Ex Parte 5,555,376 et al

Patent Trial and Appeal Board

Jan 27, 2016

90013082 (P.T.A.B. Jan. 27, 2016)

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.
90/013,082 12/05/2013 5,555,376 642122800100 4263
7590 01/27/2016
FARNEY DANIELS PC
800 S. AUSTIN AVENUE
SUITE 200
GEORGETOWN, TX 78626
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/27/2016 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 UBICOMM, LLC
Appellant
____________

Appeal 2016-000243
Reexamination Control 90/013,082
Patent 5,555,376
Technology Center 3900
____________

Before STEPHEN C. SIU, JEREMY J. CURCURI, AND
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This proceeding arose out of a request for ex parte reexamination of
U.S. Patent No. 5,555,376 (“the ’376 patent”) issued Sept. 10, 1996, to
Marvin M. Theimer, et al., entitled Method For Granting A User Request
Having Locational And Contextual Attributes Consistent With User Policies
For Devices Having Locational Attributes Consistent With The User
Request, and assigned to UbiComm, LLC. (“Patent Owner” or “Owner”).
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Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the
Examiner’s rejection of claims 1–6. We have jurisdiction under 35 U.S.C.
§ 6(b). This matter is related to Reexamination Control No. 90/013,085.
The disclosed invention relates to “detecting, selecting and interacting
with computers and computer-controlled devices in the proximity of a user,
based on the location of the devices relative to the user, the current context
of the user, the location and context of other nearby users and devices, and
the current state of the devices.” Spec. 1:35–40.
Independent claim 1 reads as follows:
1. A method for superimposing prespecified
locational, environmental, and contextual controls on user
interactions, including interactions of mobile users, with
computational resources of a distributed computer system for
performing a multiplicity of operations and with processes
running on equipment residing on said system, each device of
the distributed computer system having a location and at least
one allowable operation, the method comprising the steps of:
registering interaction policies, including user specified
interaction policies, on an identifiable address path;
registering user and equipment locations, including
dynamically updated indications of the locations of mobile
users;
registering interaction requests, each interaction request
including a requested operation;
identifying locational and contextual attributes of each of
said interaction requests by reference to contextual information,
including registered locations;
for each interaction request, identifying a device having
locational attributes consistent with the locational attributes of
the interaction request and an allowable operation consistent
with the requested operation of the interaction request;
granting interaction requests that have locational and
contextual attributes that are consistent with said interaction
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policies and for which a device has been identified whose
allowable operation is consistent with the requested operation;
and
denying interaction requests that have locational or
contextual attributes that are inconsistent with said interaction
policies.

The Examiner rejects claims 1–6 under 35 U.S.C. § 102(b) as
anticipated by Want.1 Ans.2 2–8.

RELATED PROCEEDINGS
We are informed of the related proceedings in the Related Appeals,
Interferences, and Trials section of Owner’s appeal brief, which includes Ex
Parte Reexamination No. 90/013,084. PO App. Br. 2–3.

ANALYSIS
Patent Owner’s arguments (PO App. Br. 3 7–16; PO Reply Br. 4 2–9)
that the Examiner erred in rejecting claims 1–6 as anticipated by Want raise
the following issues:
1) Did the Examiner improperly combine different systems from
Want? See PO App. Br. 7–10; PO Reply Br. 2–3.
2) Does Want enable the claimed subject matter? See PO App. Br.
10–14; PO Reply Br. 3–6.

1 Want and Hopper, “Active Badges and Personal Interactive Computing
Objects,” 38(1) IEEE Transactions on Consumer Electronics 10–20,
February 1992 (“Want”).
2 Examiner’s Answer, mailed April 23, 2015.
3 Patent Owner Appeal Brief, filed March 12, 2015.
4 Patent Owner Reply Brief, filed June 23, 2015.
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3) Does Want describe “denying interaction requests that have
locational or contextual attributes that are inconsistent with said interaction
policies” as recited in claim 1? See PO App. Br. 14–16; PO Reply Br. 6–9.

ISSUE 1
Owner contends that the Examiner erred in rejecting the claims as
anticipated by Want because
[t]he different applications discussed in the Want Article that
are cited by the Examiner in the §102 rejection are not
describing the same system. The only thing that these
applications have in common is the use of some location
tracking device. In fact, these applications do not even rely on
the same badge.
PO App. Br. 8. See also id at 7–10; PO Reply Br. 2–3.
We are unpersuaded of error for essentially the reasons stated by the
Examiner in response to Owner’s arguments. Ans. 8–11. For emphasis, we
note Owner’s overly narrow use of “system” (see, e.g., PO App. Br. 7, 8, 9)
to imply that Want describes mutually exclusive “embodiments” that have
been improperly combined for an anticipation rejection. We agree with the
Examiner that Want’s description “of a single badge to operate both doors
and workstations indicates they are part of the same badge-enabled, office-
wide system.” Ans. 10–11.
We do not find, as Owner argues, that Want describes “applications
[that] do not even rely on the same badge” (PO App. Br. 8) in view of the
Examiner’s unrebutted finding that Want discloses “the versatile, second
generation transponding (i.e. duplex) authenticated badge can provide the
combined functionality of the first generation simplex devices in addition to
the newer duplex functionality.” Ans. 9 (citing Want 10).
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Owner’s rebuttal arguments (PO Reply Br. 2–3) are unavailing
inasmuch as these arguments persist in asserting that Want’s description of
different systems is fatal to the Examiner’s rejection. Even if true that, for
example, Want “clearly indicates that the functions shown in Figure 4 are
carried out by multiple separate systems” (id. at 3), we would be persuaded
nevertheless that one skilled in the art would have recognized the various
functionalities Want describes are integrated by virtue of the single badge as
the Examiner finds. Ans. 9–11.
Accordingly, we see no error in the Examiner’s rejection based on
Owner’s argument that the Examiner improperly combined different
disclosures within Want.

