Ex Parte Gartner et al

Patent Trial and Appeal Board

Jun 29, 2018

13159189 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/159, 189 06/13/2011
48500 7590 07/03/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Jeff Gartner
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.
4366-536 1971
EXAMINER
SHERIF, FA TUMA G
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF GARTNER and RABAIL JAVED
Appeal 2017-011378
Application 13/159, 189
Technology Center 2600
Before DENISE M. POTHIER, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 11-13, 16-20, and 23-31, which
constitute all claims pending in this application. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b). Claims 1-10, 14, 15, 21, and 22
were canceled previously. We affirm.
CLAIMED SUBJECT MATTER
Appellants' invention is generally directed to systems and methods for
proximity-based content sharing and, more specifically, systems and
methods using Near Field Communication (NFC) and/or Bluetooth
interfaces to push active content between physically proximate devices.
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Spec. i-fi-13--4. Claims 11, 16, and 28 are independent claims. Claim 11 is
representative and reproduced below:
11. A method for pushing content with a device, comprising:
a near field communication (NFC) or Bluetooth interface
receiving a proximity signal from another device;
a processor executing a thin client determining if there is
content to push to the another device based on the device and the
another device being in spatial proximity for a conference or
meeting of a group of people;
if there is no content to push, ignoring the proximity
signal;
if there is content to push, the processor executing the thin
client creating a packet to be sent over either the NFC or
Bluetooth interface to the another device, wherein the packet
comprises an identifier for the conference or meeting of the
group of people;
the processor executing the thin client sending the packet
to either the NFC or Bluetooth interface; and
either the NFC or Bluetooth interface pushing the packet
to the other device.
REJECTIONS
Claims 11-13 and 24--31 stand rejected under 35 U.S.C. § 103 as
obvious in view of Sheynman (US 2009/0111378 Al; Apr. 30, 2009) and
Kim (US 2008/0176516 Al; July 4, 2008). Final Act. 6-11.
Claims 16, 17, and 20 stand rejected under 35 U.S.C. § 103 as obvious
in view of Sheynman and Zhu (US 2006/0148496 Al; July 6, 2006). Final
Act. 11-13.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103 as obvious in
view of Sheynman, Zhu, and Kim. Final Act. 13-14.
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Application 13/159,189
Claim 23 stands rejected under 35 U.S.C. § 103 as obvious in view of
Sheynman, Zhu, and Vishik (US 2007/0101413 Al; May 3, 2007). Final
Act. 15. 1
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived.
REJECTIONS OF CLAIMS 11-13, 16-20, AND 25-31
Appellants argue claims 11-13, 16-20, and 28 as a group. App.
Br. 11-12. We select claim 11 as representative of the group. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv). The Examiner finds Sheynman teaches or suggests nearly
every limitation recited in claims 11-13, 16-20, and 28. Final Act. 6-14.
The Examiner finds Kim and Zhu teach the remaining limitations in claims
11-13, 16-20, and 28 not otherwise taught by Sheynman, and the Examiner
provides a rationale for combining the cited teachings. Id. at 7 (citing Kim
iii! 17, 46, 67, Fig. 3), 8 (citing Kim iii! 46, 48--49, Fig. 3), 10 (citing Kim
iii! 17, 46, 67, Fig. 3), 13 (citing Zhu if 17, Fig. 3), 14 (citing Kim iii! 17, 46,
67, Fig. 3; Zhu if 17, Fig. 3). Appellants do not challenge the teachings of
Kim and Zhu with respect to claims 11-13, 16-20, and 28. App. Br. 11-12.
Of particular note, the Examiner finds Sheynman discloses sending a
packet from a content sender to a content receiver wherein the packet
includes a device ID "of the sender's NFC-compatible wireless device [that]
1 The Examiner has withdrawn the rejections based on 35 U.S.C. § 112
presented on pages 4 through 5 of the Final Action. Ans. 2.
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identifies the content sender information to the content receivers." Ans. 3
(citing Sheymnan i-f 56); see id. at 3 (quoting Sheymnan i-f 49 ("the device
record list may have a unique device ID ... that can identify the device")),
3--4 ("Sheynman teaches a NFC data/packet format includes an identifier"
(quoting Sheynman i-f 5 6) ). The Examiner finds this disclosure of sending a
device ID teaches or suggests "creating a packet ... wherein the packet
comprises an identifier for the conference or meeting of the group of
people." Final Act. 6-7 (citing Sheynman i-fi-128, 35, 41--42, 47, 49); Ans. 3-
5 (citing Sheynman i-fi-147, 49, 56).
The Examiner finds Sheynman creates a packet that includes the
sending device ID and sends the packet from the sending device to one or
more receiving devices, which teaches or suggests creating a packet
comprising an identifier and, because the device ID is necessary for the
conference, the device ID teaches or suggests "an identifier for the
conference or meeting of the group of people." Ans. 3, 5. More
specifically, the Examiner finds claim 11 does not recite that the identifier
identifies a conference or meeting, only that the recited identifier is "for the
conference or meeting," which encompasses "an identifier presented to a
conference or meeting of a group of people." Ans. 5.
