Ex Parte Al-Khudairy et alDownload PDFPatent Trial and Appeal BoardJun 29, 201613044259 (P.T.A.B. Jun. 29, 2016) Copy Citation 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. 13/044,259 03/09/2011 BASHAR NAZIH AL-KHUDAIRY 23588.38 1480 37833 7590 06/30/2016 LITMAN LAW OFFICES, LTD. PATENT LAW BUILDING 8955 CENTER STREET MANASSAS, VA 20110 EXAMINER ALLEN, WILLIAM J ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 06/30/2016 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 BASHAR NAZIH AL-KHUDAIRY, ABDUL-AZIZ RASHID AL-AZMI, and ABDULRAHMAN RASHID ALAZMI ____________ Appeal 2014-0054411 Application 13/044,2592 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and ROBERT J. SILVERMAN, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 6–20. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM. 1 Our decision refers to the Appellants’ Appeal Brief (“Br.,” filed Dec. 23, 2013), and the Examiner’s Final Office Action (“Final Act.,” mailed July 23, 2013) and Answer (“Ans.,” mailed Jan. 23, 2014). 2 According to Appellants, the real party in interest is Kuwait University (Appeal Br. 2). Appeal 2014-005441 Application 13/044,259 2 Introduction Appellants’ disclosure relates to “wireless communication systems, and more specifically to a system and method for wireless reservation and ordering from a mobile device.” (Spec. ¶ 1). Claims 6 and 18 are the independent claims on appeal. Claim 6, reproduced below, is illustrative of the subject matter on appeal: 6. A computer-implemented mobile wireless reservation and ordering method, comprising the steps of: providing a database server, in operation, the server running a relational database management system (RDBMS); providing a relational database managed by the RDBMS, the database having stored thereon information describing a plurality of products and services locally available; operably connecting the relational database to a wireless local network, the products and services being location-based in proximity to the wireless local network; automatically translating a user order for at least one of the products and services into an SQL language query to the relational database, the order being user-selected from a menu on a mobile device and wirelessly transmitted from the mobile device to the relational database; automatically formulating a result to the query, the result including confirmation of availability of the order and confirmation of a reservation time of the order; and wirelessly transmitting the query result for display on the user’s mobile device. (Br., Claims App.) Rejections on Appeal The Examiner maintains, and the Appellants appeal, the following rejections: I. Claims 18–20 stand rejected under 35 U.S.C. § 112 (pre- AIA), second paragraph. Appeal 2014-005441 Application 13/044,259 3 II. Claims 6, 7, 11–14, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rose (US 2008/0010105 A1, pub. Jan. 10, 2008) and Eckhoff- Hornback (US 8,065,353 B2, iss. Nov. 22, 2011). III. Claims 8–10, 15–17, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rose, Eckhoff- Hornback, and PTO form 892 reference V (hereinafter, “the 892V reference”). IV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rose, Eckhoff-Hornback, and Orenstein (US 2011/0178827 A1, pub. July 21, 2011). ANALYSIS Independent claim 18 and dependent claims 19 and 20 Claims 18–20 stand rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention (see Final Act. 2–3, 5). The Examiner determines that claims 18–20 recite several “means” limitations, which are subject to 35 U.S.C. § 112 ¶ 6, but which lack a clear association to structure set forth in the Specification (id. at 5–6). In particular, the Examiner provides analysis of the following limitations of independent claim 18: means for serving a relational database ... means for operably connecting the relational database to a wireless local network ... means for formulating a query ... means for formulating a result ... Appeal 2014-005441 Application 13/044,259 4 (Final Act. 5). The Examiner does not provide analysis of any further recitations of dependent claims 19 and 20. The Examiner further states that, assuming for the sake of argument that the means refers to software (e.g., servlet, AppGini, and mobile application), the Specification provides only generic descriptions thereof rather than providing underlying algorithms or programming (Ans. 13–14; Final Act. 2–3, 6). However, Appellants make reference to amended claims as the “means” limitations identified by the Examiner were modified by amendment of July 1, 2013. Further, Appellants assert