Ex Parte Sadhvani et al

Patent Trial and Appeal Board

Jun 14, 2018

13363101 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/363, 101 01/31/2012
25537 7590 06/18/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Rita Sadhvani
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20110978 9654
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RITA SADHVANI and HANNAH YOUNGSIL MOON
Appeal2016-007164
Application 13/363,101
Technology Center 3600
Before MAHSHID D. SAADAT, DENISE M. POTHIER, and JASON M.
REPKO, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, and 6-21. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Verizon
Communications Inc. and its subsidiary companies. App. Br. 2.
2 Claims 2, 4, and 5 have been cancelled. See id.
Appeal2016-007164
Application 13/363,101
STATEMENT OF THE CASE
Appellants' Specification describes a method for configuring wireless
mobile communication devices to enter event information indicative of
events related to the wireless mobile communication device into a diary
associated with a date. The event may include changes in location, phone
calls, text messages, instant messages, emails, and image capturing. See
Spec. ,r 18. Exemplary claim 1 under appeal reads as follows:
1. A wireless mobile communication device
compnsmg:
a transceiver;
a global positioning system (GPS) receiver;
a user interface device;
a processor coupled to the transceiver and the GPS
receiver;
a non-transitory medium accessible to the processor;
a program embodied in the non-transitory medium for
execution by the processor of the wireless mobile
communication device, wherein execution of the program by
the processor configures the wireless mobile communication
device to perform functions, including functions to:
wirelessly communicate with a wireless mobile
communication system via the transceiver;
automatically cause location information indicative of
locations at which the wireless mobile communication device is
present to be entered into a diary stored in a memory in
association with date information indicative of when the
wireless mobile communication device was present at each
location by:
receiving via the user interface device a location
setting information of a first calendared event from a user
of the wireless mobile communication device, the
location setting information including a first event
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Application 13/363,101
location of the first calendared event and a first specified
event date and a first specified event time of the first
calendared event;
repeatedly detecting location of the wireless
mobile communication device via the GPS receiver or
the transceiver;
detecting by the processor that the first calendared
event has actually taken place by determining that a
detected location of the wireless mobile communication
device is:
(i) at the first event location of the first
calendared event at the first specified event date
and at the first specified event time, and
(ii) remains in a vicinity of the first event
location for a pre-determined period of time;
only upon detecting that the first calendared event has
actually taken place by the processor determining that the
detected location of the wireless mobile communication device
is: (i) at the first event location of the first calendared event at
the first specified event date and at the first specified event
time, and (ii) remains in the vicinity of the first event location
for a pre-determined period of time, automatically causing the
location setting information of the first calendared event,
including the first event location, the first specified event date,
and the first specified event time, to be entered into the diary
stored in the memory; and
in response to automatically causing the location setting
information of the first calendared event be entered into the
diary only upon detecting that the first calendared event has
actually taken place, the processor causing a new location
information to be entered into the diary stored in the memory
each time the wireless mobile communication device travels a
pre-determined distance to a new location from the first event
location of the first calendared event and remains in the vicinity
of the new location for the pre-determined period of time.
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REFERENCES and REJECTIONS
Claims 1, 3, and 6-21 stand rejected under 35 U.S.C. § 101 as not
being directed to patent-eligible subject matter. See Final Act. 2--4.
Claims 1, 3, 6, 7, 11, 12, 15, and 16 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Jackson et al. (US 6,792,427 B2; issued Sept.
14, 2004) (Jackson), Brown et al. (US 2002/0165910 Al, issued Nov. 7,
2002) (Brown), and Drucker et al. (US 2009/0232289 Al; published Sept.
17, 2009) (Drucker). See Final Act. 4---6.
Claims 8-10, 13, 14, 17, 20, and 21 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Jackson, Brown, Drucker, and Smith et al.
(US 2012/0124125 Al, issued May 17, 2012) (Smith). See Final Act. 6-7.
Claim 18 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackson, Brown, Drucker, and Borenstein et al. (US 2008/0276179 Al,
issued Nov. 6, 2008) (Borenstein). See Final Act. 7-8.
