Ex Parte Tsui et al

Patent Trial and Appeal Board

Mar 23, 2016

12055040 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121055,040 03/25/2008
23623 7590 04/15/2016
AMIN, TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Chi Ying Tsui
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.
TTC.TP-WSMD.006/TPIPP105U 7134
EXAMINER
PLUCINSKI, JAMISUE A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
docketl@thepatentattorneys.com
swati@thepatentattorneys.com
hmckee@thepatentattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI YING TSUI, ROSS DAVID MURCH,
ROGER SHU KW AN CHENG, WAI HO MOW, and
VINCENT KIN NANG LAU
Appeal2013-000292
Application 12/055,0401
Technology Center 3600
Before, JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-7, 28--42 and 50. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellants identify TUEN SOLUTIONS LIMITED LIABILITY
COMPANY as the real party in interest. Appeal Br. 3.
Appeal2013-000292
Application 12/055,040
THE INVENTION
Appellants' subject disclosure relates to electronic commerce, and
more particularly, mobile electronic commerce. (Spec. 1 ).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
A method, comprising:
receiving information about at least a context of a mobile
device from at least one input;
populating an information log of the mobile device with data
based on the information, wherein the data relates to a usage of
the device under the context; and
publishing one or more parts of the information log to one or
more other devices in response to the populating.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bohrer US2003/0088520 Al May 8, 2003
Wechsler US2005/0091l12 Al Apr. 28, 2005
Halcrow US2007/0167173 Al July 19, 2007
The following rejections are before us for review.
Claims 1-7, 28-31, 33-37, 39, 41, and 50 are rejected under 35
U.S.C. § 102 (b) as being anticipated by Wechsler.
Claims 32, 38, and 42 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Wechsler in view of Halcrow.
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Appeal2013-000292
Application 12/055,040
Claim 40 is rejected under 35 U.S.C. § 103 (a) as being unpatentable
over Wechsler in view of Bohrer.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 6-7
concerning independent claims 28 and 34.
2. Wechsler discloses "[t]he master couponing database is located on
the central server. The master couponing database comprises the complete
set of conditions used to select coupon offers for each remote unit."
Para. 15.
3. Wechsler discloses that "the remote couponing databases are
automatically updated from the master couponing database during start-up of
the remote units." Para. 17.
ANALYSIS
35 U.S.C. § 102 REJECTION
Each of independent claim 1 and 42 recites, in pertinent part, the steps
of "publishing one or more parts of the information log to one or more other
devices in response to the populating."
The Examiner found inter alia that Wechsler discloses this limitation
at paragraphs 12 and 15, finding that the center sever database meets this
limitation. (Final 4).
Appellants argue that, "the remote database of Wechsler is already
populated with the remote couponing database prior to receiving the context
information .... " (FF. 3).
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Appeal2013-000292
Application 12/055,040
We agree with the Appellants. Wechsler discloses at paragraph 15,
that "[t]he master couponing database is located on the central server. The
master couponing database comprises the complete set of conditions used to
select coupon offers for each remote unit." (FF. 2). Wechsler discloses that
"the remote couponing databases are automatically updated from the master
couponing database during start-up of the remote units." (FF. 3). Thus, in
Wechsler the master coupon database publishes to the remote unit, and the
remote units do not publish to one or more other devices in response to the
populating of the remote units. Accordingly, for Wechsler to meet the claim
requirement, we would have to accept the Examiner's interpretation that the
central server is a mobile device-which we will not do. "A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference."
Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F .2d 628, 631,
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Based on the above, we
will not sustain the rejection of independent claims 1 and 42.
Since claims 2-7 and 50 depend from claim 1, and since we cannot
sustain the rejection of claim 1, the rejection of the dependent claims
likewise cannot be sustained.
Independent claims 28 and 34 do not require publishing the
information log to one or more receiving devices, but only require
"publishing." One ordinary and customary definition of the term "publish"
is "to make generally known."2 Here, we find Wechsler's remote units meet
the claimed mobile units because each is populated with information by the
2 http://www.merdam-webster.com/dictionary/pubHsh (last visited
3/16/2016).
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Appeal2013-000292
Application 12/055,040
master couponing database, with no requirement for the mobile units to
publish to one or more other devices. We find that printing or visual
presentation of the coupon at each mobile unit in Wechsler constitutes
publishing one or more parts of the information to the user and/or to anyone
else who is in view of the remote unit or print out.
Concerning dependent claim 41 3 , Appellants ague that, "Wechsler
merely discloses printing a coupon upon the satisfaction of a pre-set
condition in database. (Wechsler, [0018]). Wechsler fails to disclose or
suggest providing an incentive to publish a part of the remote databases."
(Appeal Br. 22).
We disagree with Appellants. Claim 41 only requires "an incentive
component," which we find is met by the content of the published coupon in
Wechsler. That is, the content of a coupon (e.g., Taco Bell Coupon offer),
by definition, is an incentive to purchase the associated item/service.
(Answer 7).
We also affirm the rejections of dependent claims 29-31, 33, 35-37,
and 39 since Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
35 U.S.C. § 103 REJECTION
Concerning dependent claim 40, Appellants argue that, " ... one
skilled in the art would not employ the privacy constraints of Bohrer with
Wechsler to arrive at the system recited in claim 40." (Appeal Br. 21).
3 Although Appellants argue this claim under a 35 U.S.C. § 103(a)
Rejection (Appeal Br. 19, 21), the Examiner has rejected this claim only
under 35 U.S.C. § 102(b) (Final 3).
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Appeal2013-000292
Application 12/055,040
Appellants further argue that, "the databases of Wechsler are not published
to entities external to the system of Wechsler. On the contrary, the databases
in Wechsler are merely distributed from the master database to the remote
database. (Wechsler, [0017])." Id.
We disagree with Appellants and adopt the Examiner's finding as
found on pages 10 and 11 of the Answer. The Examiner found (Answer 11)
that Bohrer discloses inter alia at paragraph 33 privacy constraints that
"authorize release of data based on authorization rules and privacy policy
matching and release data, etc." We find rules and policy are human based
constraints that can be varied to accommodate different applications,
including those which are contemplated by Wechsler within an internal
system.
We will not sustain the rejection of independent claim 42 under 35
U.S.C. § 103(a) because the additional reference to Halcrow fails to remedy
the deficiency set forth above in the anticipation rejection.
We also affirm the rejections of dependent claims 32 and 38 since
Appellants have not challenged such with any reasonable specificity (see In
re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 32, 38 and
40 under 35 U.S.C. § 103 (a).
We conclude the Examiner did err in rejecting claim 42 under 35
U.S.C. § 103 (a).
We conclude the Examiner did err in rejecting claims 1-7, 42 and 50
under 35 U.S.C. § 102 (b).
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Appeal2013-000292
Application 12/055,040
We conclude the Examiner did not err in rejecting claims 28-31 and
33-37, 39, 40 and 41under35 U.S.C. 102 (b).
DECISION
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-IN-PART.
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