Ex Parte Want et al

Patent Trial and Appeal Board

Oct 14, 2016

13612386 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/612,386 09/12/2012
98449 7590 10/18/2016
Shumaker & Sieffert, P,A,
1625 Radio Drive, Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
Roy Want
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.
l 133-429US01 7830
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
10/18/2016 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY WANT and WILLIAM NOAH SCHILIT
Appeal2014--004817
Application 13/612,386
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and KENNETH G.
SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Roy Want and William Noah Schilit (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-24, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented of a way of "electronically executing a multi-
dimensional function presented on a visual media comprising a plurality of
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed October 11, 2013) and the Examiner's Answer ("Ans.," mailed
December 30, 2013), and Final Action ("Final Act.," mailed May 3, 2013).
Appeal2014-004817
Application 13/612,386
tags associated with a plurality of parameters of the multi-dimensional
function, in which each of the tags is interpretable by a mobile computing
device." Specification para. 4.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of electronically executing a multi-
dimensional function presented on a visual media, the method
compnsmg:
[ 1 ] interacting,
by a mobile computing device,
with two or more of a plurality of tags
associated with the visual media
to select values for two or more of a
plurality of parameters of the multi-dimensional
function,
wherein the plurality of tags associated with the
visual media are associated with the plurality of
parameters of the multi-dimensional function,
and
wherein each of the plurality of tags is
interpretable by the mobile computing device;
and
[2] executing the multi-dimensional function
according to the selected values for the two or
more parameters,
wherein the multi-dimensional function is a
function that requires, for execution, values of two or
more of the plurality of parameters
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Application 13/612,386
The Examiner relies upon the following prior art:
Forster US 2011/0185607 Al
Mottola US 2010/0280895 Al
Herigsta US 2004/0174400 Al
Griffin US 2011/0212688 Al
Park US 2007/0109124 Al
Ahem US 2008/0021876 Al
Aug. 4, 2011
Nov. 4, 2010
Sep.9,2004
Sep. 1,2001
May 17, 2007
Jan.24,2008
Broll, Mobile and Physical User Interfaces for NFC-based Mobile
Interaction with Multiple Tags, MobileHCI '10, Sept. 7-10, 2010
Claims 1--4, 6, 7, and 21-24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Forster and Mottola.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Forster, Mottola, and Griffin.
Claims 10-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Forster, Mottola, and Herigstad.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Park.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Ahem.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Forster, Mottola, and Broll.
ISSUES
The issue is whether there is evidence that one of ordinary skill would
have used Forster's panels as an input device for Mottola.
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Application 13/612,386
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Forster
01. Forster is directed to advertising system with a
graphic media supporting frame that has an activatable light
source and an advertising graphic that has printed or imaged
indicia relating to an advertising or marketing campaign. Forster
para. 8.
02. Forster describes a smart sign with two basic
"smart" features. The first basic smart feature involves the use of
a security tag (e.g., an RFID device) at a specific place on the
graphic media that interacts with an RFID reader built inside the
sign box. The reader authenticates the tag (and thus the graphical
media) to make sure that the correct graphics from the correct
source are installed in the sign box. If the reader/controller cannot
detect or authenticate the tag, then the sign box will not function
properly, e.g., it will not tum on a light to illuminate the signage.
The second smart feature provides the sign graphics or sign box
with the capability to communicate and/or otherwise interact with
suitably equipped or otherwise provisioned mobile devices, e.g.,
such as cell phones, personal digital assistants (PDAs). Forster
paras. 5---6.
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Application 13/612,386
03. Forster describes a sign high on a post that is
communicatively coupled to a panel that is within consumer reach
with an RFID chip or near field device. Forster para. 24.
04. Forster describes how for each sign there may be
one or more panels each being equipped with one or more tags.
Accordingly, a user may place their device anywhere on the panel
to achieve interactive communication. Moreover, multiple users
can obtain such access at the same time by positioning their
respective devices at different locations on the panel and hence
simultaneously achieving interactive communication via a
plurality of corresponding different tags. Forster para. 28.
05. Forster describes how each tag on a panel may
perform the same function or may perform different functions or
provide for the delivery of alternate content to the user's device.
For example, content related to a number of different products
may be provided, or the content may be in a number of different
languages, or a number of different functions or options may be
activated, or a number of different directions or a number of
different coupons may be delivered, e.g., depending on the
location where the user places their device onto or next to the
panel and accordingly which tag is thereby accessed. Forster para.
29.
06. Forster describes how the viewer optionally
communicates or interacts with a desired tag by placing their
mobile device at the appropriate location on or near the panel.
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Application 13/612,386
Suitably, each tag is associated with a different option for
controlling one or more functions or operations of the sign. For
example, the media may optionally be printed or imaged at
different locations with different content or in a plurality of
different languages. Accordingly, the viewer selects their desired
content or language by appropriately positioning their mobile
device over or near the location on the panel to access and/ or
communicate or otherwise interact with the corresponding tag. In
response, the accessed tag signals the sign which in tum reacts to
the selected option by illuminating that portion of the media
printed with the content or language selected. In this way, the
user is able to view the desired content on the sign or view the
media in their chosen language. Forster para. 32.
Mottola
07. rvfottola is directed to ordering, preparing,
managing and pricing food and beverages. Mottola para. 2.
08. Mottola describes ordering a meal and calculating
and comparing nutritional values of the meal. This is done by:
providing a database comprising records of food or beverage
items, values of at least two nutritional principles associated with
each food or beverage item, and consumable units; using a user
interface to receive a selection of a consumable unit; for each
selected consumable unit, using a user interface to receive a user
selection of at least one food or beverage item associated with the
selected consumable unit, wherein a total of at least two food or
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Application 13/612,386
