12228873 (P.T.A.B. Nov. 12, 2014)

Ex Parte Cohen et al

Patent Trial and Appeal BoardNov 12, 2014

12228873 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALEXANDER J. COHEN, EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, WILLIAM H. MANGIONE-SMITH, JOHN D. RINALDO JR., and CLARENCE T. TEGREENE ____________________ Appeal 2012-006619 Application 12/228,873 Technology Center 2400 ____________________ Before JASON V. MORGAN, MICHAEL J. STRAUSS, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006619 Application 12/228,873 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 52–61, 63–102, and 106–108. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. SUMMARY OF THE INVENTION The claims are directed to system and method for transmitting illusory and non-illusory identification characteristics from a first user to a second user. Claim 65, reproduced below, is illustrative of the claimed subject matter: 65. A system, comprising: means for receiving one or more requests from a first user to associate one or more illusory user identification characteristics with the first user; means for transmitting one or more illusory user identification characteristics associated with the first user to a second user; and means for transmitting one or more non-illusory user identification characteristics associated with the first user to the second user, wherein the means for transmitting one or more non-illusory user identification characteristics associated with the first user to the second user comprises: means for transmitting one or more non-illusory user identification characteristics associated with the first user to the second user in a context dependent manner, wherein the means for transmitting one or more non- illusory user identification characteristics associated with the first user to the second user in a context dependent manner comprises: means for transmitting one or more non-illusory user identification characteristics associated with the first Appeal 2012-006619 Application 12/228,873 3 user to the second user in a manner dependent upon one or more locations of one or more identified devices associated with the second user. REJECTIONS 1. Claims 1, 52, 55, 57–61, 63–66, 69, 70, 101, 102, and 106–108 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank1 and Ilcisin.2 2. Claims 53, 54, and 56 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank, Ilcisin, and Eida.3 3. Claims 67 and 68 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank, Ilcisin, and Harris.4 4. Claims 71–74, 80, 81, 87, 88, 94, and 95 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank, Ilcisin, and Engstrom.5 5. Claims 75–78, 82–85, 89–92, and 96–99 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank, Ilcisin, Engstrom, and Meyer.6 6. Claims 79, 86, 93, and 100 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frank, Ilcisin, Engstrom, and Homer.7 1 U.S. Pat. Publ. No. 2007/0264974 A1, published Nov. 15, 2007. 2 U.S. Pat. Publ. No. 2002/0044067 A1, published Apr. 18, 2002. 3 U.S. Pat. Publ. No. 2004/0162904 A1, published Aug. 19, 2004. 4 U.S. Pat. No. 7,327,312 B1, issued Feb. 5, 2008. 5 U.S. Pat. No. 7,334,267 B2, issued Feb. 19, 2008. 6 U.S. Pat. Publ. No. 2004/0178880 A1, published Sept. 16, 2004. 7 U.S. Pat. Publ. No. 2006/0005023 A1, published Jan. 5, 2006. Appeal 2012-006619 Application 12/228,873 4 ISSUES A. Whether the combination of Frank and Ilcisin teaches or suggests transmitting one or more non-illusory user identification characteristics associated with a first user to a second user in a manner dependent upon one or more locations of one or more identified devices associated with the second user. B. Whether there is an articulated reason having a rational underpinning to combine Frank and Ilcisin. C. Whether the combination of Frank and Ilcisin renders Frank inoperable for its intended purpose. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We are not persuaded by Appellants’ arguments, and sustain the Examiner’s rejections for the reasons noted below. A. Whether the combination of Frank and Ilcisin teaches or suggests transmitting one or more non-illusory user identification characteristics associated with a first user to a second user in a manner dependent upon one or more locations of one or more identified devices associated with the second user. Appellants argue the Examiner erred in rejecting claim 65 because “no broadest reasonable claim interpretation” explains how Frank and Ilcisin can be mapped to the “means for transmitting one or more non-illusory user identification characteristics” limitation, and “because the expressed recitations of Independent [c]laim 65 do not at least facially appear in the expressly cited evidence of the Examiner.” App. Br. 23. We are not persuaded by Appellants’ arguments. Appeal 2012-006619 Application 12/228,873 5 The Examiner finds Frank teaches transmitting a first user’s location to a second user in a context dependent manner, for example, based on the first user’s location or the time of day. Ans. 10 (citing Frank ¶¶ 117, 123, Fig. 23). The Examiner also finds Ilcisin teaches sending information from a first user to a second user in a context dependent manner, for example, based on the location of the second user and a timing parameter. Id. (citing Ilcisin Abstract). Consequently, the Examiner finds a person of ordinary skill in the art at the time of Appellants’ invention would have been motivated and found