Ex Parte Fitzgerald et al

Patent Trial and Appeal Board

Sep 11, 2018

13333392 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/333,392 12/21/2011
23619 7590 09/13/2018
Squire Patton Boggs (US) LLP
PHX-IP&T-SPB
8000 Towers Crescent Drive
14th Floor
Tysons Corner, VA 22182
FIRST NAMED INVENTOR
William Fitzgerald
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.
101908.00054 7166
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
PHXIPDOCKET@SquirePB.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM FITZGERALD, PETER BERMINGHAM,
FRANK HANNIGAN, and PAUL PRENDERGAST
Appeal 2018-002111
Application 13/333,392 1
Technology Center 2600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4, 6-33, and 35---65. Claims 3, 5, and 34 are
canceled. Final Act. 2; Am. App. Br. 5, 27. 2 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 Appellants identify the real party in interest as "YOUGETITBACK
LIMITED." Am. App. Br. 3.
2 Appellants filed an Appeal Brief on December 15, 2016 ("App. Br."). In
response to a Notification of Non-Compliant Appeal Brief mailed January
25, 2017, Appellants filed an Amended Appeal Brief on July 25, 2017
("Am. App. Br."). The Amended Appeal Brief twice states that claim 5 is
canceled. Am. App. Br. 1, 27; compare App. Br. 26 (claims appendix
presents claim 5 as pending). The Amended Appeal Brief also, in its claims
Appeal 2018-002111
Application 13/333,392
STATEMENT OF THE CASE
The present invention relates to a "method [ of] monitoring a mobile
user's equipment with respect to a rule" and "applying [a] consequence to
the mobile user equipment [based on whether] the rule is ... followed or
violated." Abst. Claim 1 is reproduced below ( disputed limitation in
italics).
1. A method, comprising:
selecting a rule from a plurality of rules, the rule to be applied to
incentivize a user of mobile user equipment to perform a desired
behavior in regards to use of the mobile user equipment;
monitoring, by a device, the mobile user equipment with respect
to the rule; and
applying, by the device, at least one consequence to the mobile
user equipment when the rule is at least one of followed or
violated,
wherein the at least one consequence comprises at least one of a
reward or a punishment, and wherein the at least one
consequence pertains to use of the mobile user equipment.
App. Br., Claims Appx., p. 27.
appendix, lists claim 5 as canceled and states "such cancellation was
previously admitted." Id. at 2 7. Though the Answer denotes claim 5 as
rejected (Ans. 2), Appellants' comments and the Examiner's lack of
response indicate claim 5 is canceled.
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Application 13/333,392
THE REJECTIONS
Claims 1, 2, 4, 6-17, 22, 24--31, 63, and 64 stand rejected under
35 U.S.C. § I02(b) as anticipated by Barnes (US 2005/0136949 Al; June 23,
2005). Final Act. 11-26; Ans. 2. 3
Claims 23, 32, 33, 35--48, 53---62, and 65 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Barnes. Final Act. 27--43; Ans. 2.
Claims 18-21 and 49-52 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnes and Dunko (US 2008/0004038 Al; Jan. 3, 2008).
Final Act. 43--48; Ans. 2.
ISSUES
1. Does Barnes teach a "consequence comprises ... a reward or a
punishment, and ... pertains to use of the mobile user equipment," as recited
by claim 1 ?
2. Does Barnes teach "the rule comprises [a] restriction [of]
distance from [the] reference point," which is "a place of employment," as
recited by claim 4 and claim 2, from which claim 4 depends?
3. Does Barnes teach "the rule [is a] usage limit [on] ... music
listening [or] video watching" and "the limit comprises ... an absolute
prohibition [or] a maximum usage per unit time," as recited by claim 7 and
claim 6, from which claim 7 depends?
4. Does Barnes teach "the rule ... [is] selected from ... usage
parameters," which "include ... a category of forbidden activity [or] a time
3 Though denoted by the Answer as being rejected, claim 5 is regarded
herein as being canceled. See fn. 2
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of day restriction," as recited by claim 8 and claim 6, from which claim 8
depends?
5. Does Barnes teach "the method is performed in one or more
servers," as recited by claim 23?
ANALYSIS
A. Issue I-Claims 1, 2, 6, 9-22, 24-33, and 35-65
We select claim 1 as illustrative of claims 2, 6, 9-22, 24--33, and 35-
65. That is, we select claim 1 as illustrative of all but claims 4, 7, 8, and 23,
which depend from claim 1 and are argued separately as reciting additional
patentable elements. Each of claims 2, 6, 9-22, 24--33, and 35---65 is argued
to be patentable either for the reasons asserted with regard to claim 1 or
because of dependency.
Turning to claim 1, the disputed limitation is: "the ... consequence
comprises ... a reward or a punishment, and ... pertains to use of the
mobile user equipment." Appellants argue Barnes does not apply a
"consequence" when a rule is followed or violated but rather "deals only
with restrictions and not with punishments, or rewards for desired use of a
mobile device" (Am. App. Br. 13) and thus lacks "incentivizing of the user
to perform a desired behavior" (Reply Br. 3). See also Am. App. Br. 14.
We are unpersuaded for each of two reasons.
First, as the Examiner finds, Barnes' s "restriction carries in itself a
punishment ... in that the person is no longer able to use the functions of the
mobile device as he/she pleases." Ans. 3. A user of Barnes' mobile device
is, as such, incentivized to perform behaviors that either remove or do not
impose restrictions. See, e.g., Barnes ,r 303.
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Even if we found that Barnes does not disclose incentivizing, we
agree with the Examiner that "to incentivize a user of [the] mobile user
equipment to perform a desired behavior" is an intended result of the
