Ex Parte Feinberg

Board of Patent Appeals and Interferences

Aug 26, 2010

09785095 (B.P.A.I. Aug. 26, 2010)

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.
09/785,095 02/16/2001 Paul H. Feinberg SONY 3.0-030 6178
530 7590 08/26/2010
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
08/26/2010 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)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL H. FEINBERG
____________

Appeal 2009-014778
Application 09/785,095
Technology Center 3600
____________

Before JOHN A. JEFFERY, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014778
Application 09/785,095

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-48. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Claim 32, reproduced below, is representative of the subject matter on
appeal.

32. A portable system for presenting information to a user
comprising:
a processor;
a positioning system;
input means for receiving information from a user;
a display;
a modem;
instructions executable by said processor, said instructions
comprising receiving a request for information from a user via said
input means; retrieving the geographic location of said positioning
system from said positioning system; sending said request and said
geographic location to a server via said modem; receiving from said
server requested information and location information, said requested
information being responsive to said request and said location
information being responsive to said geographic location; and
displaying said requested information and said location information
with a plurality of messages of a vendor to indicate a change in
location of the portable device with respect to the vendor.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hall US 6,026,375 Feb. 15, 2000

Appeal 2009-014778
Application 09/785,095

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Skillen WO 98/36366 A1 Aug. 20, 1998

The Examiner rejected claims 1-48 under 35 U.S.C. § 103(a) as being
obvious in view of Skillen and Hall.
Each of the independent claims 1, 11, 22, 32 and 41 require in one
form or another displaying or receiving at a portable device a plurality of
messages of a vendor to indicate a change in location of the portable device
with respect to the vendor.
The Examiner found with respect to this limitation that
… Hall teaches the user receiving a first message
about a local facility that can complete the order
(col. 9, lines 19-32) and a subsequent message
pertaining the current proximity of the local
facility based on the updated time of arrival taking
into account the user's current location in addition
to the current user's speed and traveled routes (col.
10, lines 6-12). It would have been obvious to a
person of ordinary skill in the art at the time of
Applicant's invention to have included in the
system of Skillen the teachings of Hall of a first
message of a vendor and a subsequent message of
the vendor indicating a change in proximity of the
user because such a modification would allow the
user to know exactly how far and how close the
user is getting to the local facility.
(Answer 4-5).
Appellant however argues:
… [I]n Hall the mobile device is used to provide
updated location information to the service
Appeal 2009-014778
Application 09/785,095

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provider (the SPAS of the SPS) and the service
provider uses the information to update the
customer's ETA. Therefore, no indication is
provided to the customer of a change in proximity
between the customer and the local facility.
Rather, an indication is provided to the service
provider of a change in proximity between the
customer and local facility.
(Appeal Br. 9).
A review of Hall at column 10 lines 6-12 reveals that a customer who
opts to maintain connection with the service provider’s agent system
(SPAS), continues to transmit customer location information to the SPAS.
In so doing, the portable device (used by the customer) does not receive
messaging to indicate a change in location of the portable device with
respect to the vendor, but rather sends such information to the
facility/vendor so that the vendor can have the order completed on the
arrival of the customer at the facility (col. 5, ll. 24-29). It is not apparent,
and the Examiner has not explained, how the proposed combination could be
modified using the teaching of Hall to cause the user station in Skillen to be
notified of a change in the user location with respect to a vendor.
In addition, the independent claims each also require two distinct
types of information be transmitted to the portable device namely, requested
information and location information. The requested information is
responsive to a content request unrelated to location, and the location
information, e.g., a banner advertisement, is responsive to the known
geographic location of the portable device. (Spec. ¶ [0023]). Hall only deals
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Application 09/785,095

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with location sensitive content based on the location of the portable device
relative to desired location sensitive service facilities (col. 9, ll.19-21).
Additionally, Skillen discloses a data processing device/customer device in
the context of a PC, and not a portable device (Skillen, p. 6, l. 12), which
would not lend itself to mobility during use.
We therefore will not sustain the rejection of independent claims 1,
11, 22, 32 and 41. Since claims 2-10, 12-21, 23-31, 33-40 and 42-48 depend
from one of claims 1, 11, 22, 32 and 41 and since we cannot sustain the
rejection of the independent claims, the rejection of dependent claims
likewise cannot be sustained.

CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-48.

DECISION
The decision of the Examiner to reject 1-48 is REVERSED.

REVERSED

Appeal 2009-014778
Application 09/785,095

6
MP

LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD NJ 07090