Ex Parte Watfa et al

Patent Trial and Appeal Board

Jun 16, 2016

12870690 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/870,690 08/27/2010 Allie K. Watfa
97531 7590 06/16/2016
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
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.
10033-2008100 1324
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
06/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLIE K. WATFA, DALE NUSSEL, and JONATHAN KILROY
Appeal2014-002063
Application 12/870,6901
Technology Center 3600
Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
AMEE A. SHAH, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
Allie K. Watfa et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 3, 5-17, 19, and 20. We
have jurisdiction under 35 U.S.C. § 6(b ).
Claimed Subject Matter
Claims 1, 17, and 20 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1 Appellants identify Yahoo! Inc. as the real party in interest. Appeal Br. 1.
Appeal2014-002063
Application 12/870,690
1. A method comprising:
using one or more computers, obtaining a first set of
information providing an indication that each of a set of users is
within a specified area, wherein at least some of the set of users
are mobile electronic device users;
using one or more computers, obtaining a second set of
information providing an indication that at least some of the set
of users are at a particular event or gathering;
using one or more computers, facilitating
communications between users of the set of users, based at least
in part on the particular event or gathering; and
using one or more computers, forming a virtual grouping
of users in the specified area, and utilizing the grouping in
facilitating text or chat communications between mobile
devices of at least some of the set of users.
Appeal Br. 21, Claims App.
Rejections
Appellants seek review of the following rejections:
I. Claims 1, 3, 6-17, 19, and 20 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1, 3, 4, 6-13, 15, 17, 18, and 20 of copending United States
Patent Application No. 12/833,550;
II. Claims 1, 3, 5, 6, 8, 9, 12-17, 19, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Angell (US 2008/0249836 Al,
pub. Oct. 9, 2008) and Carlson (US 8,032,413 B2, iss. Oct. 4, 2011); and
III. Claims 7, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Angell, Carlson, and Hailpem (US 6,922,672 B 1,
iss. July 26, 2005).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
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Application 12/870,690
ANALYSIS
Rejection I - Provisional Nonstatutory Obviousness-Type Double Patenting
The Examiner provisionally rejected claims 1, 3, 6-17, 19, and 20 on
the ground of nonstatutory obviousness-type double patenting over U.S.
Patent Application No. 12/833,550 ("the '550 application"). Ans. 3. On
January 21, 2015, a Notice of Abandonment was issued in the prosecution
file of the '550 application. In light of the abandonment of the
'550 application, the provisional double patenting rejection is moot and,
thus, not sustained.
Rejection II - Obviousness over Angell and Carlson
The Examiner concludes that the combination of Angell and Carlson
would have rendered the subject matter of claims 1, 3, 5, 6, 8, 9, 12-17, 19,
and 20 obvious to one of ordinary skill in the art at the time of invention.
Ans. 11-26. With respect to independent claim 1, the Examiner finds that
Angell discloses the elements of the claims, except that Angell does not
disclose "facilitating communications between users of the set of users,
based at least in part on the particular event or gathering" where the
communications are text or chat communications. Id. at 12. The Examiner
finds that Carlson discloses
a similar method of providing a customized advertisement to a
user who is within a specified zone and further discloses
"consumer (1) 102 may communicate with consumer (2) 102
via a communication paths involving channel 112 and Net (n)
108" . .. wherein the personal consumer device (PCD) "may
support a number of services such as Short Message Service
(SMS for text messaging and Multimedia Messaging Service
(MMS) for transfer of photographs and videos, electronic mail
(e-mail) access").
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Application 12/870,690
Id. at 12-13 (quoting Carlson, 13: 17-30, 4:62-5:29). The Examiner finds
that it would have been obvious to one of ordinary skill in the art to modify
Angell "to allow the users within the particular event or gathering to
communicate with each other, using text or chat ... to alleviate the
requirement that the users hold the phone to their ear to hear the
communications, especially if the event or gathering is noisy." Id. at 12-14.
Claims 1, 17, and 20
With respect to claims 1, 17, and 20, 2 Appellants raise several
arguments. We address each.
