Ex Parte 7072665 et al

Patent Trial and Appeal Board

Sep 29, 2014

95001436 (P.T.A.B. Sep. 29, 2014)

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.
95/001,436 08/31/2010 7072665 SMTR-001/05US
195688-2022
5005
22903 7590 03/30/2015
COOLEY LLP
ATTN: Patent Group
Suite 700
1299 Pennsylvania Avenue, NW
Washington, DC 20004
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/30/2015 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
____________

BOOPSIE, INC., ZILLOW, INC., HOTPADS, INC.,
IDX, INC., REALPAGE, INC., PRIMEDIA, INC.,
CONSUMER SOURCE, INC., TRULIA, INC., and ZIP REALTY, INC.,
Requesters and Cross Appellants

v.

SMARTER AGENT, LLC,
Patent Owner and Appellant
____________

Appeal 2011-007276
Control No. 95/001,436
US Patent 7,072,665 B1
Technology Center 3900
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.79, Owner has submitted a timely Request
for Rehearing dated October 29, 2014 (hereafter the “Request for
Rehearing”), requesting rehearing of the September 29, 2014 opinion
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Control No. 95/001,436
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(hereafter the “Opinion”) that affirmed rejections of claims 1-36. Opinion
(Op.) 3, 28. Requesters timely submitted Comments in Opposition to the
Request for Rehearing (hereafter “3PR Comments”) on December 1, 2014.
We have reconsidered the Opinion in light of Owner’s discussions in
the Request for Rehearing and 3PR Comments. We find no errors. We
therefore, decline to change our prior decision for the following reasons.
Concerning the transitional term “comprising” found in the claims,
Owner acknowledges that such an open-ended term allows for additional
steps or elements not recited but adds that the recited phrase “must be
disclosed.” Req. Rh’g 3. Owner specifically contends that the Board has
misconstrued the transitional phrase “comprising” in the claims such that
“said returned real estate information” recitation found in claim 1, for
example, returns “something different than what is recited in the claim.”
Req. Rh’g 3. We disagree.
The Opinion states the recitation, “‘receiving location-centric attribute
information from said information system related to a landmark proximate to
said geographic position’ in claim 1, does not restrict the returned
information only to that relating to a landmark located proximate to the
wireless device's geographic position.” Op. 9 (emphasis added). To clarify,
using the word “only” in this statement was not intended to express that the
returned information related to property located proximate to the wireless
device’s geographic position can be excluded from the recitation or that
information related to property that is not proximate to the wireless device’s
geographic position alone could read on this recitation. Rather, the word,
“only” was intended to express that the returned information can relate to
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and encompass other information in addition to the information proximate to
the wireless device’s geographic position. See 3PR Comments 2. This
construction does not misapprehend or misapply the law related to the
open-ended transitional phrase, “comprising.”1
Additionally, we agree with Requesters that this particular open-ended
construction of the language in the claims does not affect our findings that
the cited prior art teaches the recitation of “receiving location-centric
attribute information from said information system related to a landmark
proximate to said geographic position” found in claim 1. See 3PR
Comments 2. For example, based on our construction that the phrase
“proximate” means “near to or within the vicinity of the wireless device's
geographic position,” we found that Dowling or Broadbent each teach the
recited “returned real estate information related to a property located
proximate” to the wireless device feature. See, e.g., Op. 9, 11–12, 22–23.
The discussion on page 9 of the Opinion was merely intended to
demonstrate the breadth of the recitation “location-centric attribute
information . . . related to a landmark proximate to said geographic position”
includes the information “relating to a landmark proximate to” the wireless
device’s geographic position in addition to other information.
Next, Owner requests reconsideration of our conclusion that the
Examiner did not err in finding that claim 35 is obvious over Dowling and
Brown, Broadbent and Brown, O’Grady and Brown, Fan and Brown, and
O’Grady and Sealand. Req. Rh’g 4–5. At the outset, we note that the

1 See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004)
(indicating the term “comprising” does not exclude additional, unrecited
elements).
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Opinion did not reach the merits of the rejections concerning claim 35 based
on O’Grady and Brown, Fan and Brown, and O’Grady and Sealand. Op. 27.
For those rejections we did not reach, Owner has failed to state what the
Board has misapprehended or overlooked in rendering the decision
concerning these rejections. See 37 C.F.R. § 41.79(b)(1).
Regarding the remaining two rejections, Owner asserts that the briefs
do not individually attack the references, as the Opinion states, but rather,
“the analysis of patentability of the claims was based on the combination of
references.” Re. Rh’g 4 n. 6, 9 (citing PO Reb. Br. 6, 8, 10, 11, 13, 14; PO
App. Br. 13–16, 18–19, 21–22, 25). We acknowledge that Owner states
generally “even combined, Dowling and Brown fail to render claims 25-36
obvious.” PO App. Br. 10; see also PO Reb. Br. 6–7. Similarly, Owner
asserts “even combined, Broadbent and Brown fail to render claims 25-36
obvious.” PO App. Br. 13; see also Reb. Br. 9. However, the specific
arguments in the briefs address the references individually, failing to
consider the collective teachings adequately.
For example, Owner states
Dowling fails to disclose or suggest a method that includes
[“]receiving at the wireless device location-centric attribute
information from said information system related to a landmark for
sale proximate to said geographic position based on a geographic
position of the wireless device” and “the location-centric attribute
information being related to at least one of an interior physical feature
and an exterior physical feature of said landmark” . . . . Brown does
not remedy the deficiencies of Dowling. . . . Brown is entirely silent as
to a real estate database that communicates information to a wireless
device. . . . neither Dowling nor Brown discloses this specific
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recitation in claim [3]52 . . . . Dowling may disclose receiving
information at its mobile unit based on a location of the mobile unit,
but Dowling does not disclose receiving location-centric attribute
information at the mobile unit related to a landmark for sale as recited
. . . . Likewise, Brown discloses being able to search for information
related to a property for sale using a computer that is located remote
from the property for sale, but also fails to disclose receiving location-
centric attribute information as specifically recited . . . . Thus, even
adding Brown's real estate database to the teaching of Dowling, does
not result in the method of claim [3]5.

