Ex Parte Malden et al

Patent Trial and Appeal Board

Mar 31, 2015

10244137 (P.T.A.B. Mar. 31, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/244,137 09/12/2002 Matthew Scott Malden OIC0089US 5588
60975 7590 03/31/2015
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
DENNISON, JERRY B
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
03/31/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATTHEW SCOTT MALDEN,
DANIEL EDWARD ISRAEL, ROBERT BRENT PINKERTON,
ARUN ABICHANDANI, and HANG YEE WONG
1

________________

Appeal 2013-000243
Application 10/244,137
Technology Center 2400
________________

Before JASON V. MORGAN, BRUCE R. WINSOR, and
JOHN A. HUDALLA, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–5, 8, 9, 11, 12, 17, 18, and 30–34. Claims 2, 6, 7,
10, 13–16, and 19–29 are canceled. App. Br. 22, 24, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
Oracle Corporation is the real party in interest. App. Br. 2.
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2

Invention
Appellants invented “[a] facility for disseminating homeland security
information [that] identifies a mobile device used by an addressee of a
message containing homeland security information, and transmits this
message to the identified mobile device.” Abstract.
Exemplary Claims
Claims 1, 3, 5, and 32, reproduced below with key limitations
emphasized, are representative:
1. A computer-implemented method comprising:
receiving information;
determining whether the information comprises homeland
security information; and
if the information comprises homeland security information,
disseminating the information, wherein the disseminating
comprises
identifying the homeland security information and
accompanying instructions, wherein
the accompanying instructions are related to the
homeland security information,
the accompanying instructions identify actions to
be taken upon receipt of the homeland security
information, and
the accompanying instructions are configured to
be sent to a recipient along with the homeland
security information in a message,
identifying the recipient,
determining a recipient class of the recipient,
determining whether the recipient is authorized to receive
the message based on authorization information, wherein
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the authorization information is based on a level of
access assigned to the recipient class of the
recipient,
the level of access assigned to the recipient class is
defined by an organization,
the recipient belongs to the organization,
the level of access assigned to the recipient class is
assigned according to criteria specified by the
organization,
the criteria specified by the organization is based
on access information for the recipient class, and
the access information for the recipient class is
configured to define whether the recipient class is
authorized to receive the homeland security
information, and
if the recipient is authorized to receive the message,
identifying a mobile communication device of the
recipient, and
transmitting the message to the mobile
communication device, wherein the transmitting
comprises
asynchronously delivering the message to
the mobile communication device.
3. The method of claim 1, wherein
the accompanying instructions relate to a response to a threat to
homeland security, and
the information is configured to support biometric screening of
individuals.
5. The method of claim 1, wherein the accompanying
instructions relate to an investigation of a terrorism suspect.
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32. The method of claim 1, further comprising:
analyzing the information, wherein
the information is analyzed to determine the
accompanying instructions.
Rejections
The Examiner rejects claims 1, 3–5, 8, 9, 11, 12, 17, 18, 30, and 32–
34 under 35 U.S.C. § 103(a) as being unpatentable over McCall (US 2002/
0188522 A1; Dec. 12, 2002) and Aratow (US 2004/0008125 A1; Feb. 11,
2003). Ans. 3–10.
The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over McCall, Aratow, and Li (US 6,901,437 B1; May 31,
2005). Ans. 10–11.
ISSUES
1. Did the Examiner err in finding the combination of McCall and
Aratow teaches or suggests: (1) “identifying the homeland security
information and accompanying instructions” in received information; (2)
wherein “the accompanying instructions are configured to be sent to a
recipient along with the homeland security information in a message”; and
(3) “transmitting the message,” as recited in claim 1?
2. Did the Examiner err in finding the combination of McCall and
Aratow teaches or suggests wherein “the information is configured to
support biometric screening of individuals,” as recited in claim 3?
3. Did the Examiner err in finding the combination of McCall and
Aratow teaches or suggests “wherein the accompanying instructions relate to
an investigation of a terrorism suspect,” as recited in claim 5?
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4. Did the Examiner err in finding the combination of McCall and
Aratow teaches or suggests “the information is analyzed to determine the
accompanying instructions,” as recited in claim 32?
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the action from which this
appeal was taken. We have considered Appellants’ arguments, but do not
find them persuasive of error. We provide the following explanation
primarily for emphasis.
Claims 1, 4, 8, 11, 12, 17, 18, 30, 31, and 33
Appellants contend the Examiner erred in rejecting claim 1 because
the combination of McCall and Aratow fails to teach or suggest “the
identification and transmission of homeland security information and
accompanying instructions.” App. Br. 14. In the Examiner’s response
