Ex Parte Etchegoyen

Patent Trial and Appeal Board

Aug 29, 2016

13657859 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/657,859
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
10/22/2012
08/31/2016
FIRST NAMED INVENTOR
Craig S. Etchegoyen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UN-NP-M0-076 1443
EXAMINER
HOANG, HIEU T
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal2015-005516
Application 13/657,859
Technology Center 2400
Before LINZY T. McCARTNEY, NORMAN H. BEAMER, and
JOYCE CRAIG, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1--4, 11, 16, and 17. Claims 5-10 and 12-15 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-005516
Application 13/657,859
STATEMENT OF THE CASE
The present patent application concerns "methods of and systems for
facilitating social networking through portable, personal, computing devices
that are in relatively close physical proximity to one another." Spec. i-f 2.
Claim 1 illustrates the claimed subject matter:
1. A method for facilitating a local area social network
between two or more computing devices, the method
compnsmg:
receiving a message from a sending one of the computing
devices through a local area network;
identifying one or more recipient ones of the computing
devices by:
determining that the recipient computing devices
are connected through the local area network,
determining that the recipient computing devices
are specified by a delivery specification of the message,
and
determining that the recipient computing devices
are receptive to receiving the message; and
sending the message to the recipient computing devices.
REJECTIONS
Claims 1, 2, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Li et al. (US 2003/0182428 Al; Sept. 25, 2003) ("Li").
Claims 3, 4, 16, and 17 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Li and W eksel (US 200710124689 A 1; May 31, 2007)
("W eksel").
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Application 13/657,859
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments, and we disagree with Appellant that the Examiner erred. To the
extent consistent with the analysis below, we adopt the Examiner's findings,
reasoning, and conclusions set forth in the appealed action and the Answer.
Appellant has waived arguments Appellant failed to raise in the briefs. See
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); 37
C.F.R. § 41.41(b)(2).
Claim 1 and 11
Claims 1 and 11 recite in relevant part "determining that the recipient
computing devices are receptive to receiving the message." App. Br. 23, 25.
(emphasis added). The Examiner concluded that the broadest reasonable
interpretation of "receptive to receiving" includes "capable of receiving."
See Final Act. 2; Advisory Act. 2; Ans. 2. Applying this interpretation, the
Examiner found Li's teaching of determining whether a user is online and
therefore capable of receiving messages discloses "determining that the
recipient computing devices are receptive to receiving the message." See
Final Act. 2; Advisory Act. 2; Ans. 2.
Appellant argues the Examiner's construction of "receptive to
receiving" is unreasonably broad because "in the prosecution history
[Appellant] previously disclaimed the Examiner's interpretation of
'receptive to receiving' from the scope of the claims." Reply Br. 2-3. In
particular, Appellant asserts "[Appellant] previously affirmed by positive
admission in the prosecution history that 'receptive to receiving' denotes an
expressed desire to receive with respect to, e.g., particular types of content
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Application 13/657,859
and/or expected source of such content." App. Br. 8. Moreover, Appellant
contends the Examiner's construction is at odds with the specification and
the plain language of claims 1 and 11. See App. Br. 9-15. Appellant asserts
several specification paragraphs "operationally define[] 'receptive to
receiving"' in a manner consistent with expressing a desire to receive
content. See id. at 12-15 (quoting Spec. i-fi-127-30). Appellant also notes
that claims 1 and 11 recite "receptive to receiving," not "capable of
receiving." Id. at 11. According to Appellant, "to interpret otherwise would
render the phrase 'receptive to receiving' unhelpfully redundant and not in
accordance with [Appellant's] intention and teaching." Id.
We find Appellant's arguments unpersuasive. With respect to
Appellant's alleged prosecution history disclaimer, it is unclear Appellant
disclaimed the Examiner's interpretation. In Appellant's response to the
Examiner's final rejection of the claims at issue, Appellant stated "[a]s part
of the instant prosecution history applicant hereby declares that 'receptive to
receiving' denotes an expressed desire to receive with respect to, e.g.,
