Ex Parte Etchegoyen

Patent Trial and Appeal Board

May 27, 2016

14188063 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/188,063
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
02/24/2014
06/01/2016
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-L0-133 5670
EXAMINER
VU,VIETD
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
Appeal2016-003054
Application 14/188,063
Technology Center 2400
Before HUNG H. BUI, NABEEL U. KHAN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejections of claims 1-5. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.2
1 According to Appellant, the real parties in interest are Uniloc Luxembourg
S.A., and Uniloc USA, Inc.
2 Our Decision refers to Appellant's Appeal Brief filed Aug. 21, 2015
("App. Br."); Reply Brief filed Jan. 19, 2016 ("Reply Br."); the Examiner's
Answer mailed Nov. 19, 2015 ("Ans."); Final Office Action mailed Mar. 31,
2015 ("Final Act."); and original Specification filed Feb. 24, 2014 ("Spec.").
Appeal2016-003054
Application 14/188,063
STATEMENT OF THE CASE
Appellant's Invention
Appellant describes the invention as directed to location-based
services and methods for delivery of information to a user device based on:
(1) the current location and (2) the location history of the device. Spec i-f 2.
According to Appellant, the location history of the user device is analyzed to
periodically predict future locations of the device and the likelihood for the
device to be at certain future locations is ascertained so that information can
be sent to a user device based on predicted future locations of the device. Id.
at i-f 5. Independent claim 1 is illustrative of the invention, as reproduced
below with disputed limitations emphasized:
1. A method for delivering information to two or more user
devices, the method comprising:
retrieving the information from one or more data records
that associate the information with one or more predetermined
locations, a predetermined maximum amount of time, a
predetermined likelihood, and one or more predetermined
actions; and
for each of the two or more user devices:
predicting whether the user device will be at any of
the one or more predetermined locations within the
predetermined maximum amount of time with at least the
predetermined likelihood; and
in response to the predicting that the user device will
be at any of the one or more predetermined locations
within the predetermined maximum amount of time with
at least the predetermined likelihood, performing the one
or more predetermined actions;
wherein at least one of the actions includes
delivering the information to the user device.
App. Br. 10 (Claims App'x).
2
Appeal2016-003054
Application 14/188,063
Examiner's Rejection
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tseng (U.S. Publication 2013/0036165 Al; Feb. 7, 2013)
and Nasu (U.S. Publication 2005/0249175 Al; Nov. 10, 2005). Final Act.
2-3.
ISSUE
Based on Appellant's arguments, the dispositive issue on appeal is
whether the Examiner's combination of prior art references teaches or
suggests the limitation "predicting whether the user device will be at any of
the one or more predetermined locations within the predetermined maximum
amount of time with at least the predetermined likelihood" as recited in
claim 1. App. Br. 5-8; Reply Br. 3-5.
ANALYSIS
With respect to independent claim 1, the Examiner finds Tseng
teaches Appellant's method for delivering information to two or more user
devices including "retrieving the information from one or more data records
that associate the information with one or more predetermined locations, a
predetermined maximum amount of time (i.e., delivery time ranges), a
predetermined likelihood (i.e., user interests)" and "determining whether the
user device will be at any of the one or more predetermined locations within
the predetermined maximum amount of time with at least the predetermined
likelihood." Final Act. 2-3 (citing Tseng i-fi-150, 53). The Examiner
acknowledges Tseng does not teach "predicting user locations" but relies on
Nasu as teaching this feature, i.e., a method for predicting future locations of
3
Appeal2016-003054
Application 14/188,063
a mobile device based on past location history for delivering information to
the mobile device, in order to support the conclusion of obviousness. Id. at 3
(citing Nasu i-f 69).
Appellant disputes the Examiner's factual findings regarding Tseng.
In particular, Appellant argues: (1) Tseng does not teach or suggest
Appellant's claimed "predetermined likelihood"; (2) Tseng's disclosure of
"user interest" is not the same as Appellant's claimed "predetermined
likelihood"; (3) Nasu does not teach or suggest any "predetermined
likelihood" for any of the predicted times; and, as such, (4) neither Tseng
nor Nasu teaches or suggests any "predetermined likelihood" or, in
particular, Appellant's claimed "predicting whether the user device will be at
any of the one or more predetermined locations within the predetermined
maximum amount of time with at least the predetermined likelihood" as
recited in claim 1. App. Br. 5-8; Reply Br. 3-5.
The Examiner responds that the term "predetermined likelihood" can
be interpreted to encompass not only Tseng's disclosure of a user's interest
as originally cited, but also the computed "interest value" or "relevance
score" as disclosed in paragraphs 53-54 of Tseng. Ans. 4.
We disagree with the Examiner. During examination, claim terms are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). However, "the proper BRI construction is not just the broadest
construction, but rather the broadest reasonable construction in light of the
specification." In re Man Mach. Interface Techs. LLC, No. 2015-1562, 2016
WL 1567181, at *3 (Fed. Cir. 2016), citing Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) ("A construction that is
4
Appeal2016-003054
Application 14/188,063
unreasonably broad and which does not reasonably reflect the plain language
and disclosure will not pass muster.") (internal quotation marks and citations
omitted).
In this case, the term "predetermined likelihood" is recited in
Appellant's claim 1 in the context of "predicting whether the user device
will be at any of the one or more predetermined locations within the
predetermined maximum amount of time [with at least the predetermined
likelihood]." In that context and in the context of Appellant's Specification,
the "predetermined likelihood" refers to the probability or the percentage
likelihood that a mobile device will be at a predicted location in the future.
See Spec. i-f 41.
For example, the user of user device 102A might have lunch at
the same place at least three (3) days each work week -
typically at about 12:30pm. If the current time is 12:00pm and
it is currently a work week day, server 106 can determine that
the likelihood of user device 102A going to that same place
\'l1ithin the next hour to be three in five, or 60%.
Id. (emphasis added).
In contrast to Appellant's claimed "predetermined likelihood,"
Tseng's disclosure of a user's interest refers to a user's personal preference
of different categories (e.g., shopping items), as Appellant explains. App.
Br. 6 (citing Tseng i-f 50). Similarly, the computed "interest value" or
"relevance score" as disclosed by Tseng refers the combination of scores
calculated for each of the different categories of users' interests in the
context of social networking systems. Neither the computed "interest value"
nor the "relevance score" as disclosed by Tseng describes the likelihood of a
user device will be at a predicted location in the future. As such, and
5
Appeal2016-003054
Application 14/188,063
because N asu' s disclosure also does not teach or suggest any likelihood of
prediction, we do not agree with the Examiner that Appellant's claimed term
"predetermined likelihood" can be broadly interpreted to encompass either
the computed "interest value" or the "relevance score" as disclosed by
Tseng.
"[O]bviousness requires a suggestion of all limitations in a claim."
CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). In light of the
Examiner's incorrect interpretation of Appellant's claimed term and in the
absence of a teaching or suggestion of all limitations of claim 1, we do not
sustain the Examiner's obviousness rejection of claim 1.
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1-5 under 35 U.S.C. § 103(a).
DECISION
As such, we REVERSE the Examiner's Final Rejection of claims 1-5.
REVERSED
6