Ex Parte Shields et al

Patent Trial and Appeal Board

Sep 14, 2018

11771369 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/771,369 06/29/2007
69316 7590 09/18/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Kevin T. Shields
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.
320056.01 7842
EXAMINER
CASCA, FRED A
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN T. SHIELDS, WILLIAM T. FLORA,
BRET P. O'ROURKE, JOHN MARK MILLER, ERIC P. WILFRID,
NIGEL S. KEAM, STEVEN N. BATHICHE, OLIVER R. ROUP,
ZACHARY L. RUSSELL, and JON MARCUS RANDALL WHITTEN
Appeal2018-001649
Application 11/771,369
Technology Center 2600
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and NORMAN H.
BEAMER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
non-final decision to reject claims 1, 8, 16, 25-28, 30-33, 36-39, and 41--45.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. App. Br. 2.
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Application 11/771,369
STATEMENT OF THE CASE
Appellants' invention selects and delivers content dynamically as a
function of the user's location, preferences, and state. See generally
Abstract. Claim 1 is illustrative:
1. A method of providing location relevant data for a user of
a mobile wireless device, the method performed by a server
computing device, the method comprising:
receiving, at the server computing device from the mobile
wireless device, sensor data captured by a sensor of the mobile
wireless device, the sensor data comprises at least one of audio
data, image data, or video data;
receiving, at the server computing device, information that
specifies a location of the mobile wireless device;
selecting the location relevant data for the user of the
mobile wireless device, the location relevant data for the user of
the mobile wireless device being selected by the server
computing device from a database, the location relevant data for
the user of the mobile wireless device being selected based on:
the location of the mobile wireless device;
the sensor data received from the mobile wireless
device; and
a user profile of the user of the mobile wireless
device;
determining, based upon the user profile of the user of the
mobile wireless device, whether to send the location relevant
data for the user to the mobile wireless device from the server
computing device; and
responsive to determining to send the location relevant
data for the user, sending the location relevant data for the user
to the mobile wireless device from the server computing device.
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Application 11/771,369
THE REJECTIONS
The Examiner rejected claims 1, 8, 25, 27, 28, and 41 2 under 35
U.S.C. § 103 as unpatentable over Eisold (US 2007 /0296575 Al; publ. Dec.
27, 2007), Smith (US 2006/0015254 Al; publ. Jan. 19, 2006), Casey (US
2007/0015519 Al; publ. Jan. 18, 2007), and Barbeau (US 2007/0072583
Al; publ. Mar. 29, 2007). Non-Final Act. 2-8. 3
The Examiner rejected claim 26 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Barbeau, and Friedman (US
2008/0189099 Al; publ. Aug. 7, 2008). Non-Final Act. 8.
The Examiner rejected claims 30 and 31 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Barbeau, and Buckley (US
2007 /0247289 Al; publ. Oct. 25, 2007). Non-Final Act. 8-9.
The Examiner rejected claim 33 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Barbeau, and Karaizman (US
2005/0054352 Al; publ. Mar. 10, 2005), and Young (US 2006/0080360 Al;
publ. Apr. 13, 2006). Non-Final Act. 9-10.
2 Although the Examiner omits claim 41 from the statement of the rejection,
the Examiner nonetheless includes this claim in the associated discussion.
Compare Non-Final Act. 2 with Non-Final Act. 7. Accordingly, we present
the correct claim listing here for clarity, and treat the Examiner's error in
this regard as harmless.
3 Throughout this opinion, we refer to (1) the Non-Final Office Action
mailed December 30, 2016 ("Non-Final Act."); (2) the Appeal Brief filed
April 21, 2017 ("App. Br."); (3) the Examiner's Answer mailed October 2,
2017 ("Ans."); and (4) the Reply Brief filed December 4, 2017 ("Reply
Br.").
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Application 11/771,369
The Examiner rejected claim 32 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Buckley, Barbeau, and Karaizman.
Non-Final Act. 11.
The Examiner rejected claims 16, 36, and 39 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Friedman, and Barbeau. Non-Final
Act. 11-17.
The Examiner rejected claim 37 under 35 U.S.C. § 103 as
unpatentable over Eisold, Smith, Casey, Friedman, Barbeau, and Mian (US
2005/0258943 Al; publ. Nov. 24, 2005). Non-Final Act. 17-18.
The Examiner rejected claim 38 under 35 U.S.C. § 103 as
unpatentable over Eisold, 4 Smith, Casey, Friedman, Barbeau, and "well-
known prior art." Non-Final Act. 18.
The Examiner rejected claims 42--45 under 35 U.S.C. § 103 as
unpatentable over Smith, Casey, and Barbeau. Non-Final Act. 18-22.
