14450676 - (D) (P.T.A.B. Feb. 27, 2020)

Aaron J. Quirk et al.

Patent Trials and Appeals BoardFeb 27, 2020

14450676 - (D) (P.T.A.B. Feb. 27, 2020)

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. 14/450,676 08/04/2014 Aaron J. Quirk RSW920140071US1 6932 103765 7590 02/27/2020 IBM Corp-Rochester Drafting Center 1701 North Street Building 256-3 Department SHCB Endicott, NY 13760 EXAMINER RAHMAN, SM AZIZUR ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 02/27/2020 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): rocdrctr@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AARON J. QUIRK, LIN SUN, and LAURA WYNTER ____________________ Appeal 2018-008386 Application 14/450,676 Technology Center 2400 ____________________ Before JENNIFER S. BISK, JOHN A. EVANS, and STEVEN M. AMUNDSON, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL1 1 Throughout this Decision we have considered the Specification filed August 4, 2014 (“Spec.”), the Final Rejection mailed October 2, 2017 (“Final Act.”), the Appeal Brief filed March 20, 2018 (“Appeal Br.”), the Examiner’s Answer mailed June 29, 2018 (“Ans.”), and the Reply Brief filed August 24, 2018 (“Reply Br.”). Appeal 2018-008386 Application 14/450,676 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–4 and 13–22. Claims 5–12 have been canceled. Appeal Br. 19 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to peer negotiation of area service preferences. Spec. ¶ 1. For example, when groups of people gather in common areas, such as stores and restaurants, environmental preferences of those gathered, such as temperature, can be determined using individual preferences stored on mobile devices. Id. ¶ 2. From these individual preferences, the overall infrastructure can use a negotiated common preference to control the environment. Id. ¶ 3. An object of the invention is to enable such peer negotiated settings while also preserving the anonymity and privacy of the individuals involved. Id. ¶ 2. Anonymity and privacy can be maintained, for example, by avoiding sharing specific preferences directly with an infrastructure. Id. ¶ 27. This can be implemented by equipping each mobile device with a preference negotiator that can exchange and agree upon a common preference with the other device’s preference negotiators and providing only that common preference to the overall infrastructure component. Id. ¶¶ 20– 21. 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 3. Appeal 2018-008386 Application 14/450,676 3 Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to contested prior-art limitation): 1. A computer program product to negotiate preferences, the computer program product comprising a non-transitory computer readable storage medium having program instructions embodied therewith, the program instructions executable by a local peer device to cause the local peer device to: join an overlay network of a plurality of peer devices; obtain a local preference for an area service available to the plurality of peer devices from one or more of a user interface of the local peer device or a profile stored on the local peer device; and use the local preference to negotiate a common preference for the area service with the plurality of peer devices, wherein the common preference is to be a best fit value for the plurality of peer devices on the overlay network; communicate the common preference to an infrastructure component that provides the area service; and re-negotiate the common preference among the plurality of peer devices in response to an expiration of a periodic timer. Appeal Br. 18 (Claims App.). REJECTION The Examiner rejected claims 1–4 and 13–22 under 35 U.S.C. § 103 as being obvious over the combined disclosures of Chang (US 2010/0082176 A1, published Apr. 1, 2010) and Nass (US 2009/0024686 A1, published Jan. 22, 2009). OPINION We have considered all of Appellant’s arguments and any evidence presented. Appeal Br. 11–15; Reply Br. 5–9. We highlight and address specific findings and arguments for emphasis in our analysis below. Appeal 2018-008386 Application 14/450,676 4 Claim 1 recites “re-negotiate the common preference among the plurality of peer devices in response to an expiration of a periodic timer” (the “re-negotiation limitation”). Appeal Br. 18 (Claims App.). The Examiner relies on Nass as teaching or suggesting the re-negotiation limitation. Final Act. 5 (citing Nass Figs. 2–3, ¶¶ 29, 34). Appellant argues that Nass does not teach or suggest the re- negotiation limitation because Nass teaches “initiating a reset or restart of an automation component,” which is not associated with and does not relate to re-negotiating a common preference. Appeal Br. 13; Reply Br. 6–7. Appellant adds that Nass’s polling or querying components does not teach or suggest re-negotiating the common preference. Appeal Br. 14; Reply Br. 7. In response, the Examiner explains that Nass’s (1) overall performance of the control system is equivalent to the claimed common preference, and (2) automatic restart in response to the expiration of a timer is equivalent to the claimed re-negotiating. Ans. 3–4. Appellant replies that (1) “the skilled artisan would not associate initiating a reset or restart of an automation component with re-negotiating the common preference” (Reply Br. 6), and (2) increasing overall performance of the control system is not a “particular value” for each of the components, but is instead “an objective of components in a control system” (id. at 7). We agree with Appellant that the Examiner has not sufficiently explained why a person of ordinary skill in the art would have understood Nass’s initiating a reset or restart of its automated components with re- negotiating the common preference. Although we agree that Nass discloses responding to the expiration of a timer, it is unclear how Nass’s reset of Appeal 2018-008386 Application 14/450,676 5 automated components is related to the claimed renegotiating of a common preference. The only explanation by the Examiner is that it would have been obvious “to modify the teaching of Chang in view of Nass to re-negotiate the common preferences in response[] to an expiration of a timer.” Final Act. 6. And the Examiner simply asserts that one would be motivated to make such modification based on the disclosure of Nass. See Final Act. 6–7 (repeating, word for word (see id. at 6), the summary of Nass’s reset teaching as providing the motivation for modifying Nass to re-negotiate the common preferences). Moreover, we also agree with Appellant that the Examiner has not sufficiently explained why a person of ordinary skill in the art would have understood Nass’s disclosure of an overall system objective of increasing performance to be equivalent to the claimed common preference. Nass discloses a general goal of its invention of “allow[ing] the frozen or non- operative automation component to automatically reset or restart upon detection of . . . a non-responsive condition or state.” Nass ¶ 24. But it is not sufficiently clear how this general goal relates to an explicit preference that is actively negotiated using local preferences of peer devices, as claimed. The Examiner’s explanation, which is limited to simply a parenthetical indicating the two are equivalent, is not sufficient to explain why a person of ordinary skill in the art would have found that Nass teaches or suggests re-negotiating a common preference, as claimed. Ans. 3–4 (“[I]t would be desirable to provide a control or functionality that could allow the frozen or non-operative automation component to automatically reset or restart upon detection of such a non-responsive condition or state which Appeal 2018-008386 Application 14/450,676 6 could increase the overall performance (common goal or common preference) of the control system.”). Accordingly, we are persuaded of error in the Examiner’s rejection of claim 1 as obvious over the combination of Chang and Nass. Independent claim 13 contains similar limitations to those of claim 1 and, therefore, its rejection suffers from the same issues as the rejection of claim 1. Claims 2– 4 and 14–22 depend from claims 1 and 13, and, therefore, their rejections also suffer from the same problems as the rejection of claim 1.3 CONCLUSION We reverse the Examiner’s rejection of claims 1–4 and 13–22 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–4, 13–22 103 Chang, Nass 1–4, 13–22 REVERSED 3 In addition, Appellant makes a separate argument for claims 21 and 22. See Appeal Br. 15. The Examiner does not respond to this argument. See Ans. We, therefore, do not sustain the rejection of claims 21 and 22 for the additional reason that the Examiner does not explain why Chang’s disclosure of reporting a status teaches or suggests the local peer device sharing the local preference with other peer devices on the overlay network, as claimed.