Ex Parte Bridge et al

Patent Trial and Appeal Board

Jul 19, 2018

14954759 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/954,759 11/30/2015 Henry Bridge
91230 7590 07/23/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.3558 1046
EXAMINER
MIZRAHI, DIANE D
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY BRIDGE, FRANCIS LUU, and NATHAN BORROR
Appeal2018-000795
Application 14/954,759
Technology Center 2600
Before JOHN A. JEFFERY, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm and enter a new ground of rejection.
STATEMENT OF THE CASE
Appellants' invention shares location information during a
communication session. To this end, a computing device (1) receives a
request to provide location information associated with a first user, (2)
determines the first user's location, and (3) communicates that location to a
second user, where the location is displayed on a graphical user interface of
1 Appellants identify the real party in interest as Facebook, Inc. App. Br. 3.
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a mobile computing device associated with the second user. See generally
Abstract; Spec. ,r,r 2, 4---6. Claim 1 is illustrative:
1. A method comprising:
by a computing device, receiving a request to provide
location information associated with a first user;
by the computing device, determining a location of the
first user; and
by the computing device, communicating the location of
the first user to a second user,
wherein the location of the first user is displayed on a
graphical user interface of a mobile computing device associated
with the second user.
THE REJECTIONS
The Examiner rejected claims 1-20 on the ground of nonstatutory
double patenting as unpatentable over claims 1-24 of Henry et al. (U.S.
Patent 9,225,758 B2; Dec. 29, 2015) ("Henry"). Final Act. 10-12. 2
The Examiner rejected claims 1-5, 8-12, and 15-183 under 35 U.S.C.
§ I02(e) as anticipated by Sorden et al. (US 2013/0091452 Al; Apr. 11,
2 Throughout this opinion, we refer to (1) the Final Rejection mailed October
18, 2016 ("Final Act."); (2) the Appeal Brief filed June 22, 2017 ("App.
Br."); (3) the Examiner's Answer mailed August 28, 2017 ("Ans."); and
(4) the Reply Brief filed October 30, 2017 ("Reply Br.").
3 Although the Examiner's anticipation rejection includes dependent claims
19 and 20 and not claims 15-18, we nonetheless presume-as do Appellants
(App. Br. 5 n.1; Reply Br. 2 n.1 }-that this statement of the rejection is
erroneous because ( 1) claims 19 and 2 0 depend from independent claim 15,
(2) claims 15-18 are included in the body of the rejection, and (3) the
Examiner indicates that claims 19 and 20 contain allowable subject matter.
Compare Final Act. 4---6 with Final Act. 7. Accordingly, we present the
correct claim listing here and treat the Examiner's error in this regard as
harmless.
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2013; filed Nov. 28, 2012; provisional application 61/579,735 filed Dec. 23,
2011 and provisional application 61/684,415 filed Aug. 17, 2012)
("Sorden"). Final Act. 4--7.
THE DOUBLE-PATENTING REJECTION
Apart from indicating that a terminal disclaimer may be filed to
overcome the double-patenting rejection of claims 1-20, Appellants do not
contest that rejection. See App. Br. 5; Reply Br. 2. Accordingly, we
summarily sustain this rejection. See MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 1205.02 (9th ed. Rev. 08. 2017, Jan. 2018).
THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Sorden
discloses a computing device that (1) receives a request to provide location
information associated with a first user, (2) determines the first user's
location, and (3) communicates that location to a second user, where the
location is displayed on a graphical user interface of a mobile computing
device associated with the second user. Final Act. 4; Ans. 6-8. Although
the Examiner's rejection cites Sorden's paragraphs 38, 155, 159, 166, and
250 as anticipating the recited limitations, the Examiner nevertheless relies
principally on Sorden's geofence functionality in paragraphs 73 and 81 in
the Answer for anticipating the recited limitations. Compare Final Act. 4
with Ans. 6.