THE REJECTION OVER EISOLD, SMITH, CASEY, AND BARBEAU
Regarding independent claim 1, the Examiner finds that Eisold
discloses, among other things, providing location-relevant data5 for a user of
a mobile wireless device including (1) receiving the device's location, (2)
selecting location-relevant data for the user based on that location, and (3)
sending the data to the device. Non-Final Act. 2-3. Although the Examiner
4 Although the Examiner omits Eisold in the statement of the rejection of
claim 3 8, the Examiner nonetheless includes this reference in the associated
discussion. See Non-Final Act. 18. Accordingly, we include Eisold here for
clarity, and treat the Examiner's error in this regard as harmless.
5 Although claim 1 does not hyphenate the term "location-relevant," we
nonetheless hyphenate it for clarity and proper grammatical form.
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acknowledges that Eisold's server does not receive sensor data captured by
the mobile wireless device, let alone use the received sensor data as a basis
for selecting location-relevant data, the Examiner nevertheless cites Smith
for teaching these features, as well as Barbeau for also teaching a server
receiving sensor data captured by a mobile wireless device. Non-Final Act.
3-5. The Examiner also acknowledges that Eisold's location-relevant data
selection is not based on the user's profile, but cites Casey for teaching this
feature. Non-Final Act. 5---6. Based on these collective teachings, the
Examiner concludes that the claim would have been obvious. Non-Final
Act. 2---6; Ans. 2-13.
Although Appellants acknowledge that the cited references
collectively provide for information reported to a central server being
selected and sent to a mobile device based on the device's location and user
profile, Appellants nonetheless contend that the cited prior art is not
germane to selecting the location-relevant data based on sensor data received
from the device. App. Br. 7-11; Reply Br. 2--4. Appellants add that the
Examiner's proposed combination would change Eisold's principle of
operation and render Eisold unsuitable for its intended purpose. App. Br.
11-12; Reply Br. 4--7.
ISSUES
(1) Under§ 103, has the Examiner erred by finding that Eisold, Smith,
Casey, and Barbeau collectively would have taught or suggested selecting
location-relevant data for a mobile wireless device user based on (a) the
device's location, (b) sensor data received from the device, and ( c) the user's
profile as recited in claim 1?
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(2) Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion? This issue turns on whether
the Examiner's proposed combination renders Eisold unsuitable for its
intended purpose.
ANALYSIS
Claim 1 recites, in pertinent part, that location-relevant data for the
user of a mobile wireless device is selected based on ( 1) the device's
location, (2) sensor data received from the device, and (3) the user's profile.
As noted above, it is undisputed that the cited prior art teaches selecting this
data based on items (1) and (3), namely the device's location and the user's
profile. See App. Br. 10 (acknowledging that the cited references
collectively provide for information reported to a central server being
selected and sent to a mobile device based on the device's location and user
profile); see also Reply Br. 4 (same). Rather, this dispute turns on whether
the cited references also teach or suggest using received sensor data-
namely received audio, image, or video data-as a basis for this selection.
On this record, we see no error in the Examiner's reliance on Smith in
this regard. See Non-Final Act. 4--5; Ans. 3--4, 7. In Smith, a mobile device
reports hazard and event information wirelessly to a server that uses that
information to warn a user of an event or future hazard with respect to the
device's location or intended travel direction. Smith, Abstract; ,r 17.
Notably, the mobile device can also report subsequent related information
regarding the event, namely "secondary information," to the server, where
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the secondary information includes, among other things, video clips, images,
and sounds. See Smith ,r,r 22-24, 104.
Given this functionality, we see no error in the Examiner's reliance on
Smith's secondary information in connection with the recited "sensor data,"
for Smith at least suggests that the reported secondary data-like the recited
sensor data----can be audio, video, or image data captured by the mobile
device. See Smith ,r,r 22-24, 104. Despite Appellants' arguments to the
contrary (App. Br. 8-9; Reply Br. 3--4), we see no reason why Smith's
secondary data could not be used as a basis for selecting location-relevant
data for a mobile device user, particularly given Appellants'
acknowledgement that a mobile device in Smith may receive hazard
warnings that include the reported secondary data. See Reply Br. 3. This
functionality at least suggests that selecting data associated with this
waming----data that is at least relevant to the device's location (see Smith
Abstract; ,r 17}-is also based at least partly on received sensor data, namely
the secondary data reported from the mobile device.
Given this teaching, considered with the teachings of the other cited
references, we agree with the Examiner that the cited prior art collectively at
least suggests selecting location-relevant data for the user of a mobile
wireless device based on (1) the device's location, (2) sensor data received
from the device, and (3) the user's profile. Appellants' arguments regarding
the alleged shortcomings of the other cited references in connection with
using received sensor data as a basis for selection (see App. Br. 8-11) are
not germane to the Examiner's reliance on Smith for teaching that feature.
Nor do Appellants' arguments regarding the cited references' individual
shortcomings in this regard show nonobviousness where, as here, the
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rejection is based on the cited references' collective teachings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Nor are we persuaded that the Examiner's proposed combination
renders Eisold unsuitable for its intended purpose as Appellants contend.
