Ex Parte Fiatal

Patent Trial and Appeal Board

Dec 19, 2013

11729314 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TREVOR FIATAL
____________________

Appeal 2011-001618
Application 11/729,314
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, JOSEPH L. DIXON, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has filed an Amendment in response to our Decision on
Appeal under 37 C.F.R. §41.50(b). However, Appellant’s Amendment is
not appropriate and has been treated as a Request for Rehearing under
MPEP §1214.01. We have considered the arguments presented by
Appellant’s Amendment, but we are not persuaded. As such, we decline to
change our Decision in view of Appellant’s arguments.
Appeal 2011-001618
Application 11/729,314

2

ANALYSIS
As an initial matter, we note that Appellant’s Amendment was filed
on October 22, 2013 in response to our Decision on Appeal under 37 C.F.R.
§41.50(b) mailed August 22, 2013. In that Decision, we reversed the
Examiner’s final rejection of claims 1-18, 21-25, and 27-29 under 35 U.S.C.
§ 103(a) as being unpatentable over Kucharewski, Harris, and Torvinen, but
issued a new ground of rejection of claims 1-18, 21-25, and 27-29 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. However, Appellant’s Amendment in response to
our Decision added new claim 30 without either amending the rejected
claims, or substituting new claim 30 for the rejected claims in violation of
MPEP §1214.01. As such, Appellant’s Amendment is deemed improper.
Consequently, new claim 30 will not be entered, and the Amendment will be
considered as a Request for Rehearing under 37 C.F.R. § 41.52.
37 C.F.R. § 41.52 states in relevant part:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) [i.e., based upon a recent relevant decision of
either the Board or a Federal Court] and (a)(4) [i.e., responding
to a new ground of rejection made pursuant to § 41.50(b)] of
this section.

37 C.F.R. § 41.52(a)(1) (emphasis added.)
New arguments responding to a new ground of rejection
designated pursuant to § 41.50(b) are permitted.

Appeal 2011-001618
Application 11/729,314

3

37 C.F.R. § 41.52(a)(3) (emphasis added.)
In the Decision on Appeal under 37 C.F.R. §41.50(b), the Board
issued a new ground of rejection of claims 1-18, 21-25, and 27-29 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. In particular, Appellant’s independent claims 1, 23,
and 27 recite the following relevant limitations:
associating the tag with . . . a preferred communication
medium for each of the one or more individuals; and
. . .
sending tagged messages to the one or more individuals
using the preferred communication medium of each of the one
or more individuals associated with the tag

unless the physical location of the one or more
individuals suggests that the preferred communication medium
would be unsuccessful in contacting the individual, whereupon
the tagged messages are sent to the one or more individuals
using an alternative communication medium, the physical
location of the one or more individuals automatically
determined without input of the one or more individuals.

Claims 1, 23, and 27 (emphasis added.)
Thus, based on the plain language of Appellant’s claims 1, 23, and 27,
tagged messages are sent over a preferred communication medium unless
there is a suggestion the message would be unsuccessful. Particularly, the
claims appear to first require an assessment of a physical location without
input from the individuals, a determination of whether the preferred medium
would be unsuccessful and if so an alternative medium is to be used.
Our Decision cited ¶ [0028] of Appellant’s Specification as the closest
support for the limitations above:
Appeal 2011-001618
Application 11/729,314

4

As disclosed in U.S. patent application 11/607,620 titled
"Location-Based Operations and Messaging," filed December
1, 2006 (the disclosure of which is incorporated by reference),
processor 150 may also use the individual's location as may be
determined by GPS and/or A-GPS, to determine the
communication medium most likely to be successful at
contacting the individual. Processor 150 may use any of a
variety of factors, independently or in conjunction with each
other, to determine the most effective medium of
communication for reaching the contact.
Decision, page 6 (citing Appellant’s Spec. ¶ [0028] (emphasis added).)
In other words, Appellant’s Specification only describes sending
tagged messages to one or more individuals in a group, via a communication
medium that is mostly likely and successfully to contact that individual,
based on location information. Spec. ¶ [0028]. Appellant’s Specification
does not describe or require the use of a default preferred communication
medium “unless” a specific condition exists, i.e., unless there is a suggestion
it would not be successful, as recited in Appellant’s claims 1, 23, and 27.
In response to our Decision, Appellant additionally cites ¶ [0005] of
the Specification for support of the claimed feature:
Further, contact information for each individual may
include a variety of communication media, including short
message service (SMS) text messaging, instant messaging (IM),
and/or electronic mail (e-mail). In some instances, an
individual may utilize multiple SMS messaging services, IM
services, and/or e-mail providers. The variety of available
communication media in conjunction with multiple service
offerings thereof offers the advantage of options and
alternatives should any of the one or more of the media fail to
Appeal 2011-001618
Application 11/729,314

5

provide prompt access to the individual. The information
concerning the various communication media, as well as the
information concerning each individual’s group affiliation, is
saved in the contacts database. Notwithstanding, such a
comprehensive database complicates the process of managing
and retrieving information.
Amendment, pages 8-9 (citing Appellant’s Spec. ¶ [0005] (emphasis
added).)
However, this portion of Appellant’s Specification only provides a
basis for using alternative mediums after one or more other mediums fail. In
contrast, Appellant’s claims 1, 23, and 27 are forward looking, accessing
whether there is a suggestion that a preferred communication medium
“would” fail, and not whether it has already failed. According to
Appellant’s claims 1, 23, and 27, this prediction/suggestion is based on the
physical location of the individual.
These two methods are distinct. The claimed features are based on a
prediction related to physical location, whereas ¶ [0005] of Appellant’s
Specification is based on an already occurred failure.
For the reasons set forth above, Appellant has not identified error in
our new ground of rejection, and we decline to modify our Decision
rejecting claims 1-18, 21-25, and 27-29 under 35 U.S.C. § 112, first
paragraph, for failing to describe or provide support for the claimed features.

Appeal 2011-001618
Application 11/729,314

6

CONCLUSION
We have considered the arguments raised by Appellant in the
Request, but find none of these arguments persuasive that our original
Decision was in error. This Decision on Appellant’s “Request for
Rehearing” is deemed to incorporate our earlier Decision by reference. See
37 C.F.R. § 41.52(a).

DECISION
We have granted Appellant’s Request to the extent that we have
reconsidered our Decision, but we decline to grant the relief requested. Our
Decision rejecting claims 1-18, 21-25, and 27-29 under 35 U.S.C. § 112,
first paragraph, is MAINTAINED.

REHEARING DENIED

cdc