Claim 19 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackson, Brown, Drucker, Borenstein, and Jung et al. (US
2006/0023722 Al, issued Feb. 2, 2006) (Jung). See Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent-
eligible subject matter. We, however, are not persuaded the Examiner erred
in rejecting the claims under 35 U.S.C. § I03(a) as obvious over the cited
references, and we adopt as our own the findings and reasons set forth by the
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Examiner. See Final Act. 2-8; Ans. 2-5. We highlight and address specific
findings and arguments for emphasis as follows.
Section 101 Rejection
Independent claim 1 recites a wireless mobile communication device
comprising a processor to "wirelessly communicate with a wireless mobile
communication system" and "automatically cause location information
indicative of locations at which the wireless mobile communication device is
present to be entered into a diary." The claim further requires "receiving ...
a location setting information of a first calendared event" and "repeatedly
detecting location of the wireless mobile communication device" as well as
determining that the device is at the event location and/or has remained in
that location and is, therefore, directed to one of the four statutory categories
of patentability enumerated by 35 U.S.C. § 101 (process, machine,
manufacture, or composition of matter). The Examiner finds claims 1, 3,
and 6-21 are
but
directed to detecting that a first calendared event has taken place by
determining that a detected location is at the first event location at the
first specified date and time and remains in a vicinity for a pre-
determined period of time which compares new and stored
information and uses rules to identify options and an abstract idea
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claims do
not recite an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment.
Final Act. 3. The Examiner explains that "the limitations of the current
claims are performed by the generically recited GPS-equipped wireless
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communication device (i.e., any GPS-quipped cell phone can perform the
claimed steps)." Final Act. 3--4.
Appellants contend the Examiner erred in finding claim 1 is not
directed to patent-eligible subject matter. See App. Br. 5-13. Appellants
argue that claim 1 recites "a wireless mobile communication device that
includes specifically recited physical components" and is therefore directed
to an article of manufacture or machine, which is not abstract. App. Br. 7.
Appellants assert, contrary to the Examiner's assertion and consistent with
DDR Holdings's determination that its claims are tailored toward computer
network technology, the claims in this appeal are not directed to an "abstract
idea." App. Br. 7-8 (citing DDR Holdings, LLC v. Hotels.Com, LP, 773
F.3d 1245, 1257 (Fed. Cir. 2014)).
With respect to the Examiner's discussion of the holding in
SmartGene, Appellants contend the non-precedential decision does not
encompass any subject matter similar to that of the appealed claims. App.
Br. 8. Appellants argue, even if the claims were considered to be directed to
an abstract idea, the recited elements "amount to significantly more than the
abstract idea." App. Br. 10. Appellants specifically assert the claimed
limitation of "the wireless mobile communication device" performs specific
functions of (1) "repeatedly detecting location of the wireless mobile
communication device via the GPS receiver or the transceiver" and (2) "only
upon detecting that the first calendared event has actually taken place,"
determining [by its processor] that the detected location of the
wireless mobile communication device is: (i) at the first event location
of the first calendared event at the first specified event date and at the
first specified event time, and (ii) remains in the vicinity of the first
event location for a pre-determined period of time, automatically
causing the location setting information of the first calendared event,
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including the first event location, the first specified event date, and the
first specified event time, to be entered into the diary stored in the
memory.
amounts to specific technological operations that are rooted in mobile device
technology. App. Br. 10-11 (first and second italics omitted).
We are persuaded by Appellants' arguments. The Supreme Court has
set forth "a framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts" (Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012))). According to this framework, a
determination is made to consider whether the claims at issue are directed to
one of those concepts (i.e., laws of nature, natural phenomena, and abstract
ideas). See Alice, 134 S. Ct. at 2355. If so, a further determination must be
made to consider the elements of each claim both individually and "as an
ordered combination" to determine whether the additional elements
"transform the nature of the claim" into a patent-eligible application. Id.