Appellants argue that not only does the Examiner's reliance on
Sorden's paragraphs 73 and 81 for the first time in the Answer effectively
enter a new ground of rejection requiring reopening prosecution to address
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that new ground, these disclosures in Sorden are not prior art to the present
application in any event. Reply Br. 2-3. Appellants add that the subject
matter of Sorden's paragraph 159 relied upon by the Examiner in the
rejection likewise does not qualify as prior art. App. Br. 8.
Appellants further contend that even if Sorden's relied-upon
disclosure was prior art to the present application, it still does not anticipate
the recited limitations because, among other things, Sorden uses the same
computing device to determine location and receive location-based services
and, therefore, does not teach sending a first user's location to another
device as claimed. App. Br. 9-10. Appellants add that Sorden's paragraph
81 does not determine a first user's location, but rather a certain location is
selected by a user who shares that location. Reply Br. 3.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Sorden discloses a computing device that (1) receives a request to
provide location information associated with a first user, (2) determines the
first user's location, and (3) communicates that location to a second user,
where the location is displayed on a graphical user interface of a mobile
computing device associated with the second user?
This issue turns on whether the relied-upon disclosure of Sorden
qualifies as prior art.
ANALYSIS
We begin by noting, as do Appellants (Reply Br. 2-3), that the
Examiner's findings articulated in the rejection differ markedly from those
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in the Answer. Notably, the Examiner's rejection cites Sorden's paragraphs
38, 155, 159, 166, and 250 as anticipating the recited limitations. Final Act.
4. In the Answer, however, the Examiner cites Sorden's geofence
functionality in paragraphs 73 and 81 for anticipating the recited limitations.
Ans. 6.
Despite this clear shift in the rejection's factual basis, Appellants'
contention that this shift necessitates reopening prosecution (Reply Br. 3) is
a petitionable-not appealable-matter and is, therefore, not before us. 4
Turning to the merits, we first note that the present application is a
continuation of U.S. Application 14/266,208, filed June 1, 2014, which is a
continuation of U.S. Application 13/598,191, filed August 29, 2012. Spec.
,r 1.
The Sorden reference is a U.S. application that published on April 11,
2013, but was filed on November 28, 2012 which is after the filing date of
the present application's grandparent' 191 application. Sorden, however, is
based on (1) U.S. Provisional Application 61/579,735, filed December 23,
2011, and (2) U.S. Provisional Application 61/684,415, filed August 17,
2012, both of which were filed before the '191 application's filing date. The
critical question, then, is whether the relied-upon subject matter in Sorden is
entitled to the date of either of its provisional applications, for if it is not,
then Sorden does not qualify as prior art because its utility application filing
4 See MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.");
see also MPEP § 1201 ("The Board will not ordinarily hear a question that
should be decided by the Director on petition .... ").
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date (November 28, 2012) is after that of the present application's
grandparent' 191 application (August 29, 2012).
Thus, it is crucial for the Examiner to show§ 112, first paragraph
support for the particular relied-upon subject matter in Sorden's published
application for that subject matter to qualify as prior art particularly where,
as here, Appellants contend that at least some of that relied-upon subject
matter does not qualify as prior art. See MPEP § 213 6. 03 (III); but see
Dynamic Drinkware, LLC v. Nat 'l Graphics, Inc., 800 F.3d 1375, 1380
(Fed. Cir. 2015) ("A reference patent is only entitled to claim the benefit of
the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, ,r 1. ") ( emphasis added) ( citing In re
Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also Dynamic Drinkware,
800 F.3d at 1382 ("A provisional application's effectiveness as prior art
depends on its written description support for the claims of the issued patent
of which it was a provisional.") ( emphasis added).
Here, the Examiner does not address Appellants' contention on page 8
of the Appeal Brief that at least Sorden's paragraph 159 that the Examiner
relies upon in the rejection does not qualify as prior art, let alone show the
requisite § 112, first paragraph support for that particular subject matter in
either of Sorden's provisional applications. Nor will we presume as much,
for we have no basis on this record for doing so. See Dynamic Drinkware,
800 F.3d at 1380 ("[B]ecause the PTO does not examine priority claims
unless necessary, the Board has no basis to presume that a reference patent is
necessarily entitled to the filing date of its provisional application.").