See App. Br. 11-12; Reply Br. 4--7. According to Appellants, modifying
Eisold to send selected location-relevant data selected for a user would
ostensibly result in (1) not broadcasting warnings due to the amount of
network traffic, (2) all warning devices no longer analyzing each warning
within a region, and (3) wasting resources, such as battery power. App. Br.
11-12; Reply Br. 6-7. Not only are these perceived consequences
speculative and unsubstantiated on this record, they are unavailing. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem,
Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney
argument is no substitute for evidence.").
Appellants also do not persuasively rebut the Examiner's finding that
individually-targeted transmissions would have been an obvious alternative
to multicasting consistent with users' preferences. See Ans. 12 (noting that
ordinarily skilled artisans would recognize that Eisold's warnings can be
sent individually or multicast to users who have indicated such preferences
in their profiles). Nor do Appellants persuasively rebut the Examiner's
finding that targeting transmissions to individual users would increase
efficiency for the reasons indicated by the Examiner. See Ans. 12-13. Such
an enhancement uses prior art elements predictably according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
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Even assuming, without deciding, that sending location-relevant data
to particular users in Eisold would somehow be disadvantageous as
Appellants contend-perceived consequences that are unsubstantiated on
this record-such disadvantages, if any, may be offset by the advantages of
such tailored transmissions, at least in terms of increased efficiency and
consistency with users' preferences noted by the Examiner. See Ans. 12.
Such considerations amount to an engineering trade-off well within the level
of ordinarily skilled artisans.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 8, 25, 27, 28, and 41 not argued separately with
particularity.
THE REJECTION OVER EISOLD, SMITH, CASEY, FRIEDMAN, AND
BARBEAU
We also sustain the Examiner's rejection of claim 16 over Eisold,
Smith, Casey, Friedman, and Barbeau. Non-Final Act. 11-16; Ans. 14--19.
Despite Appellants' arguments to the contrary (App. Br. 14--15; Reply Br.
7), and as noted previously, we see no error in the Examiner's reliance on
Smith, who teaches that a mobile device can report secondary information to
the server, where the secondary information includes, among other things,
captured audio data, such as sounds. See Smith ,r,r 22-24, 104.
Given this functionality considered in light of the teachings of the
other cited references, we see no error in the Examiner's finding that the
cited prior art collectively at least suggests selecting location-relevant data
for a mobile wireless device responsive to receiving audio data from that
device, where the selection is based on (1) the device's location, (2) the
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received audio data, and (3) the user's profile. As we noted with respect to
claim 1, Appellants acknowledge that a mobile device in Smith may receive
hazard warnings that include the reported secondary data. See Reply Br. 3.
This functionality, then, at least suggests that selecting data associated with
this warning----data that is at least relevant to the device's location (see
Smith Abstract; ,r 1 7}-is also based at least partly on received audio data,
namely the secondary data reported from the mobile device.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16, and claims 36 and 39 not argued separately with particularity.
THE REJECTION OVER SMITH, CASEY, AND BARBEAU
We also sustain the Examiner's rejection of claim 42 over Smith,
Casey, and Barbeau. Non-Final Act. 18-22; Ans. 20-25. Despite
Appellants' arguments to the contrary (App. Br. 16; Reply Br. 7-8), and as
noted previously, we see no error in the Examiner's reliance on Smith's
teaching that a mobile device can report secondary information to a server,
where the secondary information includes, among other things, video clips,
images, and sounds. See Smith ,r,r 22-24, 104.
Given this functionality considered in light of the teachings of the
other cited references, we see no error in the Examiner's finding that the
cited prior art collectively at least suggests selecting location-relevant data
for a mobile wireless device responsive to receiving sensor data from that
device, where the selection is based on (1) the device's location, (2) the
received audio data, and (3) the user's profile. As we noted with respect to
claim 1, Appellants acknowledge that a mobile device in Smith may receive
hazard warnings that include the reported secondary data. See Reply Br. 3.
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This functionality, then, at least suggests that selecting data associated with
this waming----data that is at least relevant to the device's location (see
Smith Abstract; ,r 1 7}-is also based at least partly on received sensor data,
namely the secondary data reported from the mobile device.
Given this teaching, considered with the teachings of the other cited
references, we agree with the Examiner that the cited prior art collectively at
least suggests selecting location-relevant data for the user of a mobile
wireless device based on (1) the device's location, (2) sensor data received
from the device, and (3) the user's profile.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 42, and claims 43--45 not argued separately with particularity.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 26,
30-33, 37, and 38. Non-Final Act. 8-11, 17-18. Because these rejections
are not argued separately with particularity, we are not persuaded of error in
these rejections for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1, 8, 16, 25-28, 30-33,
36-39, and 41--45 under§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1, 8, 16, 25-28,
30-33, 36-39, and 41--45.
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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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