Ex Parte Slusar et al

Patent Trial and Appeal Board

Feb 22, 2018

13483696 (P.T.A.B. Feb. 22, 2018)

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.
13/483,696 05/30/2012 Mark Slusar 10171-12020A 2623
(NC58328US)
101535 7590 02/26/2018
Lempia Summerfield Katz LLC/HERE
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
STANFORD, CHRISTOPHER J
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
docket-us @ lsk-iplaw.com
pair_lsk @ firsttofile.com
hereipr @ here, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SLUSAR and KEN PRCHAL
Appeal 2017-007711
Application 13/483,696
Technology Center 2800
Before TERRY J. OWENS, JULIA HEANEY, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1—20, 22, 24, 27, 29, 31, and 32.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ invention is generally directed to a method, a system, and
an object in which machine readable indicia are arranged on at least a
1 Appellants identify Here Global B.V. as the real party in interest. Appeal
Brief filed November 28, 2016 (“App. Br.”), 2.
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Application 13/483,696
portion of an object such that different indicia may be perceptible to a
suitably configured device, such as a suitably programmed camera phone,
depending on the relationship of the device to the portion of the object.
Spec. 1 8; Abstract. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A computer implemented method comprising:
augmenting at least a portion of an object to include a
first machine readable indicia representative of first information
and second machine readable indicia representative of second
information different from the first information, both the first
and second indicia being arranged on the portion so as to be
simultaneously within the same field of view of a device
capable of perceiving both the first and second machine
readable indicia to obtain the first and second information
represented thereby and such that the first machine readable
indicia is perceptible to the device such that the first
information is obtainable only when the device is arranged in
any of a first subset of a set of relationships with respect to the
portion of the object and the second machine readable indicia is
perceptible to the device such that the second information is
obtainable only when the device is arranged in any of a second
subset of the set of relationships with respect to the portion of
the object, the second subset not overlapping with the first
subset;
determining a location of the device based on which of
the first or second information is obtained by the device; and
providing a service based on the determined location.
App. Br. 15 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered June 8, 2016 (“Final Act.”), and maintains the rejections in
the Examiner’s Answer entered February 8, 2017 (“Ans.”):
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I. Claims 1—20, 22, 24, 27, and 292 under 35 U.S.C. § 103(a) as
unpatentable over Mohan (US 2011/0017826 Al, published January 27,
2011) in view of Cok (US 2012/0256000 Al, published October 11, 2012);
and
II. Claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable
over Mohan in view of Cok and Fukasawa (US 2005/0011958 Al, published
January 20, 2005).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejections of
claims 1—20, 22, 24, 27, 29, 31, and 32 under 35 U.S.C. § 103(a) for the
reasons set forth in the Final Office Action, Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellants provide for each issue the Appellants
identify. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Claims 1-20. 24. 29. 31. and 32
Despite the separate rejection of dependent claims 31 and 32,
Appellants argue claims 1—20, 24, 29, 31, and 32 together on the basis of
2 Although the Examiner includes claim 30 in this ground of rejection, claim
30 has been cancelled.
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independent claims 1,10, and 20, which Appellants argue as a group. App.
Br. 4—13. Therefore, we select claim 1 as representative, and decide the
appeal as to claims 1—20, 24, 29, 31, and 32 based on claim 1 alone.
37C.F.R. §41.37(c)(l)(iv).
Mohan discloses an optical pattern—referred to as a “bokode
pattern”—that includes binary data allowing the relative position, angle, and
distance of a camera that captures an image of the bokode pattern to be
determined. 4, 22. Mohan discloses that binary data in a captured image
may be decoded to determine a camera’s pose, which Mohan explains is the
“position of the camera in six degrees of freedom” relative to the bokode.
22, 72, 81. Mohan discloses that “angular information” for a bokode can
“be easily computed.” 1 87.
The Examiner finds, based on the plain meaning of “location” taken
from Merriam Webster’s Dictionary3 and The Oxford English Dictionary4,
and disclosures provided in paragraphs 9, 11, 18, 21, 24 of Appellants’
Specification, that:
a person of ordinary skill in the art would not limit the scope of
the claim language (i.e. “determining a location”) to
determining a singularity in space, an infinitesimally defined
three-dimensional coordinate, of the claimed device but rather
would openly interpret “location” as including relative
positions, angles, orientations, ranges, etc.
Ans. 5; see also id at 3—5. The Examiner finds that “determining a location”
as recited in claim 1 thus corresponds to “determining an angular
relationship, such as that disclosed as being determined between Mohan’s
camera sensor and bokode.” Ans. 3.