ISSUE 2
Owner argues that, because Want does not enable the claims of the
’376 Patent, it cannot anticipate them. PO App. Br. 10–14; PO Reply Br. 3–
6. Owner relies on the Milliken Declaration5 in support of the contentions.
Owner contends that “the Want Article omits crucial technical details,
and would not have enabled a person of ordinary skill in the art to make or
use the claimed inventions of the ’376 Patent, without undue
experimentation.” PO App. Br. 10. Owner compares the Want article to the
Specification of the ’376 Patent, citing, for example, Want’s lack of details
“concerning the various registries and user and device agents that are
described in the patent,” without which “the method as recited in claim 1 of
the patent could not have been implemented without undue

5 Declaration of Tim Milliken, August 1, 2014 (“the Milliken Declaration”).
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experimentation.” Id. at 11. Owner makes various assertions regarding the
intent of the Want article (id. (“[T]he Want Article’s primary focus is on the
Active Badge and its associated sensor network. In the context of the patent,
however, this is just one source of location information” that is used by the
system recited in claim 1.)), admissions made therein (id. (“[T]he authors of
the Want Article actually acknowledge that some of the features discussed in
the Article are not enabled.”)), and the sophistication of Xerox, which
sponsored the research leading to the article (id. at 13 (“It is thus highly
doubtful that Xerox would have allowed its researchers to publish an
invalidating disclosure on the results of this research one year before it filed
for a patent.”)). In short, Owner contends that, because Want lacks the
enabling detail of the ’376 Patent Specification, Want does not enable the
claims based thereon.
We are unpersuaded of error at least because Owner fails to identify
specific claim elements from the claims of the ’376 Patent that are not
enabled by Want.
In coming to our decision regarding enablement of the Want article,
we reviewed the Milliken Declaration, relied on by Owner, and the
Balakrishnan Declaration6 relied on by the Examiner. We also reviewed the
claims of the ’376 Patent, the ’376 Patent Specification, and Want. We give
weight to all of Owner’s assertions regarding the content of the ’376 Patent
Specification as compared to Want and Owner’s characterizations of the
admissions of the authors of Want. Fatal to Owner’s position, however, is

6 Declaration of Ravin Balakrishnan, Ph.D., December 4, 2013 (“the
Balakrishnan Declaration”).
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the Examiner’s unrebutted finding that “Patent Owner fails to indicate any
actually claimed term, phrase or limitation which is not enabled.” Ans. 12.
See also id. at 12 (“Neither the particularities of any registries nor any agents
are required by the claims.” (in response to Owner’s argument that “Want
Article never discusses any details concerning the various registries and user
and device agents that are described in the patent” (PO App. Br. 11)); Ans.
at 13 (“Nowhere does Patent Owner indicate what particular technology,
commensurate with the claims, is not enabled . . . .”).
Owner acknowledges the Examiner’s response with respect to the
shortcomings of Owner’s arguments in this regard (PO Reply Br. 5). But
rather than replying with specific references to claim elements, Owner again
references the ’376 Patent Specification, including unclaimed elements
discussed therein:
In response, Patent Owner points to the specification of the
patent, which discloses the full details of what is actually
needed to implement the inventive system. As one example,
the patent’s specification describes the use of “agents,” which
are implemented as background processes programmed to track
the locations of users and devices. As another example, the
specification explains in detail how location registries are
implemented. The Want Article never even suggests these
design choices, let alone how they are implemented.

Id.
Nowhere do the claims of the ’376 Patent recite “agents” or
“background processes.” See ’376 Patent claims 1–6. And while the claims
recite “registering” “interaction policies,” “user and equipment locations,”
and “interaction requests,” (claim 1), Owner has not established that this
registering must be performed by the location registries Owner asserts to be
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described in the ’376 Patent Specification. PO Reply Br. 5. Of ultimate
importance, however, is Owner’s failure to identify a specific claim element
in a claim of the ’376 Patent that one of ordinary skill in the art would have
been unable to implement without undue experimentation in view of Want.
Accordingly, we are unpersuaded of error in the Examiner’s determination
that the claims of the ’376 Patent are enabled by Want.

