Ex Parte Fitzgerald et al

Patent Trial and Appeal Board

Feb 10, 2017

13189367 (P.T.A.B. Feb. 10, 2017)

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.
13/189,367 07/22/2011 William Fitzgerald 101908.00044 1032
23619 7590 02/14/2017
Snnire Patton Rnaas (HSR T T P
EXAMINER
1 E. Washington Street
Suite 2700
NGUYEN, NAM V
Phoenix, AZ 85004 ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
phxip @ squirepb .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM FITZGERALD, PETER BERMINGHAM,
FRANK HANNIGAN, and PAUL PRENDERGAST
Appeal 2016-003893
Application 13/189,367
Technology Center 2600
Before KRISTEN L. DROESCH, CATHERINE SHIANG and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 5—12 and 14—18, which are all the claims pending and
rejected in the application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Claim 13 is not before us, as it is objected to for being dependent from a
rejected based claim, but allowable if rewritten as an independent claim.
Ans. 10.
Appeal 2016-003893
Application 13/189,367
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
assessing and mitigating insurance risk. See generally Spec. 1. Claim 5 is
exemplary:
5. A method, comprising:
analyzing a location of an insured mobile device
associated with an entity;
determining a risk level associated with the location of
the insured mobile device; and
generating an insurance risk profile for the entity based
on the location and risk level.
REFERENCES AND REJECTIONS
Claims 5—12 and 14—18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Payne (US 2008/0127313 Al; pub. May 29, 2008)
and Bauer (US 8,090,598 B2; iss. Jan. 3, 2012).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Payne teaches “determining a
risk level associated with the location of the insured mobile device,” as
recited in independent claim 5 (emphasis added).2 See App. Br. 4—5; Reply
Br. 2-3.
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2
Appeal 2016-003893
Application 13/189,367
The Examiner cites Payne’s paragraphs 27 and 32, and Figures 8—10
for teaching the disputed claim limitation, and finds Payne teaches
“determining the dynamic insurance rates respective to the device (106) and
respective users.” Final Act. 7. Appellants argue that Payne does not teach
determining a risk level associated with the location, as required by the
claim (App. Br. 11—12), but the Examiner does not address Appellants’
arguments.
We have reviewed the cited Payne portions, and they do not discuss
“determining a risk level associated with the location of the insured mobile
device,” as required by the claim (emphasis added). Absent further
explanation, the Examiner has not persuaded us the cited Payne portions
teach the disputed claim limitation.3 Further, as applied by the Examiner,
Bauer’s teachings do not remedy the deficiencies of Payne noted above. See
Final Act. 7—8; Ans. 5—6.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 5.
We also reverse the Examiner’s rejection of dependent claims 6—12
and 14—18, which depend from claim 5.
DECISION
We reverse the Examiner’s decision rejecting claims 5—12 and 14—18.
REVERSED
3 In the event of further prosecution, we leave it to the Examiner to
determine whether Bauer teaches “determining a risk level associated with
the location” of an insured object (Bauer 6:59—7:4).
3