First, we review claim 1 to determine whether it is directed to a patent
ineligible concept, such as the "abstract idea" exception found by the
Examiner. See Final Act. 3. The claim is directed to a wireless mobile
communication device that includes additional elements, such as "a global
positioning system (GPS) receiver; a user interface device; a processor
coupled to the transceiver and the GPS receiver; [and] a non-transitory
medium accessible to the processor," which is programmed to perform the
specific functions outlined by Appellants. Claim 1. We find the recited
elements are not directed to an abstract idea, but merely recite elements of a
mobile communication device that perform certain steps used to manage
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event entries in a calendar and the information related to the user attending
those events.
Particularly, we are persuaded by Appellants' argument that, similar
to DDR Holdings, the appealed claims are "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer" technology, and that the claimed invention are not simply
using computers to serve a conventional business purpose (see DDR
Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Appellants' Specification describes limitations of the existing software
applications, such as "[a] software application for the Macintoshâ„¢ computer
called Chronories â„¢," with respect to logging certain activities without
sufficient details. See Spec. ,r,r 3--4. The appealed claims provide a more
comprehensive entry of calendar event by detecting a location of the
wireless mobile communication device with the GPS receiver and entering
the location setting information ( e.g., event location, event date, and event
time) into the diary stored in memory upon detecting that "the first
calendared event has actually taken place" and the detected location of the
device is: "(i) at the first event location of the first calendared event at the
first specified event date and at the first specified event time, and (ii)
remains in the vicinity of the first event location for a pre-determined period
of time" solves the problem of matching a calendar event to the users' actual
location and attendance and logging important events into the calendar.
Claim 1, see also App. Br. 10-11. This problem specifically arises in the
computer technology because existing software applications have limited
types of log entries, which results in missing important entries. See, e.g.,
Spec. ,r,r 3-5.
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Therefore, we are persuaded the Examiner erred in finding the claims
recite patent-ineligible subject matter. Accordingly, we do not sustain the
rejection of claims 1, 3, and 6-21 under 35 U.S.C. § 101.
Section 103 Rejection
Claim 1
The Examiner finds Jackson discloses the recited wireless
communication device, a GPS receiver, memory and processor for storing
the location information of claim 1 and further relies on Brown for
disclosing the steps of "entering location information" and "detecting that a
device is at the first event location and remains in a vicinity for a pre-
determined period of time or causing a new entry to be created each time the
device travels a predetermined distance to a new location and remains in the
vicinity for the predetermined period of time." Final Act. 4--5. The
Examiner specifically finds Brown teaches a personal information manager
(PIM) for scheduling meetings and events and creating user records based on
the user presence in an event. Final Act. 5 ( citing Brown ,r,r 26, 28, 30-32,
34, 43, 44). The Examiner relies on Drucker as disclosing the recited entry
when the calendar event is detected. Final Act. 5 ( citing Drucker ,r,r 20, 21 ).
The Examiner further finds it would have been obvious to one of ordinary
skill in the art to combine the teachings of Brown and Drucker with Jackson
for "a review of user location and activity within time interval along with
calendar and scheduled event information for the purpose of more optimally
allocating resources to accomplish business and personal goals" (Final Act.
5 ( citing Brown ,r 15) ), and "automating the billing of time in an accurate
manner" (Final Act. 5---6 (citing Drucker ,r 5)).
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Appellants argue the proposed combination does not teach or suggest
"detecting by the processor that the first calendared event has
actually taken place by determining that a detected location of
the wireless mobile communication device is: (i) at the first
event location of the first calendared event at the first specified
event date and at the first specified event time, and (ii) remains
in a vicinity of the first event location for a predetermined
period of time;" and "only upon detecting that the first
calendared event has actually taken place by the processor
determining that the detected location of the wireless mobile
communication device is: (i) at the first event location of the
first calendared event at the first specified event date and at the
first specified event time, and (ii) remains in the vicinity of the
first event location for a predetermined period of time,
automatically causing the location setting information of the
first calendared event, including the first event location, the first
specified event date, and the first specified event time, to be
entered into the diary stored in the memory."
App. Br. 13-14 (italics omitted).