the mapping of the “means” limitations of claim 18 to the Specification as follows: means (database server 128) for allowing storage, update and retrieval of information to and from a relational database 130; means (application server 110 and web server 100) for providing a wireless local network in operational communication with the relational database 130; means (a mobile device 20 and mobile application 22) for entering a query of the relational database 130; and means (WLAN 24) for wirelessly transmitting a result to the query for display on the user’s mobile device 20 (see Br. 6–8). Based on the mapping provided by Appellants, we are satisfied that the Specification sets forth structures that correspond to the recited “means” limitations, and, as such, are persuaded this mapping would be reasonably clear to a person of ordinary skill in the art. Further, the Examiner’s concerns regarding software are not directly applicable in view of Appellants’ reliance on a combination of servers, a mobile device, and mobile application 22. Paragraph 45 of the Specification identifies mobile application 22 as Midlet. In this connection, Appellants are not relying on a generic computer without algorithms. Appeal 2014-005441 Application 13/044,259 5 We, therefore, do not sustain the Examiner’s rejection under 35 U.S.C. § 112 (pre-AIA), second paragraph, of independent claims 18 and dependent claims 19 and 20. Rejections II and IV (Obviousness) Independent claims 6 and 18 and dependent claims 11–13 and 19 First, we are unpersuaded by Appellants’ argument that the prior art relied on by the Examiner fails to disclose information regarding products and services based on location, as recited by independent claim 6, i.e., “database having stored thereon information describing a plurality of products and services locally available” (see Br. 10). The Examiner relies on Rose (¶¶ 40, 48, 89 & Figs. 4, 5A, 25) for a database of products and services searchable based on the input of location information such as city and state (Ans. 15). In particular, the Examiner relies on database 13 of Figure 4 (id.). We agree with the Examiner’s findings. Paragraph 89 of Rose (discussing Figure 4) discloses that database 13 contains the address for each merchant. Further, Figure 6A depicts a computer screen for entering a query of the search database, whereby a restaurant search may be conducted based on a city, state, date, and type of cuisine. Second, we are unpersuaded by Appellants’ argument that the prior art relied on by the Examiner fails to disclose location based on proximity to a wireless network, as recited by independent claim 6, i.e., “operably connecting the relational database to a wireless local network, the products and services being location-based in proximity to the wireless local network” (Br. 10). The Examiner relies on Rose in combination with Eckhoff-Hornback. The Examiner finds that Eckhoff-Hornback (col. 2, ll. Appeal 2014-005441 Application 13/044,259 6 33–7, col. 3, ll. 58–61, col. 4, ll. 1–3, col. 4, ll. 25–29, col. 5, ll. 10–13, col. 6, ll. 34–41, col. 6, ll. 49–56, Fig. 2) discloses a customer terminal search system including searching products and services that are location-based in proximity to the wireless local network (Final Act. 10; Ans. 17). Indeed, Eckhoff-Hornback (col. 6, ll. 34–41) discloses that a computer may tell a customer whether an item is in the store, identifying the aisle and row of the item, or may direct the customer to a nearby store for an item. This is within the meaning of location based on proximity to a network. Third, we are unpersuaded by Appellants’ argument that Eckhoff- Hornback’s database is static and does not change with the user’s location (Br. 10). Although Appellants may have had in mind a feature of a dynamically-changing database, this is not a distinction which Appellants have written into their claims. In any event, Eckhoff-Hornback does disclose that the customer search functionality may be provided for use on a mobile phone (col. 3, l. 3). As such, we agree with the Examiner that it would have been obvious to a person of ordinary skill in the art to modify the location database search of Rose with the proximity search of Eckhoff-Hornback, on a stationary computer or on a mobile phone, to conduct a search for a product or service. Fourth, we are unpersuaded by Appellants’ argument that Rose and Eckhoff-Hornback are non-analogous art (Br. 10). We agree with the Examiner that Rose and Eckhoff-Hornback are both directed to the problem of improving location-based commerce, and are therefore