First, Appellants assert that Angell discloses gathering data associated
with a set of customers shopping together in a retail facility, but that
teaching does not disclose "forming a virtual grouping of users in a specified
area," as recited by claim 1. Appeal Br. 6.
The Examiner responds that Angell "utilizes current events data to
determine (form) a grouping of users (e.g. pet owners with pets) in the
specified area (a subset of customers in the retail facility)." Ans. 30 (relying
on Angell i-f 195). The Examiner explains that "when the computer system
in Angell identifies a group of customers within the retail facility who are
pet owners with pets, it is a virtual grouping, with the customers only
'grouped' within the virtual environment of the computer." Id.
Paragraph 195 of Angell states:
The current events data is received from a software component
for processing audio and/ or video data associated with the set of
customers to identify groups of family members, groups of
2 Appellants do not separately argue independent claims 1, 17, and 20.
Appeal Br. 5-15. We select claim 1 as representative. Accordingly,
claims 17 and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/870,690
friends, groups of peers, pet owners with pets, parents with
children, grandparents with grandchildren, couples, and/or
identify customers that are shopping alone to form the current
events data.
Angell i-f 195. Accordingly, the Examiner's finding-that Angell discloses
forming a virtual grouping of users in a specified area-is supported by a
preponderance of the evidence.
Second, Appellants assert that "consumer communication in Carlson
does not teach or suggest that a formed virtual grouping is utilized 'in
facilitating text or chat communications between mobile devices of at least
some of the set of users."' Appeal Br. 8. Appellants contend that the
announcements in Carlson are "generally unidirectional communications"
and consumer (1) communicating with consumer (2) does not teach or
suggest "that a formed virtual grouping is utilized." Id. at 9.
The Examiner responds "that Carlson was cited as disclosing the
system allowing the customers to communicate with each other ... via a
communication path. Ans. 30. The Examiner explains that Angell
"facilitat[ es] communication between the customers by providing a network
through which all of the customers in the group are connected, and Carlson
discloses allowing the customers to communicate not only with the merchant
system, but with each other." Id. at 31.
In their Reply Brief, Appellants assert that Carlson "is directed to
seller-to-customer communication .... [and] does not teach or suggest
facilitating communication between customers." Reply Br. 2. Further,
Appellants argue that Carlson "fails to disclose the limitation of utilizing a
formed virtual 'grouping in facilitating text or chat communications'
between users in the virtual grouping." Id. at 2-3.
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Application 12/870,690
Appellants' arguments are not persuasive. The rejection is based
upon a combination of the teachings of the references. The failure of any
one of the references to disclose each and every element of claim 1 is
inapposite where the second reference discloses the missing elements. See,
e.g., In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references"). As explained above,
the Examiner relied on Angell for the "virtual grouping" of consumers.
Therefore, Carlson need not disclose a virtual group. Further, Carlson
discloses that "consumer (1) 102 may communicate with consumer (2) 102
via a communication paths .... Users of the announcement system 100 may
interact with one another or receive data about one another within the
announcement system 100 using any of a variety of communication
devices."3 Carlson, 4:62-5:2. Accordingly, the Examiner's finding that
Carlson discloses consumer to consumer communication is supported by a
preponderance of the evidence.
Third, Appellants contend that the Examiner failed to provide an
adequate motivation to combine. Appeal Br. 12-14. We disagree. The
Examiner's stated reasons, provided on pages 12-14 and 31 of the Answer,
are supported by rational underpinnings and we adopt them as our own.
Accordingly, Appellants' argument is not persuasive to show Examiner error
3 Carlson discloses that a consumer may use the announcement system with
a portable consumer device ("PCD"), such as a cellular telephone. See
Carlson, 5:9-29. Carlson explains that the PCD may support "a number of
services such as Short Message Service (SMS) for text messaging and
Multimedia Messaging Service (MMS) for transfer of photographs and
videos, electronic mail (e-mail) access." Id. at 5:25-29.
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with respect to the reasons why one of ordinary skill in the art would have
combined the relied-upon teachings of the references as proposed in the
rejection.