it obvious to modify Frank, whose goal is to control the release of privacy information, by including the location of the second user as a condition under which the first user’s location information can be released to the second user. Id. at 11. We agree with and adopt the Examiner’s findings and conclusions as our own. We find unpersuasive Appellants’ contention that the disputed limitations of claim 65 do not facially appear in the evidence cited by the Examiner. App. Br. 23. In particular, we find the Examiner has provided a thorough, reasoned, and persuasive mapping between the teachings of Frank and Ilcisin and the limitations recited in claim 65. Ans. 8–11, 37–43. We likewise find unpersuasive Appellants’ contention that no broadest reasonable interpretation, in light of the Specification, of the recitation of transmitting one or more non-illusory user identification characteristics dependent upon one or more locations of one or more identified devices associated with a second user could explain the Examiner’s rejection of claim 65. App. Br. 23. The Examiner correctly found Frank’s sending of user location information teaches or suggests transmitting “non-illusory identification characteristics.” Ans. 9–10 (citing Appeal 2012-006619 Application 12/228,873 6 Frank Fig. 23, ¶¶ 117, 123). This interpretation is consistent with Appellants’ Specification, which identifies user location as a non-illusory identification characteristic. Spec. ¶ 13. The Examiner also correctly found that Ilcisin’s transmitting particular messages to a taxicab based on the taxicab’s location teaches or suggests the transmission of a particular message (e.g., a non-illusory message, as taught or suggested by Frank) in a manner dependent upon one or more locations of one or more identified devices associated with a second user. Ans. 39–40 (citing, e.g. Ilcisin ¶¶ 6 and 23). B. Whether there is an articulated reason having a rational underpinning to combine Frank and Ilcisin. Appellants next argue the Examiner erred in rejecting claim 65 because there is no motivation to combine Frank and Ilcisin. App Br. 32– 37. In particular, Appellants argue that (1) the Examiner’s finding that it would have been obvious to modify Frank in view of Ilcisin is entirely conclusory, and motivated by hindsight, id. at 33, (2) a person of ordinary skill in the art would not have been motivated to combine Frank and Ilcisin because the targeted advertising concepts taught by Ilcisin are already disclosed in Frank, id. at 35, and (3) the combination of Ilcisin and Frank would not work for its intended purpose. Id. at 36–37. We are not persuaded by Appellants’ arguments. Appellants first argue the Examiner’s motivation to combine analysis is flawed because it is based on conclusory statements and hindsight. App. Br. 33. The Examiner finds the motivation to combine Frank and Ilcisin is to “further enhanc[e] the privacy control of location information of Frank.” Appeal 2012-006619 Application 12/228,873 7 Ans. 11. In support of this finding, the Examiner cites solely to teachings in Frank and Ilcisin. Ans. 9–10, 38–41. Moreover, the Examiner finds that since the teachings of Frank and Ilcisin are “substantially similar to each other (i.e. transmitting customized message(s) to another party based on a set of parameters set by [first] user),” Ans. 50 (emphasis omitted), it would have been obvious to combine them because “the substitution of one known element (transmitting customized message(s) based on location of identified device associated with second user as shown in Ilcisin) for another (transmitting customized message(s) based [on] date and time of the day as shown in Frank) . . . would have yielded predictable results” id.. We agree with and adopt the Examiner’s obvious analysis as our own. The Examiner’s analysis was based solely on the teachings of Frank, Ilcisin, and knowledge generally available to a person of ordinary skill in the art at the time of Appellants’ invention and we find no error in the Examiner’s analysis. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants next argue against the combination of Frank and Ilcisin because they both teach the same targeted advertising concepts. App. Br. 35. We agree that Frank and Ilcisin teach the same targeted advertising concepts. However, this fact alone does not lead us to conclude that the Examiner’s motivation to combine analysis is flawed. Appellants have not directed us to any authority, nor are we aware of any authority, holding it is improper to combine two references that share a common teaching by relying on one of the references for the common teaching and the other reference for a different teaching. If anything, we find the fact that both Ilcisin and Frank teach sending targeted advertisements to a second user based on the second user’s location suggests the Examiner could have Appeal 2012-006619 Application 12/228,873 8 rejected claim 65 based solely on the teachings of Frank. The fact that the Examiner chose, instead, to reject claim 65 based on the combined teachings of Frank and Ilcisin neither increases nor decreases the merits of the Examiner’s rejection or the motivation to combine the relevant teachings. Appellants next argue against the motivation to combine by alleging the combination would not work for its intended purpose. App. Br. 36–37. In particular, Appellants argue that by sending the first user’s location to the second user (as taught