regarding claim 1, the Examiner correctly notes that most of claim 1—
including the disputed recitations regarding identification and transmission
of homeland security information and accompanying instructions—falls
within a conditional recitation. See Ans. 13. That is, the claimed
identification and transmission steps only occur “if the [received]
information comprises homeland security information” (claim 1; emphasis
added).
Appellants dispute the Examiner’s characterization of the disputed
steps as conditional, arguing “it is clear that the claim only reads on
situations in which the information received includes the claimed homeland
security information.” Reply Br. 16. However, we agree with the Examiner
that the disputed recitations are all conditional. See Ans. 13.
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Specifically, claim 1 recites determining whether received information
comprises homeland security information and, if the information comprises
homeland security information, disseminating the information in the manner
recited in the additional steps. In the broadest reasonable scenario, the
received information does not comprise homeland security information, in
which case the method is performed without the steps in the disputed
recitations. See Ex parte Katz, 2011 WL 514314, *4 (BPAI 2011) (non-
precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
Because the disputed recitations, in the broadest reasonable scenario,
need not be performed, we find no error in the Examiner’s reliance on the
combination of McCall and Aratow to teach or suggest the conditional
recitations of: (1) “identifying the homeland security information and
accompanying instructions” in received information; (2) wherein “the
accompanying instructions are configured to be sent to a recipient along with
the homeland security information in a message”; and (3) “transmitting the
message,” as recited in claim 1. Ans. 4–7, 13.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 4, 8, 11, 12, 17, 18, 30, and 33, which Appellants do
not argue separately. App. Br. 14, 16. Appellants make the same arguments
with respect to claim 31. App. Br. 19. Therefore, we also sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 31.
Claims 3, 9, and 34
In rejecting claim 3, the Examiner finds McCall’s captured sensor
data teaches or suggests wherein the information is configured to support
biometric screening of individuals. Ans. 7 (citing McCall ¶¶ 56–57).
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Appellants contend the Examiner erred because “McCall simply provide for
using sensor devices to collect event information.” App. Br. 16; see also
Reply Br. 18–19.
We do not find Appellants’ arguments persuasive. As the Examiner
correctly notes, the Specification “does not provide any specific detail
regarding the requirement for how information must be configured in order
to support biometric screening.” Ans. 15. Thus, we conclude a broad but
reasonable interpretation, in light of the Specification, of “information
configured to support biometric screening of individuals” encompasses any
biometric information of an individual. McCall’s sensor information
includes an individual’s status, including vital signs. McCall ¶ 57. Because
vital signs are a form of biometric information, we agree with the Examiner
the combination of McCall and Aratow teaches or suggests “the information
is configured to support biometric screening of individuals,” as recited in
claim 3. Ans. 7.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 3, and claims 9 and 34, which Appellants do not argue separately.
App. Br. 17.
Claim 5
With respect to the claim 5 recitation wherein the accompanying
instructions relate to an investigation of a terrorism suspect, Appellants
make arguments similar to Appellants’ arguments with respect to claim 1.
App. Br. 17–18. We find Appellants’ arguments unpersuasive for similar
reasons. In particular, claim 5 merely further characterizes the
accompanying instructions found in conditional steps of independent claim
1. Thus, claim 5 merely relates to steps that are not performed in the
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broadest reasonable scenario. Therefore, Appellants’ arguments do not
show error in the Examiner’s reliance on the combination of McCall and
Aratow to teach or suggest “wherein the accompanying instructions relate to
an investigation of a terrorism suspect,” as recited in claim 5. Ans. 7–8, 15–
16.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 5.
Claim 32
Appellants argue McCall’s analysis of raw data to generate event
information is insufficient to teach or suggest the information is analyzed to
determine the accompanying instructions, as recited in claim 32. App. Br.
18. However, the antecedent basis for accompanying instructions falls
within the conditional steps found in independent claim 1. Thus, we
conclude claim 32 merely introduces another conditional step that is not
performed in the broadest reasonable scenario. That is, if the information
does not comprise homeland security information, then the claim 32 step of
analyzing the information to determine the accompanying instructions does
not need to be performed. Therefore, Appellants do not show error in the
Examiner’s reliance on the combination of McCall and Aratow to teach or
suggest “the information is analyzed to determine the accompanying
instructions,” as recited in claim 32. Ans. 9.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 32.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–5, 8, 9, 11,
12, 17, 18, and 30–34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED