Ex Parte Mears

Patent Trial and Appeal Board

Apr 25, 2017

12452025 (P.T.A.B. Apr. 25, 2017)

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.
12/452,025 12/11/2009 Mark Gilmore Mears PU060224 1987
24498 7590 04/27/2017
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
uspto@technicolor.com
pat. verlangieri @ technicolor.com
russell. smith @ technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GILMORE MEARS
Appeal 2016-008597
Application 12/452,025
Technology Center 2600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—3, 5, 7—9, 11, 12, 14, and 19—31, i.e., all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to the automatic
entry of contact information for a mobile communication device.” Spec.
1 Appellant identifies the real party in interest as Thomson Licensing S.A.
App. Br. 3.
Appeal 2016-008597
Application 12/452,025
11.2 The Specification explains that a “method for entering contact
information into a mobile computing device using location sensing of the
mobile device” includes an “auto-fill mode,” and “[o]nce the location of the
device is determined, the user is provided with one or more possible contacts
based on the mobile device’s location coordinates,” thus permitting the user
to “select from the list and save the selected contact, or [the user] may
request any one of several options.” Abstract.
Exemplary Claim
1. A method for entering contact information into a mobile
computing device comprising:
selecting an auto fill mode of operation for the mobile
device;
determining a location of the mobile device;
transmitting location information to a database for
matching the mobile device location to information relating to
at least one contact from a database corresponding to the device
location;
receiving the information relating to at least one contact
possibility to the mobile device;
requesting user action in response to the information
relating to the at least one contact possibility received at the
mobile device when multiple contact possibilities are received
for said location;
displaying a list of multiple contact possibilities
corresponding to said location of the user when more than one
contact possibility exists for said location;
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 11, 2009; “Final Act.” for the Final Office
Action, mailed October 8, 2015; “App. Br.” for the Appeal Brief, filed
January 11, 2016; “Ans.” for the Examiner’s Answer, mailed July 28, 2016;
and “Reply Br.” for the Reply Brief, filed September 12, 2016.
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Application 12/452,025
requesting user input to select one or none of the multiple
contact possibilities for assignment for said location, wherein in
response to said input, a selected contact possibility is saved to
memory so that said selected contact is associated with said
location and said selected contact will be retrieved when said
device determines said location again;
submitting said selected contact information to a second
database as a search query; and
receiving additional information as a supplement to said
contact information from said second database as a result of
said search query.
App. Br. 25—26 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
US 2008/0134088 A1 June 5, 2008
US 2008/0261568 A1 Oct. 23, 2008
US 8,566,227 B2 Oct. 22,2013
(filed Oct. 27, 2006)
The Rejections on Appeal
Claims 1—3, 5, 7—9, 11, 12, 14, 19, 20, and 22—30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Tse and Lopez. Final Act. 2—6.
Claims 21 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tse, Lopez, and Carroll. Final Act. 6—7.
ANALYSIS
We have reviewed the rejections of claims 1—3, 5, 7—9, 11, 12, 14, and
19—31 in light of Appellant’s arguments that the Examiner erred. For the
reasons explained below, we disagree with Appellant’s assertions regarding
error by the Examiner. We adopt the Examiner’s findings in the Final
Tse et al.
(“Tse”)
Lopez et al.
(“Lopez”)
Carroll et al.
(“Carroll”)
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Application 12/452,025
Office Action (Final Act. 2—8) and the Answer (Ans. 2—5). We add the
following to address and emphasize specific findings and arguments.
The Rejection of Claims 1—3, 5, 7—9, 11, 12,
14, 19, 20, and 22—30 Under 35 U.S.C. § 103(a)
“Contact Is Associated with Said Location” and
“Retrieved when Said Device Determines Said Location Again”
Appellant argues that the Examiner erred in rejecting independent
claim 1 because Tse does not disclose or suggest “that said selected contact
is associated with said location and said selected contact will be retrieved
when said device determines said location again,” as recited in claim 1.
App. Br. 15—16. In particular, Appellant contends that “the teachings of Tse
are completely silent on this claimed concept of associating the location with
the contact and retrieving the saved selected contact information when the
device determines said location again.” Id. at 16. Appellant also contends
that “Tse does not discuss the association of the contact with the determined
location beyond using that information to obtain the contact information.”
Id.', Reply Br. 7.
Appellant’s contentions do not persuade us of Examiner error. The
Examiner finds that Tse teaches location-based searches for contact
information (e.g., restaurants), saving the results of a location-based as a
contact, and later using a contact resulting from a location-based search.
Ans. 2—3 (citing Tse 33—34, 50, 51, 53, 70, 83, 89-90, Abstract, Figs. 6—
13); see Final Act. 3^4 (citing Tse 49—50, 52, 57, 66, 130, Fig. 3). For
example, Tse discloses that (1) a mobile device user may perform a location-
based search to obtain “information regarding locations that may be located
at a specific address, [or] near the current location of device”; (2) the
location-based search may return several search results; (3) in response to
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Application 12/452,025
user selection of a particular search result, the mobile device displays a
menu with various options, including “Add To My Contacts”; and
(4) in response to user selection of the option “Add To My Contacts,”
the “destination information is uploaded to a contacts database” in the
mobile device. Tse Tflf 33—34, 49-50, 53, 56—57, 66—67, 130, Abstract,
Figs. 6—7.
Moreover, Tse discloses that a mobile device will again retrieve a
contact’s location if a user initiates a location-based search after either
(1) traveling near a location added as a contact or (2) entering into the search
field a specific address near a location added as a contact. See Tse 1133-34,
42, 46-47, 49-53, 56-57, 63-64, 69-70, 90, Abstract, Figs. 4, 6-7, 14.
Thus, Tse teaches or suggests “that said selected contact is associated with
said location and said selected contact will be retrieved when said device
determines said location again,” as recited in claim 1. See Final Act. 7—8
(citing Tse H 33, 34, 50-52, 57, 67, 70, 82-83, 89-90, Fig. 3).
Appellant argues that “[n]o person having ordinary skill in the art
would ever consider the act of storing information in a database equivalent
to automatically retrieving a particular contact when a particular device is in
a particular location.” Reply Br. 7. That argument is not commensurate in
scope with claim 1 because claim 1 does not require “automatically
retrieving a particular contact when a particular device is in a particular
location.” App. Br. 25 (Claims App.). In fact, the broadest reasonable
interpretation of claim 1 encompasses contact retrieval in response to a user-
initiated search.
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“Transmitting Location Information
to a Database for Matching”
Appellant asserts that the Examiner erred in rejecting claim 1 because
Tse fails to teach or suggest “transmitting location information to a database
for matching the mobile device location to information relating to at least
one contact from a database corresponding to the device location,” as recited
in claim 1. App. Br. 16. Referring to Tse paragraph 70, Appellant further
asserts that “transmitting location information (as in the present claims) is
clearly not equivalent to requesting location information (as in Tse) in
either form or function.” Id.
Appellant’s assertions do not persuade us of Examiner error. In the
Final Office Action, the Examiner cites Tse paragraphs 64 and 70 as well as
Figure 14 item 186 for the “transmitting location information” limitation.
Final Act. 3. Those portions of Tse disclose a user requesting a location-
based search from a database, generating location-based search results in
response to the user’s request, and providing the location-based search
results to the user. Tse Tflf 64, 70, Fig. 14. The user’s request for a location-
based search involves transmitting location information to the database, e.g.,
a specific address. See id. 170. In addition, the Examiner finds that Tse
teaches “processor 40 may wirelessly transmit the location of [mobile]
device 10 and the search query information received via search field 64 to a
remote (e.g., physically detached) server that performs the location-based
search and wirelessly transmits the results back to [mobile] device 10.”
Ans. 3 (emphasis omitted) (quoting Tse 1 51). Thus, Tse teaches or suggests
“transmitting location information to a database for matching the mobile
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device location to information relating to at least one contact from a
database corresponding to the device location,” as recited in claim 1.
“Requesting User Action”
and “Requesting User Input”
Appellant asserts that the Examiner erred in rejecting claim 1 because
Tse fails to teach or suggest “requesting user action in response to the
information relating to the at least one contact possibility received at the
mobile device” and “requesting user input to select one or none of the
multiple contact possibilities for assignment for said location,” as recited in
claim 1. App. Br. 16—17. Appellant disputes that Tse’s disclosure “of a
menu of options is equivalent to a request for user action/input” because
“a request is an active step, while a menu is simply a list that certainly does
not make any active requests.” Id. at 17; Reply Br. 6.
Appellant’s assertions do not persuade us of Examiner error. Tse
discloses (1) displaying multiple search results when a location-based search
returns several search results and (2) displaying a menu with various
options, e.g., “See on Map,” “Call” phone number, and “Add To My
Contacts,” in response to user selection of a particular search result. Tse
11 53, 56, 57, Figs. 6—7; see Ans. 3. The list of multiple search results
invites user selection of a particular search result, while the menu with
various options invites user selection of a particular option. Those
invitations for user selections correspond to “requesting user action” and
“requesting user input” according to claim 1. “[Djuring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372
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(Fed. Cir. 2000). Here, Tse’s disclosure comports with Appellant’s
Specification, which explains:
When there are multiple possibilities sensed for the coordinates,
the lists of possibilities are displayed 26 to the user of [sic]
using an interface means such as a pop up window, or other
type visual indication and the user selects the desired entry or
“none of the above” at step 28. Where there are no multiple
possibilities for the sensed coordinates, or the user makes a
selection at step 28, a decision is presented to the user to save
this contact information 30. If the user selects “yes”, the
contact information is saved to memory 32.
Spec. 122.
Motivation to Combine Tse with Lopez
Appellant argues that the Examiner erred in rejecting claim 1 because
“there would be no motivation to combine Tse with Lopez.” App. Br. 17.
In addition, Appellant argues that “Lopez is teaching a system for a
consumer directly accessing” information about their own credit worthiness,
and “in stark contrast” claim 1 specifies that “it is the contact information of
another individual that is determined.” Id.
Appellant’s arguments do not persuade us of Examiner error. Lopez
does not discuss determining credit worthiness. Instead, the Examiner finds
that Lopez teaches “submitting contact information to a second database as a
search query; and receiving additional information as a supplement to said
contact information from a second database.” Ans. 4 (citing Lopez | 64);
see Final Act. 4 (citing Lopez | 63, Abstract, Fig. 2). For example, Lopez
discloses that a user may search for a business using its phone number or
name, and then a server will access “various databases ... to obtain
additional contact information for the user corresponding to the searched
business.” Lopez || 63—64. Further, the Examiner finds that a person of
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ordinary skill in the art would have been motivated to combine the
references to “get additional contact information,” thus providing “enhanced
location services” and “an improvement. . . over relying on a single
database.” Ans. 4; Final Act. 4. Therefore, we find the Examiner has
articulated reasoning with a rational underpinning for why a person of
ordinary skill in the art would have combined Tse with Lopez. See KSR Int 7
Co. v. Teleflex, Inc., 550 U.S. 398, 415, 418 (2007). “[T]he desire to
enhance commercial opportunities by improving a product or process is
universal. . . .” DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325, 1330
(Fed. Cir. 2003). Despite the absence of anything in the references
themselves, “an implicit motivation to combine” may result from a desire to
make a product or process “stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.” DyStar, 464 F.3d at 1368.
Summary for Independent Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Tse and Lopez. Hence, we sustain the rejection of claim 1.
Independent Claims 14 and 22 and
Dependent Claims 2,3,5,7-9,11,12,19,20, and 23-30
Appellant does not make any separate patentability arguments for
independent claims 14 and 22 or dependent claims 2, 3, 5, 7—9, 11, 12, 19,
20, and 23—30. App. Br. 12—18; Reply Br. 5—7. Because Appellant does not
argue the claims separately, we sustain the rejection of claims 2, 3, 5, 7—9,
11, 12, 14, 19, 20, and 22—30 for the same reasons as claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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The Rejection of Claims 21 and 31 Under 35 U.S.C. § 103(a)
Claim 21 depends from claim 1 and recites the following additional
steps:
determining whether a selected contact has a wish list
indicating an item for purchase; and
prompting said user with an option to purchase said item
for said selected contact.
App. Br. 30 (Claims App.). Dependent claim 31 includes similar
limitations. See id. at 23, 34.
Appellant argues that the Examiner erred in rejecting claims 21
and 31 because Carroll “fails to cure” the alleged deficiencies in Tse and
Lopez for the independent claims and “further fails to teach or suggest” the
limitations in claims 21 and 31. App. Br. 22. More specifically, Appellant
asserts that “Lopez is teaching a system for a consumer directly accessing”
information about their own credit worthiness, whereas claim 21 ’s wish list
“relates to someone other than the user (i.e., the contact identified in the
location search).” Id. Appellant further asserts that the “teachings of
Carroll” would require a credit worthiness determination for a mobile device
user or a potential contact before providing an associated wish list. Id.
at 22—23. In addition, Appellant asserts that “there would be no motivation
to combine the teachings of Carroll with those of Tse and/or Lopez.” Id.
at 23.
Appellant’s assertions do not persuade us of Examiner error. As
explained above, Lopez does not discuss determining credit worthiness. In
addition, the Examiner finds that Carroll teaches: (1) a lender determining
whether a borrower has moved within “purchasing proximity of goods and
services”; (2) the lender determining whether the borrower has a wish list;
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and (3) the lender providing an offer of credit to the borrower “for the
purchase of goods or services.” Ans. 5 (citing Carroll 5:12—25); Final Act. 7
(citing Carroll 5:12—25). For instance, Carroll discloses that upon learning a
borrower’s location, a lender may “determine the borrower’s credit
worthiness,” “determine consumer information” including “a borrower wish
list,” receive the borrower’s wish list through a network, and then make
“a location-based offer of credit” to the borrower for an item on the wish list.
Carroll 4:33—36, 4:63—66, 5:6—9, 5:12—25. Thus, contrary to Appellant’s
assertions, Carroll discloses determining whether someone else has a wish
list and encouraging the purchase of an item on the wish list. Consequently,
Carroll teaches or suggests the limitations in claims 21 and 31. Carroll’s
description of an illustrative embodiment where a credit module initially
determines credit worthiness and a purchase module subsequently
determines wish list existence does not diminish that teaching or suggestion.
Further, the Examiner finds that a person of ordinary skill in the art
would have been motivated to combine Carroll with the other references to
improve “the location based services as taught by Tse and Lopez ... by
adding the other services that are location based such as the one taught by
Carroll.” Ans. 5 ; see Final Act. 7. Therefore, we find the Examiner has
articulated reasoning with a rational underpinning for why a person of
ordinary skill in the art would have combined Carroll with Tse and Lopez.
See KSR, 550 U.S. at 415, 418.
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DECISION
We affirm the Examiner’s decision to reject claims 1—3, 5, 7—9, 11,
12, 14, and 19-31.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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