Appellants argue Sheynman's device ID does not teach or suggest the
recited identifier because the "device ID does not identify a conference or
meeting of a group of people." App. Br. 11-12; Reply Br. 5---6. Appellants
and the Examiner do not appear to disagree on what Sheynman discloses,
but rather whether Sheynman's disclosure of a device ID teaches or suggests
"an identifier/or a conference or meeting of a group of people," as recited in
claim 11. Put another way, Appellants argue the word "for" in this clause
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requires that the identifier identifies the conference or meeting, whereas the
Examiner's construes the clause more broadly, such that the identifier
merely needs to be an identifier used in or relevant to the meeting or
conference. See App. Br. 11-12; Reply Br. 5---6; Ans. 3, 5.
We agree with Appellants that the broadest reasonable interpretation
of the recited "identifier for a conference or meeting," in light of the
Specification, is an identifier that identifies the meeting or conference.
Notwithstanding our disagreement with the Examiner's construction, we
agree with the Examiner's findings and ultimate conclusion of obviousness
because the recited "identifier for a conference or meeting of a group of
people" is non-functional descriptive material.
The Federal Circuit has "long held that if a limitation claims (a)
printed matter that (b) is not functionally or structurally related to the
physical substrate holding the printed matter, it does not lend any patentable
weight to the patentability analysis." In re Distefano, 808 F.3d 845, 848
(Fed. Cir. 2015). The informational content of non-functional descriptive
material is not entitled to weight in the patentability analysis. In re Lowry,
32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (holding informational content of
non-functional descriptive material is not entitled to patentable weight); see
Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential)
("[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process."); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Ex parte
Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative) ("[N]onfunctional
descriptive material cannot lend patentability to an invention that would
have otherwise been anticipated by the prior art."), ajf'd, 191 Fed. Appx. 959
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(Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative) ("Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious."), a.ff' d,
No. 06-1003 (Fed. Cir. 2006) (Rule 36); see also MPEP § 2111.05 (9th ed.,
August 2017) ("[W]here the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.").
In King Pharmaceuticals, the Federal Circuit extended the printed
matter non-functional descriptive material doctrine to a claimed method.
King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
("Although these 'printed matter' cases involved the addition of printed
matter ... to a known product, we see no principled reason for limiting their
reasoning to that specific factual context. See Ngai, 367 F.3d at 1338-
39; Gulack, 703 F.2d at 1385-87. Rather, we believe that the rationale
underlying these cases extends to the situation presented in this case,
wherein an instructional limitation is added to a method, as opposed to a
product, known in the art."). Thus, non-functional descriptive material does
not confer patentability to inventions that are otherwise either anticipated or
obvious over the prior art.
Here, the rationale underlying the above-discussed cases extends to
claim 11 's limitation of "an identifier for a conference or meeting of a group
of people." Concerning claim 11, there is no functional relationship between
the recited identifier and the substrate (i.e., the storage medium of the
packet) or any recited step. Rather, the identifier included in the packet is
only referenced in the creation of the packet, but the claim recites no
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particular details regarding creating the packet that would be affected by the
particular information in the identifier. Put another way, whether the
identifier identifies a meeting or a device does not change or affect the
manner in which the packet is created in claim 11. Accordingly, claim 11
does not distinguish over the cited prior art based on what the recited
identifier identifies-i.e., the informational content of the packet.
Appellants do not contest Sheynman teaches a packet including a
device ID. Because we do not give the particular content (i.e., the recited
"identifier for a conference or meeting of a group of people") patentable
weight, the fact that Sheynman's device ID does not identify the conference
or meeting is not fatal to the Examiner's conclusion of obviousness. For the
above reasons, we are not persuaded the Examiner erred in rejecting
representative claim 11 as obvious.
Claims 25-27 and 29-31 just further define the content of the
information in the recited identifier. 2 Accordingly, for the same reasons
discussed above, we determine the additional limitations recited in claims
25-27 and 29-31 are non-functional descriptive material and accorded no
patentable weight. See Lowry, 32 F.3d at 1583-84. For the above reasons,
we are not persuaded the Examiner erred in rejection claims 11-13, 16-20,
and 25-31under35 U.S.C. § 103.
2 We note that claims 25 and 29 (as well as claims 26, 27, 30, and 31 via
their ultimate dependency from claims 25 and 29) recite "the identifier ... is
an in-person meeting." We leave to the Examiner to determine whether such
a recitation of an identifier being a type of meeting is indefinite in light of
Appellants' disclosure.
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CLAIM23
Claim 23 depends directly from independent claim 16 and is rejected
based on Sheynman, Zhu, and Vishik. Claim 23 recites layering information
based on a trust relationship between parties "in order to manage document
versioning." The Examiner finds Zhu teaches managing document
versioning. Final Act. 15 (citing Zhu i-f 17); Ans. 9-10. In particular, the
Examiner finds Zhu's disclosure of screening emails to determine a subset of
recipients for whom the received email is displayed and subsequently
deleting or storing the emails teaches or suggests managing document
versioning. Ans. 9-10 (citing Zhu i-f 17).