3 Set forth at page 7 of the Appeal Brief.
4 Set forth at pages 3^4 of the Answer.
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The Examiner finds that Mohan does not explicitly disclose providing
a service based on a determined location, and the Examiner relies on Cok for
suggesting this feature. Final Act. 4. Cok discloses an optical code
including a first code specifying first information visually perceptible and
machine readable by an image reader (such as a digital camera) positioned at
a first distance from the first code, and a second code specifying second
information visually perceptible and machine readable by the image reader
(digital camera) positioned at a second distance from the second code, where
the second distance is less than the first distance. Fig. 4; 14, 8, 37, 45. Cok
discloses recording an image of the first code with an image reader (digital
camera), decoding first information from the first recorded image, recording
an image of the second code with an image reader (digital camera), and
decoding second, different information from the second recorded image.
9-13, 35, 38. Cok discloses that the information provided from the first
and second recorded images can be an internet URI website link. Cok 14.
The Examiner finds that “[a]s Cok is able to differentiate information
readable at two different distances, Cok is able to determine a ‘location’ as
permitted by a broad and reasonable interpretation of the claim in light of the
Specification[].” Ans. 5—6. The Examiner further finds that “Cok clearly
discloses a providing a service based on a determined location, and thus
determining a location, by teaching that a first information is associated with
a first distance farther from the imaged target than a second distance.” Ans.
6.
Appellants argue that the Examiner’s “interpretation of the claimed
‘location’ to include an angle of the device relative to another object was
improper.” App. Br. 7. Appellants assert, citing dictionary definitions of
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“location” and “angle,” that an angle is not a location. Id. Appellants
further contend, relying on paragraphs 11 and 24—26 of their Specification
and claims 5 and 14, that the “location” recited in claim 1 “is neither merely
an angle or a relative location but an absolute location.” App. Br. 7, 9-13.
Appellants argue that paragraph 11 of their Specification contrasts their
invention with “other locating technologies, such as GPS,” and claims 5 and
14 “clearly distinguish between angle, distance and orientation of the device
with respect to the object.” App. Br. 11.
We give claim terms their broadest reasonable interpretation
consistent with the Specification as the terms would be interpreted by one of
ordinary skill in the art. In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, “the
PTO must give claims their broadest reasonable construction consistent with
the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.”).
Appellants’ Specification explains, referring to Figure 4, that their
invention provides different information to a user (such as a URL), via the
user’s device 410, depending upon where the user, or the device 410, is
physically located or otherwise oriented, with respect to an object including
machine readable indicia. Spec. 111. The Specification indicates that the
invention may be utilized to force a user to be in a certain location or
vicinity, or to substantially orient the user’s device in a particular
orientation, in order to obtain information (such as a URL) from an object
including machine readable indicia. Id. The Specification further indicates
that because the information (URL) is only accessible from a defined
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location and/or when the user’s device is in a defined orientation, the
invention may be utilized to know that a user is in a certain location or
vicinity thereof, or that the user’s device is substantially in a certain
orientation. Id. Appellants’ Specification further indicates that the
invention, therefore, may facilitate more precise locating functionality than
may be obtained using GPS. Id.
Appellants’ Specification further explains, still referring to Figure 4,
that a first machine readable indicia 404 may be located at a first location on
a portion 408 of an object 402 that is optically perceptible by an optical
sensor of a device 410 (cell phone) when the device 410 is arranged in a first
relationship 412 with the portion of the object 408, and a second machine
readable indicia 406 may be located at a second location on the portion 408
of the object 402, which is different from the first location, and is optically
perceptible by the optical sensor of the device 410 when the device 410 is
arranged in a second relationship 414 with the portion of the object 408.
Spec. 125; Fig. 4.
With respect to the first and second relationships, paragraph 24 of
Appellants’ Specification, which discusses the subject matter recited in
claims 5 and 14, indicates that the relationships may comprise an angle, or
range thereof, of the device with respect to the portion of the object; a
distance, or range thereof, between the device and the portion of the object;
an orientation, or range thereof, of the device with respect to the portion of
the object; a rate of change of the angle, the distance, or the orientation of
the device with respect to the portion of the object; or combinations thereof.
Paragraph 24 further explains that the precise nature of the relationships may
depend upon the particular implementation, which some implementations
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such as a security implementation requiring substantially precise positioning,
or narrow range, and other implementations such as a guidebook allowing
for more flexible positioning, or broader range.
Appellants’ Specification further explains that the physical location of
a user of a device can be computed by determining the location of the user,
or orientation thereof, with respect to the portion of the object, and
computing the location and/or orientation of at least one of the first and
second machine readable indicia. Spec. 26, 30.