Accordingly, for the reasons explained above, we sustain the rejection
as applied to claims 1, 17, and 20.
Claims 3, 5, 6, 8, 9, 12-16, and 19
Appellants argue that claims 3, 5, 6, 8, 9, 12-16, and 19 "are
patentable at least by virtue of their dependency" from claims 1, 17, and 20,
and do not raise separate arguments directed to these dependent claims.
Appeal Br. 15. Because Appellants' arguments, as discussed above, are
unpersuasive, we sustain the rejection as applied to claims 3, 5, 6, 8, 9, 12-
16, and 19.
Rejection III- Obviousness over Angell, Carlson, and Hailpern
Claim 7
The Examiner concludes that the combination of Angell, Carlson, and
Hailpem would have rendered the subject matter of claims 7 obvious to one
of ordinary skill in the art at the time of invention. Ans. 26-28. The
Examiner finds that the combination of Angell and Carlson discloses the
elements of the claim, except "inviting users who enter the specified area
after formation of the group to join the grouping; removing users from the
grouping who leave the specified area; ... [and] removing the grouping if
fewer than a specified number of users are determined to be in the specified
area." Id. at 27. The Examiner finds that Hailpem discloses a similar
method that "generates a target group of customers that are within a
specified area" and that "the target groups may change" based on the
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Application 12/870,690
presence or absence of customers in that specified area. Id. at 27-28 (citing
Hailpem, 3:13-21, 4:44--58).
Appellants raise several arguments in response to the rejection,
including that Hailpem's teaching of "adding newly arriving customers to a
list ... is not the equivalent of inviting users to join the grouping." Appeal
Br. 16.
The Examiner's citations to Hailpem do not reflect that Hailpem
teaches inviting users to join a grouping; rather, Hailpem's system adds and
removes customers without invitation. See, e.g., Ans. 32 (quoting various
portions of Hailpem). The Examiner makes an additional finding in
response to Appellants' argument-that "it would have been obvious for
Angell to invite newly arrived customer[ s] (e.g. pet owners) to join the
grouping and to remove customers who leave the specified area (e.g. retail
facility)." Id. at 32. The Examiner, however, does not provide a reason why
one of ordinary skill in the art would have been prompted to modify Angell
to invite newly arrived customers. See Ans. 32. Accordingly, we do not
sustain the rejection as applied to claim 7.
Claims 10 and 11
The Examiner concludes that the combination of Angell, Carlson, and
Hailpem would have rendered the subject matter of claims 10 and 11
obvious to one of ordinary skill in the art at the time of invention. Ans. 28-
29. Appellants argue that claims 10 and 11 are patentable based on their
dependency from claim 1. Appeal Br. 18. Additionally, Appellants assert
that the Examiner "fails to provide an adequate reason to combine" as
discussed with respect to claim 7. Id.
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Application 12/870,690
As discussed above, Appellants' arguments directed to claim 1 are not
persuasive. Additionally, claims 10 and 11 do not include the language
"invited to join the grouping," which was the focus of our discussion of
claim 7. Appeal Br. 22, Claims App. With respect to the elements of
claims 10 and 11, the Examiner's reasons as to why one of ordinary skill in
the art would have combined the teachings of the references as proposed are
supported by rational underpinnings and we adopt them as our own.
See Ans. 28-29. Accordingly, we sustain the rejection of claims 10 and 11.
DECISION
We REVERSE, as moot, the Examiner's decision rejecting claims 1,
3, 6-17, 19, and 20 under the provisional ground of nonstatutory
obviousness-type double patenting over U.S. Patent Application
No. 12/833,550.
We AFFIRM the Examiner's decision rejecting claims 1, 3, 5, 6, 8, 9,
12-17; 19; and 20 under 35 U.S.C. § 103(a) as unpatentable over Angell and
Carlson.
We REVERSE the Examiner's decision rejecting claim 7 under
35 U.S.C. § 103(a) as unpatentable over Angell, Carlson, and Hailpem.
We AFFIRM the Examiner's decision rejecting claims 10 and 11
under 35 U.S.C. § 103(a) as unpatentable over Angell, Carlson, and
Hailpem.
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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