With respect to Brown, Appellants cite to paragraph 43 and Figures 8
and 9b and contend Brown "always displays its filtered position records and
scheduled events in its graphical user interface (i.e., the alleged diary)
regardless of whether the scheduled events actually took place" without
comparing the user events with the actual location. App. Br. 15. Appellants
further argue paragraph 15 of Brown "does not disclose any processor-based
comparison between the scheduled events and the filtered position records
that are created from the measured position records." App. Br. 16.
Regarding Drucker, Appellants contend Drucker fails to cure the
deficiencies of Jackson and Brown and merely discloses "'when such events
occur, a prompt is displayed to the user to determine whether the event is a
billable event and what the billing information is. This improves billable
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time capture by capturing billable time information at the completion of a
calendar appointment."' App. Br. 17 ( citing Drucker ,r 20). Appellants
assert the proposed combination of Drucker's teaching in paragraph 48 with
Jackson and Brown "would capture Drucker 's 'billable time information' at
the completion of Brown's 'scheduled event' for display in Brown's
graphical user interfaces of Figures 8 and 9B so 'the user may compare
what was scheduled with what actually materialized' as described in
Brown," and not the disputed claim limitation outlined above. App. Br. 17.
We are not persuaded by Appellants' contentions that the Examiner
erred because the rejection is based on the combination of Jackson with
Brown and Drucker (see also Reply Br. 5---6). As explained by the Examiner
(Ans. 5), Appellants' contentions do not focus on passages relied upon in the
rejection. The Examiner points to paragraphs 43--45 of Brown as disclosing
position records based on specific time periods and the associated distance
data. Id. The Examiner correctly finds
With respect to the detection of events, at P[0014]: "the
position coordinates and time information may be processed to
determine whether a change in a series of position coordinates
indicates a pre-defined activity occurring during an activity
time period during which the position coordinates were
generated." At P[0015] a user can compare the actual activity
with scheduled events, thus the actual activity has been detected
by the processor and recorded such that a user can compare the
two. At P[0043], Brown discloses that the system filters the
position records to look for records indicating that the user was
at a same location for a minimum time. Thus creating a list of
records where a user was at a given location for a threshold
amount of time.
Id. In fact, Brown's system, as discussed above, provides for an "activity
algorithm" that analyzes the record and the rate of change in distance which,
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when displayed, enters the actual event and whether the user stayed for a
minimum amount of time in the calendar to be compared with the original
user entry. See Brown ,r 44.
We also agree with the Examiner that Brown was relied on for
disclosing the specific functionality of detecting the duration of the event
and whether the mobile device is at the event for a period of time, whereas
the recited processor and storing of the location information is taught by
Jackson. See id. Appellants' contentions focus on the references separately
and ignore the fact that the proposed rejection is based on the combination of
Jackson with Brown and Drucker (see App. Br. 14--18). Each reference
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Keller, 642 F.2d 413,425 (CCPA
1981) ("The test for obviousness is not ... that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art."); see also In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Furthermore, when combining Jackson with
Brown and Drucker, the combination would predictably yield no more than
one would expect from such a combination, such as detecting the presence
of th mobile device for a period of time while the event is taking place, as
recited. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the combination of Jackson
with Brown and Drucker teaches or suggests the disputed features of claim
1. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
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claim 1, as well as claims 3, 6, 7, 11, 12, 15, and 16 which are not argued
separately. See App. Br. 13.
Remaining Claims
Appellants contend the patentability of the remaining claims by
relying on their dependency from their base claim or asserting that Smith,
Borenstein, and Jung do not teach or suggest the above-discussed limitations
of claim 1 and therefore do not cure the deficiencies outlined for the
combination of Jackson with Brown and Drucker. App. Br. 18-19. The
Examiner has provided sufficient findings based on the teachings of the cited
prior art, which we agree with and adopt as our own. See Final Act. 7-8.
For similar reasons discussed above, we are not persuaded that the Examiner
erred in finding the disclosures of Smith, Borenstein, and Jung, in
combination with Jackson, Brown, and Drucker teach or suggest the recited
features of these claims. Accordingly, we sustain the Examiner's 35 U.S.C.
§ 103(a) rejections of claims 8-10, 13, 14, and 17-21.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, and 6-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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