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Nor is this a case where the Examiner's factual findings show support
for relied-upon subject mater in Sorden's provisional applications to shift the
burden to Appellants to rebut those findings. The Board's precedential
decisionExparte Yamaguchi, 88 USPQ2d 1606 (BPAI Aug. 29, 2008) is
instructive in this regard. There, in relying on a cited U.S. patent's
provisional application to show that the cited patent (Narayanan) was prior
art, the Examiner found that both the cited patent and its provisional
application "clearly show[ ed] the same subject matter"-a factual finding.
Yamaguchi, 88 USPQ2d at 1613. By making this factual finding, the
Examiner then shifted the burden to Appellants to show why such a factual
finding was erroneous-a burden that they failed to meet. Id.
Rather, the Appellants in Yamaguchi merely alleged that the cited
patent's provisional application did not "identically track" the patent. Id.
Notably, the Yamaguchi panel held that this mere conclusory statement-
totally devoid of explanation or analysis-was unpersuasive of error in the
Examiner's factual findings pertaining to the cited patent and its underlying
provisional application. Id. at 1613-14.
But here, the Examiner did not address Appellants' assertion that
Sorden's paragraph 159 does not qualify as prior art on page 8 of the Appeal
Brief, let alone provide the requisite factual findings in that regard to shift
the burden to Appellants to rebut those findings as in Yamaguchi. By
remaining silent in this regard, the Examiner never shifted the burden and,
consequently, it remained with the Examiner.
For that reason alone, the Examiner's findings articulated in the
rejection that are based at least partly on Sorden's paragraph 159 (Final Act.
4) are problematic. Nevertheless, even assuming, without deciding, that
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Sorden's paragraph 159 qualifies as prior art (a finding that has not been
made on this record), we agree with Appellants that the Examiner's findings
articulated in the rejection (Final Act. 4), namely regarding Sorden's
paragraphs 38, 155, 159, 166, and 250, do not anticipate claim 1 's
limitations for the reasons indicated by Appellants. App. Br. 6-10.
But the Examiner's reliance on Sorden's geofence functionality in
paragraphs 73 and 81 on page 6 of the Answer is a much closer question.
Appellants' contention that the subject matter disclosed in Sorden's
paragraphs 73 and 81 is not prior art because neither provisional application
discloses that subject matter (Reply Br. 3) is unavailing. Notably, a
substantial portion of Sorden's paragraph 81 is strikingly similar to
paragraph 79 of the corresponding '415 provisional application, despite the
'415 provisional lacking the text of the published application's paragraph 81
on page 7 of that reference from line 9 to the end of that paragraph (i.e., the
text beginning with "For example, in a shopping area, ... "). The first ten
lines of Sorden's paragraph 73 are also strikingly similar to paragraph 71 of
the '415 provisional.
Turning to Sorden's paragraph 81, when a user of a wireless device 20
enters a geofenced area, the device receives various types of notifications
that a user entered a certain location. Accord '415 provisional ,r 79. In
another embodiment, a wireless device can receive an update when an
individual, vehicle, or other wireless device passes through certain
boundaries within a geofenced area. Sorden ,r 81; '415 provisional ,r 79.
Our emphasis underscores that one wireless device can receive
updates when another wireless device crosses a boundary within a
geofenced area. In this scenario, the location of a first user, namely the user
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whose wireless device crossed the geofence boundary, is communicated to a
second user's wireless device-a device that can display selected geofenced
areas on a graphical map interface. See Sorden ,r 81; '415 provisional ,r 79.
Similarly, Sorden's paragraph 87 also notes that a person or item can
have an identifier that can be read by a wireless device 20 allowing the user
to receive a notification that a person or item entered or left the geofenced
area. Sorden ,r 87; '415 provisional ,r 85.