Appellants argue Zhu's disclosure of refusing emails based on
comparing user IDs to a blacklist does not teach managing document
versioning. App. Br. 13. Appellants further assert Zhu's "documents are
not managed based on versions, but based on user IDs." Reply Br. 8.
Appellants do not address the Examiner's findings related to deleting and
storing the emails. See App. Br. 13; Reply Br. 8.
We look to Appellants' Specification to interpret the meaning of the
recited "manage document versioning." Appellants' Specification mentions
"document versioning" only once, stating:
Further, there may be an application that can locate one or more
documents, vCards, charts, spreadsheets, project management
graphs, etc. on a user's device that can be made available to one
or more other devices. Yet another module of the application
may layer a hierarchical structure that reveals information about
the materials or content, based on the trust relationship between
the parties. Thus, document versioning for different audience
members can be managed for users.
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Spec. i-f 7. Accordingly, Appellants' Specification appears to equate
document versioning to simply providing certain documents or information
to some users and not others "based on the trust relationship between the
parties." Id.
Similarly, Zhu compares the sender of a message to various lists (e.g.,
a "BlackList" a "Refusal-Text" list a "Set Sender" list a "PhoneBook" and
' ' ' '
a "Classification" list) to determine whether to display or delete a message,
which teaches or suggests "document versioning between the parties." See
Zhu i-f 17, cited in Final Act. 15. Here, Zhu at least suggests revealing the
content to a recipient based on the recipient's "trust relationship" with the
sender represented by the lists. See id. Therefore, we are not persuaded the
Examiner erred in finding Zhu's disclosure teaches or suggests the recited
managing "document versioning between the parties." See id.
CLAIM24
Claim 24 depends directly from independent claim 11 and is rejected
based on Sheynman and Kim. The Examiner finds Sheynman teaches or
suggests the additionally recited limitation in claim 24 that "the device is a
separate device that brokers messages between a plurality of separate
communication devices." Final Act. 8 (citing Sheynman i-fi-128, 64---65, 82,
Fig. 2); Ans. 5 (citing Sheynman i-fi-128, 82, Fig. 2). More specifically, the
Examiner finds Sheynman's disclosure of sending a message to multiple
devices (i.e., Sheynman's point to multi-point transmissions) teaches or
suggests a "device that brokers messages between a plurality of separate
communication devices" because the claim "does not exclude sending the
same message to different devices." Ans. 5-6.
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Appellants argue neither of Sheymnan's disclosed methods of sending
messages (i.e., point-to-point or point to multi-point) teach or suggest using
a broker because Sheynman does not disclose a broker between two other
devices. App. Br. 13-14; Reply Br. 8. Specifically, Appellants contend
Sheynman fails to teach sending a message from a first device to a second
device via a third device-i.e., Sheynman does not have a third device
intermediary/broker. Reply Br. 8.
Sheynman discloses sharing content between two or more devices
over a short-range wireless connection, wherein the content can be, for
example, calls, music, video, documents, and games. Sheynman i-f 28.
Figure 2 depicts an example wherein "first device 202 is in a two-way voice
call with a remote communication device (not shown) via a network 246."
Id. i-f 39. Sheynman further discloses:
When an application is active on the mobile communication
device, content relating to the application can be made available
to the user of the device. In the example of FIG. 2, voice
communication is transmitted via the network 246 to the device
202. With a "tap-to-configure" 243 between device 202 and
device 241, a short-range wireless connection between device
202 and 241 may be set up to share the voice communication.
Id. i-f 40. Accordingly, Sheynman's device 202 shares messages between the
remote communication device that is not shown but is connected to device
202 via network 246 and device 241 over the short-range wireless
connection between devices 202 and 241.
Because Sheynman discloses a device acting as a broker between two
separate devices, we are not persuaded the Examiner erred in rejecting claim
24 as obvious in view of Sheynman and Kim. Although the overall thrust of
our analysis of claim 24 is the same as the Examiner's reasoning, we have
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provided additional explanation not provided by the Examiner.
Accordingly, in the interest of giving Appellants a full and fair opportunity
to respond, we designate our affirmance of claim 24 a new ground of
rejection.
DECISION
We affirm the Examiner's decision to reject claims 11-13, 16-20, and
23-31under35 U.S.C. § 103 as obvious.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
We designate the affirmance of the rejection of claim 24 a new ground
of rejection within our authority under 37 C.F.R. § 41.50(b). Section
41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
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 prosecution 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 ....
37 C.F.R. § 41.50(b).
If Appellant elects to reopen prosecution before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l) and the prosecution does not result in
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allowance of the application, abandonment, or a second appeal limited to the
37 C.F.R. § 41.50(b) rejection, this case should be returned to the Patent
Trial and Appeal Board so a decision making the original affirmance final
can be entered. See the Manual of Patent Examining Procedure (MPEP) 3
§ 1214.0l(I).
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the time for filing a request for rehearing on the affirmance
or seeking court review runs from the date of the decision by the Board
making the original affirmance final. MPEP § 1214.0l(I).
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. § 41.50(b)
3 MPEP (9th ed., Rev. 08.2017, 2018), available at
https://www.uspto.gov/web/offices/pac/mpep/index.html.
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