ISSUE 3
Owner last argues that Want fails to describe “denying interaction
requests that have locational or contextual attributes that are inconsistent
with said interaction policies” as recited in claim 1. PO App. Br. 14–16.
This is the only substantive limitation Owner argues is missing from Want.
Among other things, the Examiner cites Want’s disclosure of rules not
to interact, including rules not to create beep notifications when a user
misses a call while in his boss’s office and not to video record when a user is
present. Ans. 6 (citing Want 15; see, e.g., id. (“[A]n automatic ‘Busy’
system may be operating [so] the user can choose to be informed when he
has missed a call. In this case the user has asked for two beeps if this
happens everywhere except his boss’s office.”)).
Owner contends that the Examiner’s citation of a user’s badge not
beeping to alert the user to a missed phone call while in his boss’ office fails
to describe “denying interaction requests that have locational or contextual
attributes that are inconsistent with said interaction policies” for several
reasons. Owner argues that “[t]he email or telephone system that is
responsible for generating the badge notifications may perceive from the
system that the user is [in] a place where he does not wish to be disturbed,
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and as a result not even attempt to issue a badge notification.” PO App. Br.
15. Owner reasons that “[i]n this situation, there is never an issuance of a
request to the badge, and thus never a denial of any request.” Id. Owner
also argues that “the badge cannot be the target device of claim 1 . . .
because the Want Article never discloses that the badge is identified by its
locational attributes, as required by the claim.” Id. at 16 (referring to claim
1’s limitation that, for each interaction request, a device is identified “having
locational attributes consistent with the locational attributes of the
interaction request”). Owner contends that Want “never describes that the
badge is identified in this way [and] . . . does not indicate that the system can
send a beep notification to all badges that are currently in room X.” Id. In
sum, Owner contends that “the badge itself cannot be the target device of
claim 1, and the incoming events to the badge listed in Figure 4 are not the
‘interaction requests’ recited in claim 1.” Id.
We are not persuaded by Owner’s arguments. The Examiner also
refers (Ans. 18–19) to Want’s disclosure that “telephone calls in an
integrated service network could also be automatically transferred to the
telephone extension nearest the person for whom they were intended” and
that “[t]his mechanism could also be qualified by many constraints
concerning time, the office you are in, the people you are with, and, if
modern ISDN features are available, who is calling.” Want 19. We see no
persuasive reason why the “constraints” on the telephone system that cause
it not to forward a call to the phone nearest the user cannot be claim 1’s
“denying interaction requests that have locational or contextual attributes
that are inconsistent with said interaction policies.” In this case, the
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interaction request would be the initiation of the call by the user placing it,
the called user’s interaction policy would be “when a call is placed to me,
ring the nearest phone unless one of the constraints is true,” and the denial of
the interaction request would be the telephone system not ringing the nearby
phone because a constraint is true. Hence, the interaction request (i.e., the
request to contact the user by phone) is denied because the request has a
“locational or contextual” attribute (“time, the office you are in, the people
you are with, and . . . who is calling” (id.)) that is inconsistent with the
interaction policy (ring the phone nearest my location).
Even if it is the telephone system that denies the interaction request by
not issuing it, as Owner argues (PO App. Br. 15), Want nevertheless
describes “denying interaction requests that have locational or contextual
attributes that are inconsistent with said interaction policies,” as the
Examiner finds (Ans. 6). The telephone system denies the request to interact
with the user made by the calling party by not ringing a nearby phone.
We also are not persuaded that Want “never discloses that the badge is
identified by its locational attributes,” as Owner argues. PO App. Br. 16.
We agree with the Examiner that “[t]he badge is clearly identified with
current location, as that is the essence of Want.” Ans. 20 (citing Want 10
(“The name and location of a badge wearer can be ascertained by looking up
the badge ID in a table and looking up the location where the sighting was
made.”) and Abstract (“Personal Active Badges developed for location of
people and devices in the computer environment. Applications include
location and paging of individuals as well as control of computer
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systems.”)). Accordingly, we do not find that “the badge itself cannot be the
target device of claim 1.” PO App. Br. 16.
Owner’s Reply Brief arguments (PO Reply Br. 6–9) do not
persuasively rebut the Examiner’s determination. For instance, Owner
argues that “a situation where a target device fails to respond because it
never receives a request” cannot be claim 1’s denial of an interaction
request. Id. at 6–7. We find this unpersuasive because the target device is
not the only component that can meet the claim’s “denying” limitation. The
telephone system not ringing the nearest phone because the user is in a
particular office (location) (Want 19) is sufficient.
Accordingly, we are unpersuaded of error in the Examiner’s
determination that Want anticipates claim 1’s “denying interaction requests
that have locational or contextual attributes that are inconsistent with said
interaction policies.”
In view of the foregoing, we find that the Examiner did not err in
rejecting claims 1–6 as anticipated by Want.

SUMMARY
We affirm the Examiner’s decision to reject claims 1–6 under
35 U.S.C. § 102(b) as anticipated by Want. No time period for taking any
subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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peb

PATENT OWNER:

FARNEY DANIELS PC
800 S. Austin Avenue
Suite 200
Georgetown, TX 78626

THIRD PARTY REQUESTER
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105-2482