PO App. Br. 10–11(underlining omitted and emphasis added); see also PO
Reb. Br. 7.
As another example, Owner states
Broadbent fails to disclose or suggest “receiving at the wireless
device location-centric attribute information from said information
system related to a landmark for sale proximate to said geographic
position based on a geographic position of the wireless device” and
“the location-centric attribute information being related to at least one
of an interior physical feature and an exterior physical feature of said
landmark” . . . as recited . . . . Brown does not remedy the deficiencies
of Broadbent. As discussed above, Brown is entirely silent as to a real
estate database that communicates information to a wireless device . .
. neither Broadbent nor Brown discloses this recitation in claim [3]53 .
. . . Broadbent does not disclose receiving location-centric attribute
information at the wireless device related to a landmark for sale, as
recited . . . . Brown also fails to disclose receiving location-centric
attribute information related to a landmark for sale proximate to a
geographic position of a wireless device, as specifically recited . . . .
Thus, even adding Brown's real estate database to the teaching of
Broadbent, does not result in the method of claim [3]5.

2 For claim 35, Owner relies on the arguments presented for claim 25. PO
App. Br. 12.
3 For claim 35, Owner relies on the arguments presented for claim 25. PO
App. Br. 15.
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PO App. Br. 13–14 (underlining omitted and emphasis added); see also PO
Reb. Br. 9.
Other than the general statements in the briefs, most of these
contentions discuss Dowling, Brown, and Broadbent individually. Also, for
the reasons stated in the Opinion, we disagree with Owner’s conclusory
statements that adding Brown’s feature to Dowling or Broadbent would not
result in the method of claim 35. We refer to our previously discussed
reasons in the Opinion concerning the combination of Dowling and Brown
and Broadbent and Brown. See Op. 17, 20–21, 22–24, 27 (referring to the
RAN, Dowling, Brown, the Request, and 3PR April 9, 2012 Comments).
We further stated in the Opinion that Owner merely asserted that
Broadbent failed to teach the displaying step, which reasonably is not
considered a separate argument for consideration. Op. 20–21, 27 (citing In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)). To extent that Owner is
considered to have argued the “displaying” step in claim 35 (PO App. Br.
13, 16), the Opinion cited to further portions of the record to support that the
combination of Dowling and Brown or Broadbent and Brown taught all the
limitations found in claim 35. See Op. 21 (citing RAN 15–18, 51 (further
citing Dowling 12:60-63 and Brown 6:3-6, 7:66-8:52) and 3PR Resp. Br. 8
(referring to claim 25 and further citing Brown 7:66-8:52)), Op. 27 (citing
RAN 51 (referring to 3PR April 9, 20124 Comments, pp. 36-37) and 22-23
(referring to claim 25 and Brown 6:3-6, 7:66-8:52) and citing 3PR Resp. Br.
10 (further citing Brown 6:3-6, 7:66-8:52)). Namely, Dowling, Broadbent,

4 Notably, the Opinion at page 27 mistakenly referred to the “3PR April 9,
2014 Comments.”
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and Brown teach displaying various types of information. See Dowling
12:60–67 (discussing displaying photographs, price, and other information);
Broadbent 9–10 (discussing displaying a plan with a “you are here” dot);
Brown 6:3–6, 7:66–8:52 (discussing displaying a list of houses, thumbnail
images, and even further information). Moreover, as cited in the Opinion
and further explained in the citations to the RAN, Requesters’ Respondent
Brief, and Requesters’ April 9, 2012 Comments, Brown teaches in
combination with Dowling or Broadbent the recited “detailed provider
information” located in claim 35. See also 3PR Comments 3–4 (citing these
same portions of Dowling, Broadbent, and Brown).
We therefore, disagree that we misapprehended or overlooked an
argument in rendering the Opinion concerning these rejections.
We have considered the arguments raised by Owner in the Request for
Rehearing, but the arguments are not persuasive to find that the original
Opinion was in error. Based on the record before us now and in the original
appeal, we are still of the view that the Examiner did not err in rejecting the
claims 1–36.
We have granted the Request for Rehearing to the extent that we have
reconsidered our decision of September 29, 2014, but we deny the request
for hearing with respect to making any changes therein.

REHEARING DENIED

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FOR PATENT OWNER:

Cooley, LLP
Attn: Patent Group
Suite 700
1299 Pennsylvania Ave., NW
Washington, DC 20004

FOR THIRD-PARTY REQUESTERS:

Kirupa Pushparaj
Perkins Coie, LLP
Patent- SEA
P.O. Box 1247
Seattle, WA 98111-1247