Ex Parte Fiatal

Patent Trial and Appeal Board

Aug 20, 2013

11729314 (P.T.A.B. Aug. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TREVOR FIATAL
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Appeal 2011-001618
Application 11/729,314
Technology Center 2400
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Before JOSEPH F. RUGGIERO, JOSEPH L. DIXON, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-18, 21-25, and 27-29.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE,3 and enter a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).

1 Real Party in Interest is SEVEN Networks Inc.
2 Claims 19, 20, and 26 have been cancelled and are not on appeal.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to the management of groups and group
communications in the context of communication devices such as smart
phones, personal data assistants (PDAs), and wireless electronic mail
devices. See Appellant’s Spec., ¶[0003]. According to Appellant, tags may
be used as shorthand indicators for a group of individuals. The tag is
associated with each member of the group, and subsequent communications
using a tag may be automatically sent to each group member. Id., ¶[0007]
and Abstract.
Claims on Appeal
Claims 1, 23, and 27 are the independent claims on appeal. Claim 1 is
illustrative of Appellant’s invention, and is reproduced below with disputed
limitations emphasized:
1. A method for managing groups, the method
comprising:
receiving information concerning a tag;
receiving information concerning one or more
individuals in a contacts database;
associating the tag with:
the one or more individuals in the contacts
database, wherein subsequent operations involving the tag are
associated with the one or more individuals,
subsequent operations involving any
communication medium of any of the one or more individuals
in the contacts database, wherein information concerning the
operations involving any communication medium of any of the

3 Our decision refers to Appellant’s Appeal Brief filed April 14, 2010
(“App. Br.”); Examiner’s Answer mailed July 28, 2010 (“Ans.”); and the
original Specification filed March 27, 2007 (“Spec.”).
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one or more individuals in the contacts database is retrievable
based on a search for the tag, and
a preferred communication medium for each of the
one or more individuals; and
sending tagged messages to the one or more individuals
using the preferred communication medium of each of the one
or more individuals associated with the tag unless the physical
location of the one or more individuals suggests that the
preferred communication medium would be unsuccessful in
contacting the individual, whereupon the tagged messages are
sent to the one or more individuals using an alternative
communication medium, the physical location of the one or
more individuals automatically determined without input of
the one or more individuals.

Evidence Considered
Harris US 2008/0077571 A1 Mar. 27, 2008
Torvinen US 2005/0210104 A1 Sep. 22, 2005
Kucharewski US 2004/0199582 A1 Oct. 7, 2004

Examiner’s Rejection
Claims 1-18, 21-25, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kucharewski, Harris, and Torvinen.
Ans. 3-22.

Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-18, 21-25, and 27-29 under
35 U.S.C. § 103(a) as being unpatentable over Kucharewski, Harris, and
Torvinen. In particular, the issue turns on whether the combination of
Kucharewski, Harris, and Torvinen discloses or suggests the above disputed
limitations.
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ANALYSIS
Independent Claims 1, 23, and 27
Appellant contends that Kucharewski and Harris do not disclose, and
Torvinen does not teach or suggest the disputed limitations:
sending tagged messages to the one or more individuals using
the preferred communication medium of each of the one or
more individuals associated with the tag unless the physical
location of the one or more individuals suggests that the
preferred communication medium would be unsuccessful in
contacting the individual, whereupon the tagged messages are
sent to the one or more individuals using an alternative
communication medium, the physical location of the one or
more individuals automatically determined without input of the
one or more individuals.

App. Br. 13-15 (emphasis added). In particular, Appellant does not contest
the Examiner’s factual findings regarding Kucharewski and Harris.
Appellant even acknowledges that Torvinen discloses sending tagged
messages to one or more individuals within a group, via different
communication media, such as email, instant message (IM), or Short
Message Service (SMS) based on location information. App. Br. 13 (citing
Torvinen, ¶[0033]); also see Ans. 7 (citing Torvinen, ¶¶[0033], [0042]-
[0043], [0056], and [0060]). However, Appellant argues that:
(1) Mere determination of location [disclosed by
Torvinen] does not “suggest[] that a preferred communication
medium would be unsuccessful” … There is nothing in
Torvinen, other than being “in a meeting,” that teaches that
some contact methods may be unsuccessful such that
alternative means should be used (App. Br. 14) (emphasis
added); and

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(2) A person of ordinary skill in the art who refers to
the plain meaning of “physical location” would not interpret
“physical location” as encompassing such activities as being “in
a meeting.” Further, the specification of the ‘314 application
specifically indicates that physical location refers to “the
individual’s location as may be determined by GPS and/or A-
GPS.” Specification, 9:15-19; 24-25 (App. Br. 15) (emphasis
added).