Appellants’ Specification thus uses the term “location” consistent with
its plain and ordinary meaning of “a particular place or position.” See, e.g.,
Oxford Living Dictionaries, location,
https://en.oxforddictionaries.com/defmition/location. We accordingly
interpret the “location” recited in claim 1 as the particular place or position
where a device is found, based on one or more of an angle, distance,
orientation, or range thereof, of the device with respect to a portion of an
object that includes machine readable indicia having a computed
(determined) location, and/or based on a rate of change of the angle,
distance, or orientation of the device with respect to the portion of the object
that includes the machine readable indicia. ICON, 496 F.3d atl379.
With respect to Appellants’ argument that an angle is not a location,
and contention that paragraphs 11 and 24—26 of their Specification and
claims 5 and 14 “clearly distinguish between angle, distance and orientation
of the device with respect to the object,” (App. Br. 11) as discussed above,
Appellants’ Specification explicitly indicates that the location of a device
with respect to a portion of an object that includes machine readable indicia
is based on an angle or range thereof; a distance or range thereof; an
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orientation or range thereof; a rate of change of the angle, distance, or
orientation; or combinations thereof, of the device with respect to the
portion of the object. This description is reflected in claims 5 and 14, which
also recite an angle, a distance, an orientation, a rate of change of the angle,
the distance, or the orientation, “or combinations thereof’. Contrary to
Appellants’ arguments, by concluding the list of relationships set forth in the
Specification and recited in claims 5 and 14 with “or combinations thereof,”
the Specification and claims explicitly indicate that the location of the device
is based on any one or combination of the delineated relationships.
Appellants also argue that “Mohan’s bokode may be able to determine
an angle of a camera, but does not determine a location of the device.” App.
Br. 5.
However, Mohan’s disclosure discussed above of decoding binary
data in an image of an optical pattern captured by a camera to determine the
camera’s position, angle, distance, and pose or position in six degrees of
freedom, relative to the bokode, corresponds to determining a “location” of
the camera as recited in claim 1 as we have interpreted this term (discussed
above).
Appellants further argue that Cok discloses low and high resolution
barcodes, each of which may be resolved at different distances. App. Br. 5.
Appellants contend that Cok does not and cannot provide an exact location
for a device due to potential distance ranges, camera resolutions, lenses, and
zooms. App. Br. 5—6, 8. Appellants assert that Cok does not disclose angles
and other relationships between a camera and barcode, and does not disclose
or suggest that when data are read, a location can be determined based on the
data. App. Br. 6, 8. Appellants contend that because Cok is unable to
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determine a location, “Cok is unable and does not disclose or suggest
providing a service based on a determined location.” App. Br. 6.
However, as discussed above, Mohan discloses determining a location
of a device that captures an image of an optical pattern, as recited in claim 1.
As also discussed above, Cok discloses recording first and second images by
an image reader (digital camera) of first and second optical codes,
respectively, that are visually perceptible and machine readable by the image
reader at different distances from the codes, to provide different information
from each code, such as particular URI website links (first and second
services). In view of Mohan’s disclosure of determining the location of a
device that captures an image of an optical pattern, Cok’s disclosure of
providing different information to a user based on the distance between an
optical code and an image reader (device) that captures an image of the
code, would have suggested providing distinct information, such as a
particular URI website link (service), to a user based on the determined
location (as disclosed in Mohan) of the image reader (device), as recited in
claim 1.
Therefore, considering the totality of the evidence relied-upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner’s
conclusion of obviousness. We accordingly sustain the Examiner’s rejection
of claims 1—20, 24, 29, 31, and 32 under 35 U.S.C. § 103(a).
Claims 22 and 27
Claim 22 depends from claim 1 and recites that the service comprises
positional based authentication. Claim 27 depends from claim 10 and recites
that the service comprises positional based authentication.
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Appellants argue that “[a]s mentioned above, Cok does not disclose a
location based service as Cok does not determine a location. Cok further
does not disclose or teach authenticating a device, location based or
otherwise.” App. Br. 6.
Appellants’ argument regarding Cok’s lack of disclosure of a
location-based service is discussed above, where we explained that the
combined disclosures of Mohan and Cok—rather than Cok alone as argued
by Appellants—would have suggested providing a service based on a
determined location of a device. Appellants’ additional conclusory
comment that Cok “does not disclose or teach authenticating a device,
location based or otherwise” (id.) does not constitute a substantive argument
regarding the separate patentability of claims 22 and 27. See 37 C.F.R.
§ 41.37(c)(iv) (requiring, for each argument, “the basis therefor, with
citations of the statutes, regulations, authorities, and parts of the Record
relied on” and further requiring that the “arguments shall explain why the
examiner erred as to each ground of rejection”); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37 (c) as requiring “more substantive arguments
in an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
We accordingly sustain the Examiner’s rejection of claims 22 and 27
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1—20, 22, 24, 27, 29, 31,
and 32 under 35 U.S.C. § 103(a).
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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).
AFFIRMED
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