claimed application of a consequence when a rule is violated, not a step of
the claimed method. Final Act. 2-3; see also Minton v. National Ass 'n of
Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("[T]he
'traded efficiently' phrase ... simply expresses the intended result of a
process step positively recited. . . . [It] does not inform the mechanics of
how the trade is executed."). (Citation omitted.). The claim thus requires
only that the rule be capable of incentivizing a user when a consequence is
applied. See Vizio, Inc. v. Int'! Trade Comm 'n, 605 F.3d 1330, 1340 (Fed.
Cir. 2010) (The recitation of a "channel map suitable for use in identifying"
required the claimed method to be "capable of using the channel map
information to identify the desired program."). Appellants do not refute that
restrictions are capable of incentivizing behavior.
For the foregoing reasons, we sustain the rejections of claims 1, 2, 6,
9-22, 24--33, and 35---65.
B. Issue 2-Claim 4
Claim 4 depends from claim 2, which depends from claim 1.
Claims 2 recites "wherein the rule comprises at least one restriction selected
from the following: ... distance from reference point," and claim 4 recites
"wherein the reference point comprises at least one of ... a place of
employment." Appellants argue Barnes does not restrict the mobile device's
distance from a place of employment. Reply Br. 3; Am. App. Br. 15-16.
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Appellants add that Barnes does not "disclose [any] distance to a place of
employment." Am. App. Br. 16. We are unpersuaded.
As the Examiner finds, Barnes teaches monitoring an employee's
whereabouts by determining the mobile device's longitude-latitude and
transmitting "a location notification ... to a remote destination if the user
enters a restricted location." Final Act. 41 (quoting Barnes ,r 299). Barnes
therefore teaches determining if the device breaches a threshold distance
from a restricted longitude-latitude. See Barnes ,r 299 ("if the user enters a
restricted location").
For the foregoing reasons, we sustain the rejection of claim 4.
C. Issue 3-Claim 7
Claim 7 depends from claim 6, which depends from claim 1.
Claims 6 and 7, in their disputed parts, respectively recite "wherein the rule
[ is a] usage limit [on] ... music listening [or] video watching" and "the limit
comprises ... an absolute prohibition [or] a maximum usage per unit time."
Appellants argue Barnes does not teach an absolute prohibition or maximum
usage per unit time because the restrictions "are conditional, not absolute"
and "cumulative[,] not a usage per time measure." Reply Br. 4; see also
Am. App. Br. 12-13. We are unpersuaded.
As the Examiner finds, Barnes teaches restricting services based upon
reaching a usage limit. Ans. 12-13 (citing Barnes ,r 298). Barnes teaches,
for example, that "[ t ]he restrictions ( or limitations) may be based on various
characteristics of the communication such as ... the cumulative[] duration
of communications (e.g., per day)." Barnes ,r 298. Appellants assert,
without explanation, that Barnes' s teaching of a cumulative duration does
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not disclose the claimed "absolute prohibition," "maximum usage per unit
time," or "minimum usage per unit time." We disagree. We discern no
error in the Examiner's interpretation of Barnes as imposing restrictions
based upon a cumulative duration of communications (e.g., per day}-i.e., a
maximum usage per day-as teaching at least the recited "maximum usage
per unit time."
For the foregoing reasons, we sustain the rejection of claim 7.
D. Issue 4-Claim 8
Claim 8 depends from claim 6, which depends from claim 1.
Claims 6 and 8, in their disputed parts, respectively recite "the rule ... [is]
selected from ... usage parameters," which "include ... a category of
forbidden activity [or] a time of day restriction." Appellants argue Barnes
does not forbid activities by website, category, or time of day.
Am. App. Br. 17-18. We are unpersuaded.
As the Examiner finds, Barnes' s mobile device can restrict a "type of
communication ( . .. SMS, email, ... )," such that categories of activities
(e.g., texting) can be forbidden (e.g., by a parent). Ans. 14 (citing Barnes
,r 298). The device can also restrict a communication by "when [it] is
initiated" (Barnes ,r 298). Ans. 14. Appellants present no reason, and none
is apparent, why the claimed category of forbidden activity is not taught by
Barnes' s restricting a type of communication, such as texting, and why the
claimed time-of-day restriction is not taught by Barnes' s restricting when a
communication is initiated.
For the foregoing reasons, we sustain the rejection of claim 8.
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E. Issue 5-Claim 23
Claim 23 depends from claim 1 and recites "wherein the method is
performed in one or more servers." Appellants argue that, though Barnes'
mobile device transmits data to a remote system for storage, Barnes "makes
it clear that ... the device is the only thing performing any tasks disclosed."
Am. App. Br. 19-20 (citing Barnes ,r 304). We are unpersuaded.
As the Examiner finds, Barnes' mobile device cooperates with a
server. Ans. 16 ( citing Barnes ,r,r 307---08, 330-31 ). For example, the device
"periodically ... transmits information[,] such as the user's destination, ...
for further processing and/or review." Barnes ,r 307; see also id. ,r 308
("device information is provided to the requesting remote computer
system."). The Examiner reasonably infers that this data is evaluated by a
server to implement the restrictions.
For the foregoing reasons, we sustain the rejection of claim 23.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 6-33, and
35---65.
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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