Ex Parte 5,611,050 et al

Patent Trial and Appeal Board

Jan 27, 2016

90013084 (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.
90/013,084 12/05/2013 5,611,050 642122800200 4947
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 2016-000136
Reexamination Control 90/013,084
Patent 5,611,050
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. 5,611,050 (“the ’050 patent”) issued March 11, 1997, to
Marvin M. Theimer, et al., entitled Method For Selectively Performing
Event On Computer Controlled Device Whose Location And Allowable
Operation Is Consistent With The Contextual And Locational Attributes Of
The Event, 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 1–5. We have jurisdiction under 35 U.S.C.
§ 6(b). This matter is related to Reexamination Control No. 90/013,082.
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. 1:41–46.
Independent claim 1 reads as follows:
1. A method for selectively triggering events of a
computer controlled device based on the context of a system,
the system including the computer controlled device, and
further including mobile users, mobile and fixed computer
controlled devices, the system having a multiplicity of
allowable operations, each computer controlled device having
an allowable operation, the system having computing resources
for registering and responding to requests for events, the
method comprising the steps of:
registering a request for a particular event of a computer
controlled device;
identifying contextual attributes of the system for said
particular computing event;
determining location and identities of mobile users and
mobile or fixed computer controlled devices in the system
whose allowable operation is consistent with the particular
computing event;
perceiving said contextual attributes for said particular
computing event; and
performing said particular computing event on a one of
the computer controlled devices whose location and allowable
operation is consistent with the particular event and the
contextual and locational attributes of the particular computing
event.
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The Examiner rejects claims 1–5 under 35 U.S.C. § 102(b) as
anticipated by Want.1 Ans.2 2–6.

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. 90/013,082. PO App. Br. 2–3.

ANALYSIS
Patent Owner’s arguments (PO App. Br. 3 7–18; PO Reply Br. 4 2–11)
that the Examiner erred in rejecting claims 1–5 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.
3) Does Want describe “determining [a] location . . . [of] mobile
or fixed computer controlled devices” as recited in claim 1? See PO App.
Br. 14–18; PO Reply Br. 6–11.

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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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. 9. 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. 7–9. For emphasis, we
note Owner’s overly narrow use of “system” (see, e.g., PO App. Br. 8, 9, 10)
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. 9.
We do not find, as Owner argues, that Want describes “applications
[that] do not even rely on the same badge” (PO App. Br. 9) 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. 7 (citing Want 10).
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
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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. 7–9.
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
’050 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 ’050 Patent, without undue
experimentation.” PO App. Br. 10. Owner compares the Want article to the
Specification of the ’050 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
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

5 Declaration of Tim Milliken, August 1, 2014 (“the Milliken Declaration”).
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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 ’050 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 ’050 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 ’050 Patent, the ’050 Patent Specification, and Want. We give
weight to all of Owner’s assertions regarding the content of the ’050 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
the Examiner’s unrebutted finding that “Patent Owner fails to indicate any
actually claimed term, phrase or limitation which is not enabled.” Ans. 11.
See also id. at 10 (“Neither the particularities of any registries nor any agents
are required by the claims.” (in response to Owner’s argument that “Want

6 Declaration of Ravin Balakrishnan, Ph.D., December 4, 2013 (“the
Balakrishnan Declaration”).
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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.
12 (“Nowhere does Patent Owner indicate what particular technology,
commensurate with the claims, is not enabled . . . .”); and id. at 14 (The
Milliken Declaration “continually alleges features which would have
required more than routine experimentation, yet those features are not
present in the claims.” (in response to Owner’s reliance on the Milliken as
evidence of non-enablement (PO App. Br. 13–14))).
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 ’050 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 ’050 Patent recite “agents” or
“background processes.” See ’050 Patent claims 1–5. And while the claims
recite “registering a request,” (claim 1), Owner has not established that this
registering must be performed by the location registries Owner asserts to be
described in the ’050 Patent Specification. PO Reply Br. 5. Of ultimate
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importance, however, is Owner’s failure to identify a specific claim element
in a claim of the ’050 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 ’050 Patent are enabled by Want.

ISSUE 3
Owner last argues that Want fails to describe “determining [a location
of] mobile or fixed computer controlled devices,” 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
“Personal Active Badges developed for location of people and devices in the
computer environment.” Ans. 3 (referring to Want, Abstract). The
Examiner also cites Want’s disclosure that “[t]he 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.” Id. at 4 (quoting
Want 10). The Examiner further cites 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.”
Id. (quoting Want 4).
Owner argues that the passages the Examiner cites from Want “do not
disclose that the locations of the devices that perform the computing event
are necessarily determined.” PO App. Br. 14. Owner essentially argues that
the devices Want describes respond to nearby badges based on proximity,
which does not necessarily require the device to know its own location; thus
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Want does not necessarily require determining a device’s actual location.
PO App. Br. 14–18.
We are unpersuaded of error at least because Owner fails to
persuasively rebut the Examiner’s finding that Want’s Abstract describes
“determining [a location of] mobile or fixed computer controlled devices.”
Ans. 17; see also Want, Abstract (“[A] family of Personal Active Badges
developed for location of people and devices in the computer
environment.”). Even accepting Owner’s preferred construction that the
claims require determining an “absolute” physical location, and not merely a
network address location (PO Reply Br. 6–11), we find that one skilled in
the art would understand at least Want’s Abstract to anticipate the argued
limitation, as the Examiner finds. Ans. 17 (“It is not clear why Want
Article’s phrase ‘developed for location of people and devices’ is anything
but anticipation of the step of determining location of users and computer
devices.”).
Owner replies to the Examiner’s argument, saying
As is apparent, the sentence is discussing what the Active Badge
can potentially be used for. It is not a description of an actual
system that uses the badge. Further, the sentence does not
explain how a system might carry out the other steps of claim 1.
It is not a description of a system that meets all of the
requirements of claim 1 and thus is not sufficient under the law.

PO Reply Br. 10. We find this argument unpersuasive because, even if the
referenced passage from Want’s Abstract is intended to describe that the
“Active Badge” exclusively determines the location of devices in the
computer environment, as Owner argues, this is sufficient to show that Want
anticipates the limitation, as the Examiner finds. Ans. 17. The Active
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Badge is part of the office wide system Want describes, and anticipation
does not necessitate that this sentence alone “explain how a system might
carry out the other steps of claim 1.” PO Reply Br. 10.
Accordingly, we are unpersuaded of error in the Examiner’s
determination that Want anticipates claim 1’s “determining [a location of]
mobile or fixed computer controlled devices.”

In view of the foregoing, we find that the Examiner did not err in
rejecting claims 1–5 as anticipated by Want.

SUMMARY
We affirm the Examiner’s decision to reject claims 1–5 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

peb
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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