reasonably pertinent to the particular problem with which Appellants were concerned (see Ans. 16). We also agree that Rose and Eckhoff-Hornback are within the field of electronic commerce (id.). Appeal 2014-005441 Application 13/044,259 7 Fifth, we are unpersuaded by Appellants’ argument that the combination of Rose and Eckhoff-Hornback is based on impermissible hindsight (Br. 10). Rather, we agree with the Examiner that a person of ordinary skill would have been motivated to use the system of Eckhoff- Hornback to improve the location services of Rose (Ans. 16). For these reasons, we sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claim 6. Appellants do not argue the rejection under 35 U.S.C. § 103(a) of claims 11–13 separately from that of independent claim 6, from which they depend. We sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 11–13, for similar reasons as for independent claim 6. Appellants do not argue the rejection under 35 U.S.C. § 103(a) of independent claim 18 separately from that of independent claim 6. We sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claim 18, for similar reasons as for independent claim 6. Appellants do not argue the rejection under 35 U.S.C. § 103(a) of claim 19 separately from that of independent claim 18. We sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claim 19, for similar reasons as for independent claim 18. Dependent claim 7 We are unpersuaded by Appellants’ argument that Rose fails to disclose “establishing within said database a weak entity relationship between a dominant entity representing a provider of at least one of said products and services and a weak entity representing an item that provider has locally available,” as recited by dependent claim 7 (Br. 13). In Appeal 2014-005441 Application 13/044,259 8 particular, Appellants argue that Rose’s table is not a provider of products and services and therefore not a dominant entity (Br. 13). However, the Examiner finds that the eShock service provider of Rose is a dominant entity which provides products and services (Ans. 17 (citing Rose ¶¶ 74, 80 & Figs. 4, 10, 16, 17, 19A)). We agree. For example, Figure 17 depicts a restaurant’s availability for table reservations. We, therefore, sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claim 7. Dependent claim 14 We are unpersuaded by Appellants’ argument that Rose fails to disclose a third party filtering application, as recited by independent claim 14, i.e., “providing a third party query filtering application accessible via web pages available from said web server, thereby allowing administrative users to maintain said relational database without utilizing complex query statements.” The Examiner correctly finds that the eShock server/application meets the “third party filtering application” limitation (Ans. 17–18 (citing Rose ¶¶ 52, 71–74, 76, and Figs. 4, 14–17)). For example, paragraph 52 of Rose describes how merchants each maintain a separate database. We, therefore, sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claim 14. Appeal 2014-005441 Application 13/044,259 9 Rejection III (Obviousness) Dependent claims 8–10, 15–17, and 20 Appellants argue the patentability of claims 8–10, 15–17, and 20 together. We select claim 8 as representative. As such, claims 9, 10, 15–17, and 20 stand or fall with claim 8. See 37 C.F.R. § 41.37(c)(1)(iv). We are unpersuaded by Appellants’ argument that the 892V webpage article on franchising is non-analogous art, or that the combination of references is based on hindsight (see Br. 14). Rather, we agree with the Examiner that the article on franchising is reasonably pertinent to the problem of business participation addressed by the Appellants (see Final Act. 13–14; Ans. 18). A person of ordinary skill in the art of business would have been aware of franchising as an example of business participation in a database of local entities. We agree with the Examiner that a person of ordinary skill would have combined the teachings of the 892V reference with the location services of Rose and Eckhoff–Hornback in order to achieve greater control and consistency over marketing message (see Final Act. 13). We, therefore, sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 8–10, 15–17, and 20. DECISION The Examiner’s decision to reject claims 18–20 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s decision to reject claims 6–20 under 35 U.S.C. § 103(a) is affirmed. Appeal 2014-005441 Application 13/044,259 10 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 Copy with citationCopy as parenthetical citation