beverage items are selected, and wherein each selected food or
beverage item has an associated amount; for each selected food or
beverage item, acquiring at least two values of nutritional
principles, the nutritional principles for which values are acquired
corresponding to at least two monitor nutritional principles
common to all the selected food or beverage items; calculating at
least two total nutritional values, each total nutritional value being
given by a summation of terms, each term corresponding to a
selected food or beverage item and each term being calculated by
multiplying an acquired value of a nutritional principle by an
associated amount of selected food or beverage item; using the
user interface to display the total nutritional values; and using the
user interface to receive an order for the meal, the meal
comprising at least two selected food or beverage items. Mottola
paras. 8-18.
09. Mottola describes using a computer data entry
form to enter such information. Mottola Figs. 10-11
Broll
10. Broll is directed to Near Field Communication
(NFC) as an emerging technology for mobile interaction with
everyday objects and associated digital resources. Apart from
simple interactions with single tags, NFC has the potential for
more elaborate interactions with physical objects that comprise
multiple tags and serve as physical user interfaces (UI). This paper
investigates the design of mobile and physical Uis for the
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Application 13/612,386
interaction with multiple NFC-tags. It focuses on three basic
interactions that qualify for multi-tag interaction, the navigation
between parts of an application, the selection of items, and the
combination of items. Broll 133 :Abstract.
11. Broll describes multi-tag interactions (MTI) that
map application features and UI elements to multiple tags on a
physical object. Broll 133:Right Column.
12. Broll describes the selection of items as suffering
from mobile Uis with nested menus or long lists that require
tedious scrolling. Just as MTI can facilitate the top-level
navigation between the screens, pages or forms of mobile
applications, it can also support the selection of the items and
options they contain. Instead of putting them into crowded lists,
they can be mapped to tags on physical Uis, from where users can
select them directly, e.g. to fill out a form on the mobile UI.
Again, physical Uis provide more space for an overview of
multiple items and prevail over mobile Uis as the number of
available items grows. Examples are tagged posters for mobile
ticketing that comprise several groups of options. Each option is
tagged with an NFC-tag and users can touch it with their mobile
devices to collect the associated option. Broll 134:para. 3.2
Selection of Items.
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ANALYSIS
We are persuaded by Appellants' argument that
none of the references of Forster, Mottola, or any
combination thereof, cited by the Examiner discloses or
suggests "interacting, by a mobile computing device, with two
or more of a plurality of tags associated with the visual media
to select values for two or more of a plurality of parameters of
the multi-dimensional function" (emphasis added), as required
by Appellant's claim 1.
App. Br. 7. The Examiner applies Forster to show it was known to interact
with tags from a mobile computing device to input a parameter. But Forster
does not show it was known to do so to accumulate plural such parameters
from plural tags. Forster selects a product or a language based on user
selection by a tag. Forster does not describe combining these. The
Examiner applies Mottola to show it was known to enter plural parameters
into a procedure requiring plural inputs. The issue then is whether the art
suggests acquiring plural such parameters from plural tags. The Examiner
does not make an evidentiary finding to support this.
The Examiner finds that
[ o ]ne of ordinary skill in the art would have recognized
that applying the known technique of Mottola would have
yielded predictable results and resulted in an improved method.
It would have been recognized that applying the known
technique of Mottola to the teachings of Forster would have
yielded predictable results because the level of ordinary skill in
the art demonstrated by the references applied shows the ability
to incorporate such references into similar methods. Further,
having the function of Forster require values of two or more of
the plurality of parameters presented as taught by Mottola
would have been recognized by those of ordinary skill in the art
as resulting in an improved method that would allow for the
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Application 13/612,386
execution of more complex commerce transactions such as
ordering a whole meal.
Ans. 3. Simply finding that combining references yields predictable results
does not support a finding that one of ordinary skill would have selected
those references to begin with. Further, the Examiner finds that using
Forster's panels that select advertising content as a vehicle for ordering a
meal allows for a complex transaction. Well, perhaps. But this raises the
issue of why making a transaction needlessly complex is something one of
ordinary skill would seek. Ordering a whole meal in itself is not particularly
complex. The issue is whether there is evidence that one of ordinary skill
would have used Forster's panels as an input device for Mottola. The
Examiner has not cited such evidence.
All independent claims have similar limitations.
CONCLUSIONS OF LAW
The rejection of claims 1--4, 6, 7, and 21-24 under 35 U.S.C. § 103(a)
as unpatentable over Forster and Mottola is improper.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Forster, Mottola, and Griffin is improper.
The rejection of claims 10-15 under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Herigstad is improper.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Park is improper.
The rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Ahem is improper.
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Application 13/612,386
The rejection of claims 18----20 under 35 U.S.C. § 103(a) as
unpatentable over Forster, Mottola, and Broll is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). The three independent claims 1, 21, and 24 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Mottola and Broll.
As we find supra, Mottola describes entering plural parameters into a
procedure requiring plural inputs. Mottola specifically acquires plural menu
requests, each from plural parameters and is therefore a species of multi-
dimensional function that requires, for execution, values of two or more of
the plurality of parameters. In particular, Mottola requires the entry of both
a food item selection and an amount for each menu item selected, and its
function produces its output based on both of these inputs. Broll, unlike
Forster, describes the use of plural tags associated with plural parameters on
visual media for the purpose of filling in a form such as that Mottola uses.
Broll describes the desirability of doing so being based on the difficulty of
using more conventional menus on a mobile computing device and the
added visual benefits derived from the use of such visual media.
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Application 13/612,386
uECISION
The rejection of claims 1-24 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). The three independent claims 1, 21, and 24 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Mottola and Broll.
REVERSED
41.50(b)
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