the Examiner erred in rejecting claims 1–5 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. 3) Does Want describe “determining [a] location . . . [of] mobile or fixed computer controlled devices” as recited in claim 1? See PO App. Br. 14–18; PO Reply Br. 6–11. 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 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 4 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. 9. 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. 7–9. For emphasis, we note Owner’s overly narrow use of “system” (see, e.g., PO App. Br. 8, 9, 10) 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. 9. We do not find, as Owner argues, that Want describes “applications [that] do not even rely on the same badge” (PO App. Br. 9) 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. 7 (citing Want 10). 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 Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 5 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. 7–9. 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 ’050 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 ’050 Patent, without undue experimentation.” PO App. Br. 10. Owner compares the Want article to the Specification of the ’050 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 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 5 Declaration of Tim Milliken, August 1, 2014 (“the Milliken Declaration”). Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 6 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 ’050 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 ’050 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 ’050 Patent, the ’050 Patent Specification, and Want. We give weight to all of Owner’s assertions regarding the content of the ’050 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 the Examiner’s unrebutted finding that “Patent Owner fails to indicate any actually claimed term, phrase or limitation which is not enabled.” Ans. 11. See also id. at 10 (“Neither the particularities of any registries nor any agents are required by the claims.” (in response to Owner’s argument that “Want 6 Declaration of Ravin Balakrishnan, Ph.D., December 4, 2013 (“the Balakrishnan Declaration”). Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 7 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. 12 (“Nowhere does Patent Owner indicate what particular technology, commensurate with the claims, is not enabled . . . .”); and id. at 14 (The Milliken Declaration “continually alleges features which would have required more than routine experimentation, yet those features are not present in the claims.” (in response to Owner’s reliance on the Milliken as evidence of non-enablement (PO App. Br. 13–14))). 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 ’050 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 ’050 Patent recite “agents” or “background processes.” See ’050 Patent claims 1–5. And while the claims recite “registering a request,” (claim 1), Owner has not established that this registering must be performed by the location registries Owner asserts to be described in the ’050 Patent Specification. PO Reply Br. 5. Of ultimate Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 8 importance, however, is Owner’s failure to identify a specific claim element in a claim of the ’050 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 ’050 Patent are enabled by Want. ISSUE 3 Owner last argues that Want fails to describe “determining [a location of] mobile or fixed computer controlled devices,” 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 “Personal Active Badges developed for location of people and devices in the computer environment.” Ans. 3 (referring to Want, Abstract). The Examiner also cites Want’s disclosure that “[t]he 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.” Id. at 4 (quoting Want 10). The Examiner further cites 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.” Id. (quoting Want 4). Owner argues that the passages the Examiner cites from Want “do not disclose that the locations of the devices that perform the computing event are necessarily determined.” PO App. Br. 14. Owner essentially argues that the devices Want describes respond to nearby badges based on proximity, which does not necessarily require the device to know its own location; thus Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 9 Want does not necessarily require determining a device’s actual location. PO App. Br. 14–18. We are unpersuaded of error at least because Owner fails to persuasively rebut the Examiner’s finding that Want’s Abstract describes “determining [a location of] mobile or fixed computer controlled devices.” Ans. 17; see also Want, Abstract (“[A] family of Personal Active Badges developed for location of people and devices in the computer environment.”). Even accepting Owner’s preferred construction that the claims require determining an “absolute” physical location, and not merely a network address location (PO Reply Br. 6–11), we find that one skilled in the art would understand at least Want’s Abstract to anticipate the argued limitation, as the Examiner finds. Ans. 17 (“It is not clear why Want Article’s phrase ‘developed for location of people and devices’ is anything but anticipation of the step of determining location of users and computer devices.”). Owner replies to the Examiner’s argument, saying As is apparent, the sentence is discussing what the Active Badge can potentially be used for. It is not a description of an actual system that uses the badge. Further, the sentence does not explain how a system might carry out the other steps of claim 1. It is not a description of a system that meets all of the requirements of claim 1 and thus is not sufficient under the law. PO Reply Br. 10. We find this argument unpersuasive because, even if the referenced passage from Want’s Abstract is intended to describe that the “Active Badge” exclusively determines the location of devices in the computer environment, as Owner argues, this is sufficient to show that Want anticipates the limitation, as the Examiner finds. Ans. 17. The Active Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 10 Badge is part of the office wide system Want describes, and anticipation does not necessitate that this sentence alone “explain how a system might carry out the other steps of claim 1.” PO Reply Br. 10. Accordingly, we are unpersuaded of error in the Examiner’s determination that Want anticipates claim 1’s “determining [a location of] mobile or fixed computer controlled devices.” In view of the foregoing, we find that the Examiner did not err in rejecting claims 1–5 as anticipated by Want. SUMMARY We affirm the Examiner’s decision to reject claims 1–5 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 peb Appeal 2016-000136 Reexamination Control 90/013,084 Patent 5,611,050 11 PATENT OWNER: FARNEY DANIELS PC 800 S. Austin Avenue Suite 200 Georgetown, TX 78626 THIRD PARTY REQUESTER: MORRISON & FOERSTER LLP 425 Market Street San Francisco, CA 94105-2482 Copy with citationCopy as parenthetical citation