by Frank) based on the second user’s location (as taught by Ilcisin), “the privacy of the first user of Frank would not be enhanced as alleged by the Examiner but, would in fact, be compromised.” Id. (emphasis omitted). We are not persuaded by Appellants’ argument. Contrary to Appellants’ contention, Frank’s intended purpose is not to absolutely prevent the dissemination of location information. Rather, it is to control the dissemination of location information. See Frank ¶ 8 (“Embodiments of the present disclosure provide systems and methods of implementing privacy control of location information.”). This purpose is not undermined by using the location of the second user to provide such control. Therefore, we agree with the Examiner’s articulated reasons for combining Frank and Ilcisin, which we find have a rational underpinning. See Ans. 11, 49–50. C. Whether the combination of Frank and Ilcisin renders Frank inoperable for its intended purpose. Finally, Appellants argue the combination of Frank and Ilcisin would render Frank inoperable for its intended purpose. App Br. 37–45. In doing so, Appellants argue an essential feature of Frank’s system is releasing the Appeal 2012-006619 Application 12/228,873 9 first user’s location or pseudo-location information based on the first user’s current location. App. Br. 39, 42. Consequently, Appellants argue, modifying Frank to release the first user’s location based on the second user’s location would “fundamentally change the principle of operation of the Frank system.” Id. at 40. We are not persuaded by Appellants’ arguments. Frank teaches controlling the dissemination of user location via a user profile that “specifies conditions under which location information is blocked for [the] user. These conditions can include such parameters as the recipient of the transmission, the time of day, and the location of the user . . . .” Frank ¶ 117 (emphasis added). By using the permissive, can, Frank teaches the dissemination of user location can be controlled via conditions other than or in addition to those explicitly delineated. Indeed, Frank explicitly teaches that “[t]he rules on providing location information could vary based on one or more of the following as well as possibly other additional factors . . . .” Frank ¶ 105 (emphasis added). Thus, we agree with the Examiner that “the principle of operation of Frank is not based on any particular parameter such as location of the first user as alleged by the Appellant but can be based on other parameters.” Ans. 55. For example, Frank teaches an embodiment in which “the [first] user has specified a particular party that can receive his or her non-illusory identification characteristic.” Id. at 57 (citing Frank ¶¶ 105–106). We also agree with the Examiner that Frank teaches “allow[ing] the [first] user to modify these parameters such as edit, establish, enable and disable these parameters (see paragraph [0117]).” Ans. 55. Consequently, we agree with the Examiner that substantial reconstruction or redesign of Frank would not Appeal 2012-006619 Application 12/228,873 10 be required to “simply includ[e] one more parameter, such as location of the second user (i.e., another party/recipient) in [Frank’s] set of parameters” to control the dissemination of the first user’s location information. Id. In view of the above, we are not persuaded by Appellants’ argument that Frank would not work for its intended purpose if Frank’s first user profile was edited to include Ilcisin’s second user location as a parameter to control the dissemination of the first user’s location. As noted above, Frank teaches disclosing the first user’s location to the second user based on one or more of the parameters in the first user’s profile, which can include the location of the first user, the identity of the second user, the time of day and other additional factors. Frank ¶¶ 105, 117. Thus, Frank is designed and operable to disclose the first user’s location based only on the first user’s location (e.g., when the first user is at work), based only on the second user’s location (e.g., when the second user is in town), based on both the first and second user’s location (e.g., when the first user is at work and the second user is in town), or based on any one of or any combination of two or more of the parameters specified in the first user’s profile. CONCLUSIONS In view of the above, we conclude the Examiner did not err in finding: A. The combination of Frank and Ilcisin teaches or suggests transmitting one or more non-illusory user identification characteristics associated with a first user to a second user in a manner dependent upon one or more locations of one or more identified devices associated with the second user. B. A person of ordinary skill in the art at the time of Appellants’ invention would have been motivated to combine Frank and Ilcisin. Appeal 2012-006619 Application 12/228,873 11 C. The combination of Frank and Ilcisin does not render Frank inoperable for its intended purpose. DECISION For the reasons discussed above, the Examiner’s rejection of claims 1, 52–61, 63–102, and 106–108 is affirmed.8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED msc 8 Appellants do not separately argue for the patentability of claims 1, 52–61, 63, 64, 66–102 or 106–108. See, App. Br. 45–49. Consequently, we affirm the Examiner’s rejection of these claims for the same reasons we affirm the Examiner’s rejection of claim 65.