Although Sorden strongly suggests communicating a first user's
particular geofence location to a second user, where the first user's location
is displayed on a graphical user interface of the second user's device, we
cannot say that Sorden necessarily discloses this particular functionality to
anticipate the recited limitations, particularly given the different
embodiments in paragraphs 81 and 87 from which different aspects are cited
above.
It is well settled that to anticipate under § 102, a prior-art reference
"must not only disclose all elements within the four comers of the document,
but must also disclose those elements arranged as in the claim." Net
Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
( citation and internal quotation marks omitted). Thus, the reference must
clearly and unequivocally disclose the claimed invention or direct those
skilled in the art to the invention without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference. In re Arkley, 455 F.2d 586, 587 (CCPA
1972).
Although Sorden's paragraph 81 and corresponding disclosure in
paragraph 79 of the '415 provisional discloses every recited element of
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claim 1, this functionality is nevertheless described in connection with
different embodiments in that paragraph. Consequently, we cannot say that
the functionality in Sorden's paragraph 81 necessarily discloses claim 1 's
limitations arranged as claimed. See Net Moneyin, 545 F.3d at 1369.
Therefore, we find the Examiner's anticipation rejection problematic
for that reason alone. But because Sorden's paragraphs 81 and 87 strongly
suggest the limitations of claim 1, the claim would have nevertheless been
obvious over that disclosure as noted in our new ground of rejection. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989)
("[T]he question under 35 USC§ 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.") (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)).
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1 ; (2) independent claims 9 and 15 which recite
commensurate limitations; and (3) dependent claims 2-5, 8, 10-12, and 16-
18 for similar reasons. Because this issue is dispositive regarding our
reversing the Examiner's rejection of these claims, we need not address
Appellants' other associated arguments.
NEW GROUND OF REJECTION
For the reasons noted above, we reject independent claims 1, 9, and
15 under 35 U.S.C. § 103 as obvious over Sorden. Claim 1 recites a
computing device that (1) receives a request to provide location information
associated with a first user, (2) determines the first user's location, and (3)
communicates that location to a second user, where the location is displayed
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on a graphical user interface of a mobile computing device associated with
the second user. Claims 9 and 15 recite commensurate limitations.
Sorden discloses a wireless device that can receive an update when an
individual, vehicle, or other wireless device passes through certain
boundaries within a geofenced area. Sorden ,r 81; '415 provisional ,r 79.
Our emphasis underscores that one wireless device can receive updates
when another wireless device crosses a boundary within a geofenced area.
In this scenario, the location of a first user, namely the user whose wireless
device crossed the geofence boundary, is communicated to a second user's
wireless device-a device that can display selected geofenced areas on a
graphical map interface. See Sorden ,r 81; '415 provisional ,r 79.
Although Sorden does not state explicitly that the first user's location
is displayed on a graphical user interface of the second user's device, such a
display would have nevertheless been obvious, particularly in view of
Sorden's graphical map interface that displays geofenced areas. See Sorden
,r,r 81, 96; '415 provisional ,r,r 79, 94. Such an enhancement uses prior art
elements predictably according to their established functions-an obvious
improvement. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Although we decline to reject every claim under our discretionary
authority under 3 7 C.F .R. § 41. 50(b ), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP §
1213.02 (9th ed. Rev. 08. 2017, Jan. 2018).
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CONCLUSION
The Examiner did not err in rejecting claims 1-24 on the ground of
nonstatutory double patenting.
The Examiner erred in rejecting claims 1-5, 8-12, and 15-18 under
§ 102.
We newly reject claims 1, 9, and 15 under§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1-20. Because the
rejection of each appealed claim is affirmed on at least one of the grounds
specified in the Office Action from which the appeal was taken, the
Examiner's decision to reject claims 1-20 is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
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designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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
37 C.F.R. § 4I.50(b)
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