Ex Parte Faith et al

Patent Trials and Appeals Board

Jul 3, 2019

12953368 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/953,368 11/23/2010 Patrick Faith
66945 7590 07/08/2019
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-788807 3352
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/08/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK FAITH, MARK CARLSON, A YMAN HAMMAD,
BEN REWIS, and KRIS KOGANTI
Appeal2018-000637
Application 12/953,368 1
Technology Center 3600
Before JUSTIN BUSCH, STACEY G. WHITE, and SCOTT B. HOW ARD,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(l) on May 20, 2019 ("Request"), seeking reconsideration of part
of our Decision on Appeal of March 22, 2019 ("Decision"). In that
Decision, we affirmed the Final Rejection of (1) claims 31, 32, 37--41, and
45--47 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sinclair
(US 2007/0188323 Al; published Aug. 16, 2007) in view of Zettner (US
7,669,759 Bl; issued Mar. 2, 2010), Fry (US 2007/0223476 Al; published
Sept. 27, 2007), and Galvin (US 7,861,985 B2; issued Jan. 4, 2011) and
1 Appellants identify Visa International Service Association as the real party
in interest. App. Br. 3.
Appeal2018-000637
Application 12/953,368
(2) claims 36 and 48 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over
Sinclair in view of Zettner, Fry, Galvin, and Lin (US 2007/0109672 Al; published
May 17, 2019).
ISSUES AND ANALYSIS
Appellants argue that our Decision "may have overlooked evidence of
record in support of Appellants' argument that the prior art reference Fry
(US 2007 /02234 7 6) teaches away from the claimed invention, and may have
misapprehended the scope of Appellants' teaching away argument."
Request 2. Specifically, Appellants point to evidence in the record that they
contends the Board overlooked in determining that acceleration information
is an example of gesture information. Id. at 2-3. Additionally, Appellants
argue that, although we found that "instead of criticizing or discourage [sic]
the use of acceleration information, Fry explicitly teaches using acceleration
information," (id. at 3 (citing Decision 8) (emphasis added in Request)),
Appellants' argument focused not on whether Fry teaches using acceleration
information, but that Fry teaches away from comparing gesture information
(id. at 3-5). According to Appellants, Fry criticizes comparing gesture
information, including acceleration information, of two devices. Request 5.
Appellants' teaching away argument is premised on the assertion that
acceleration information is an example of gesture information. See App.
Br. 11; Reply Br. 4. The entirety of the argument from the Appeal Brief is
reproduced below:
As discussed above, communications between two
devices in Fry are accomplished "without the need to compare
gesture information between devices in order for communication
to occur between two devices." (Fry, para. [0020]. Moreover,
Fry explicitly disparages the comparison of gesture information
2
Appeal2018-000637
Application 12/953,368
(e.g., acceleration information) to pair devices as adding
unnecessary processing overhead. Specifically, para. [0005] of
Fry states: "prior uses of synchronous gestures require that some
form of gesture information be contributed by each device and
brought together for comparison. This necessary comparison
step adds unnecessary processing overhead to the device or
devices performing the comparisons." Thus, one looking at the
teachings of Fry would not have combined the references as
proposed in the Final Office Action, because Fry discourages
comparing acceleration information. Accordingly, the rejection
under 35 U.S.C. § 103 should be reversed for this additional
reason.
App. Br. 11 (emphasis added). The Reply Brief also contained a single
paragraph discussing the teaching away argument, which, like the Appeal
Brief, indicated that acceleration data was a type of gesture information:
As pointed out on page 11 of the Appeal Brief, Fry
criticizes systems that require a comparison of gesture
information (i.e., acceleration data from sensors). For example,
para. [0005] of Fry states that "[o]ne drawback is that none of the
described methods are scalable . . . In addition, prior uses of
synchronous gestures require that some form of gesture
information be contributed by each device and brought together
for comparison. This necessary comparison step adds
unnecessary processing overhead to the device or devices
performing the comparisons." Para. [0006] of Fry also states that
it would be advantageous to eliminate "the need to compare
gesture information between devices in order for
communications to occur between two devices." As such, one
reading the disclosure of Fry would be discouraged from using a
comparison of acceleration data to establish communications
between devices, because such technique "adds unnecessary
processing overhead" and is not scalable according to Fry.
Reply Br. 4 ( emphasis added).
As we determined in the Decision, "Appellants provide no evidence to
support the argument that acceleration information is a type of gesture
3
Appeal2018-000637
Application 12/953,368
information." Decision 8. Instead, Appellants simply provided ipse dixit
attorney argument, which is entitled to little weight. Id.
In the Request, Appellants now rely on paragraphs 26 and 27 of Fry to
show that tapping is a type of gesture information. See Request 3.
Appellants, however, did not rely on those paragraphs in their briefs (see
Req. 3 ns. 2, 3 (citing Answer and Decision-but not the Appeal Brief or
Reply Brief-as support)), and thus, we could not have overlooked that
evidence. 2 Accordingly, we maintain our determination that Appellants'
arguments are based on unsupported attorney argument.
Moreover, because the remainder of Appellants' Request is dependent
on our determining that acceleration information is a type of gesture
information (see Request 3-5), we do not find that argument persuasive.
CONCLUSION
For the above reasons, Appellants' contentions have not persuaded us
of error in our Decision and Appellants' Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
DENIED
2 We have reviewed the three paragraphs cited in the Appeal Brief and the
Reply Brief-Fry paragraphs 5, 6, and 20. Although those paragraphs
discuss gesture information, the term "acceleration" is not mentioned.
4