particular types of content and/ or expected sources of such content."
Response to Final Office Action 3, January 8, 2014. This statement does not
explicitly disclaim the Examiner's interpretation of "receptive to receiving,"
nor does the statement preclude "receptive to receiving" from having
additional meanings. Moreover, even assuming this statement amounts to a
disclaimer of the Examiner's interpretation of "receptive to receiving," "the
PTO is under no obligation to accept a claim construction proffered as a
prosecution history disclaimer, which generally only binds the patent
owner." Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir.
2014). We decline to accept Appellant's proffered disclaimer because
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Application 13/657,859
Appellant remains free to amend the claims to include Appellant's
interpretation of "receptive to receiving."
Instead, we give the pending claims their broadest reasonable
interpretation in light of the specification. In re Hyatt, 211F.3d1367, 1372
(Fed. Cir. 2000) ("[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification."). Here,
Appellant admits "the word 'receptive' generally denotes either a new raw
capability to receive or a determined desire to receive." App. Br. 8
(emphases modified). Therefore, the broadest reasonable interpretation of
"receptive to receiving" encompasses both a "capability to receive" and a
"determined desired to receive," unless the specification or the claims
explicitly limit the term to the latter construction. For the reasons discussed
below, we disagree with Appellant that either the specification or the claims
limit "receptive to receiving" in this manner.
The specification paragraphs relied upon by Appellant do not
"operationally define[] 'receptive to receiving"' as argued by Appellant.
These paragraphs simply describe examples of how a user can indicate that
he or she is receptive to receiving messages in particular embodiments. For
instance, paragraph 27 states that "[/]or example, the person can indicate that
she is receptive to receiving messages." Spec. i-f 27 (emphasis added). The
next two paragraphs respectively state "[i]n another embodiment, the person
may limit receptivity data to exclude messages" and "[i]n another
embodiment, the local area social networking server 112 may filter
messages." Id. i-fi-128-29 (emphases added). And while paragraph 30 does
not include similar qualifiers, this paragraph discloses that the server
referenced in paragraph 28 and 29 provides an interface that allows users to
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Application 13/657,859
specify demographic data and "what ways each user is receptive to messages
from others." Id. i-f 30. This paragraph does not define "receptive to
receiving," much less define the term in the manner argued by Appellant. In
any event, the specification explains that these portions of the specification
do not limit the invention: "The above description is illustrative only and is
not limiting. The present invention is defined solely be the claims which
follow . ... " Id. i-f 50.
The cited claims also fail to define "receptive to receiving." Claims 1
and 11 simply recite "determining that the recipient computing devices are
receptive to receiving the message." These claims do not explain what it
means to be "receptive to receiving" or limit the scope of this term. And
although Appellant asserts interpreting "receptive to receiving" as "capable
of receiving" would make "receptive to receiving" "unhelpfully redundant"
in these claims, we see nothing in the Examiner's interpretation of this term
that renders it redundant.
For the above reasons, we disagree with Appellant that the
Examiner's construction of "receptive to receiving" is unreasonably broad.
Accordingly, we sustain the Examiner's rejection of claims 1 and 11.
Because we agree with the Examiner's construction of "receptive to
receiving," we do not reach the Examiner's additional finding that Li
discloses "receptive to receiving" under Appellant's construction of the
term. See Ans. 3.
Claims 2--4, 16, and 17
For claims 2--4, 16, and 17, Appellant summarizes the prosecution of
the claims before the Examiner and requests we reverse the rejections of
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these claims based on their dependency from independent claim 1. See App.
Br. 15-21. Because we sustain the Examiner's rejection of claim 1 and
Appellant has not presented on appeal separate, persuasive patentability
arguments for claims 2--4, 11, 16, and 17, we also sustain the Examiner's
rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1--4, 11, 16, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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