In response, the Examiner notes that Appellant’s Specification only
describes “the individual’s location as may be determined by GPS and/or A-
GPS” is used “to determine the communication medium most likely to be
successful at contacting the individual.” Ans. 23 (citing Appellant’s Spec.,
¶[0028]). As such, the Examiner interprets the disputed condition of
Appellant’s independent claims 1, 23, and 27: “unless the physical location
… suggests that the preferred communication medium would be
unsuccessful in contacting the individual” (emphasis added), as using
location information to determine the communication medium most likely to
be successful, which is described in Appellant’s Spec., ¶[0028]. According
to the Examiner, “Torvinen is seen as reading upon this interpretation” –
using the location to determine the communication medium most likely to be
successful. Ans. 23 (citing Torvinen, ¶¶[0033], [0042]-[0043], [0056], and
[0060]).
We are not persuaded by Appellant’s arguments. In our view,
Appellant’s arguments based on “physical location” and “in a meeting” as
disclosed by Torvinen are misplaced. As previously discussed, Torvinen
discloses sending tagged messages to one or more individuals within a
group, via different communication media, such as email, instant message
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(IM), or Short Message Service (SMS) based on location information. Ans.
7 (citing Torvinen, ¶¶[0033], [0042]-[0043], [0056], and [0060]).
Nevertheless, we disagree with the Examiner’s interpretation of the
disputed condition of Appellant’s independent claims 1, 23, and 27. At the
outset, we note that claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). However, the broadest-
construction rubric does not give the Examiner an unfettered license to
ignore or misinterpret claim terms and replace therefor with a different
meaning. In re Suitco Surface Inc., 94 USPQ2d 1640, 1644 (Fed. Cir.
2010). Rather, claims should always be read in light of the specification and
teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland
Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to
be read or interpreted in light of its specifications.” (citation omitted)).
According to Appellant’s Specification, the processor 150, shown in
FIG. 1, is described as:
[being] configured to evaluate such factors as preferences,
presence, and/or location, in determining a communication
medium for reaching each individual . . . As disclosed in U.S.
patent application 11/607,620 titled "Location-Based
Operations and Messaging," filed December 1, 2006 (the
disclosure of which is incorporated by reference), processor 150
may also use the individual's location as may be determined by
GPS and/or A-GPS, to determine the communication medium
most likely to be successful at contacting the individual.

Appellant’s Spec., ¶[0028] (emphasis added).
In other words, Appellant’s Specification only describes sending
tagged messages to one or more individuals in a group, via a communication
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medium that is mostly likely and successfully to contact that individual,
based on location information.
In contrast to the limited disclosure in Appellant’s Specification,
Appellant’s independent claims 1, 23, and 27 recite sending tagged
messages to one or more individuals using a preferred communication
medium based on a different condition, i.e., “unless the physical location of
the one or more individuals suggests that the preferred communication
medium would be unsuccessful in contacting the individual,” in which case
“whereupon the tagged messages are sent to the one or more individuals
using an alternative communication medium, the physical location of the one
or more individuals automatically determined without input of the one or
more individuals.” See Appellant’s Specification, claims 1, 23, and 27
(emphasis added). Contrary to the Examiner’s position, a determination of
whether a communication medium would be unsuccessful as recited in
Appellant’s claims 1, 23, and 27 is not, and cannot be construed as the same
as a determination of whether such a communication medium would be most
likely to be successful at contacting that individual as described by
Appellant’s Specification. As such, we find the Examiner’s interpretation
unreasonable, unsupported, and without merit.
For the reasons set forth above, we cannot sustain the Examiner’s
obviousness rejection of independent claims 1, 23, and 27 which all have
similar claim limitations as well as their respective dependent claims 2-18,
21, 22, 24, 25, 28, and 29, which stand therewith.

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NEW GROUND OF REJECTION
New §112, 1st Paragraph Rejection of Claims 1-18, 21-25, and 27-29
under 37 C.F.R. §41.50(b)

However, using our authority under 37 C.F.R. § 41.50(b), we reject
claims 1-18, 21-25, and 27-29 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. As previously
discussed, Appellant’s independent claims 1, 23, and 27 recite a different
condition upon which tagged messages are sent to one or more individuals
within a group, i.e., “unless the physical location of the one or more
individuals suggests that the preferred communication medium would be
unsuccessful in contacting the individual,” in which case “whereupon the
tagged messages are sent to the one or more individuals using an alternative
communication medium, the physical location of the one or more individuals
automatically determined without input of the one or more individuals”
(emphasis added).
However, such condition was not described in the specification in any
way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention. Specifically, Appellant’s Specification only describes sending
tagged messages to one or more individuals in a group, via a communication
medium that is mostly likely and successfully to contact that individual,
based on location information. Spec. ¶[0028].
We note that Appellant’s original Specification does not describe or
provide “adequate support” for any determination of whether a
communication medium would be unsuccessful as recited in Appellant’s
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claims 1, 23, and 27.4 In light of this deficiency, independent claims 1, 23,
and 27 and their respective dependent claims 2-18, 21-22, 24-25, and 28-29
are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
The Patent Trial and Appeal Board (PTAB) is a review body rather
than a place of initial examination. We have made the §112 rejection
regarding claims 1-18, 21-25, and 27-29 under 37 C.F.R. § 41.50(b).
However, we leave the patentability determination with respect to these
claims to the Examiner once the rejection under 35 U.S.C. § 112, first
paragraph is addressed. See MPEP §1213.02.

CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1-18, 21-25, and 27-29 under 35 U.S.C. § 103(a).

DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1-18,
21-25, and 27-29 under 35 U.S.C. § 103(a). However, pursuant to our
authority under 37 C.F.R. § 41.50(b), we newly reject all claims 1-18, 21-25,
and 27-29, as pending, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”

4 We note that the disputed condition was added to Appellant’s claims 1, 23,
and 27 in the Amendment filed on June 14, 2009. However, the Examiner
never questions whether such a condition was supported by Appellant’s
original Specification.
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Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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