Ex Parte George

Patent Trial and Appeal Board

Sep 27, 2016

12708372 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121708,372 02/18/2010
15757 7590 09/29/2016
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross A venue
Suite 3600
Dallas, TX 75201-7932
FIRST NAMED INVENTOR
Moses Lynn George
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.
QLXX.P0713US/ll 403354 4318
EXAMINER
MUMMALANENI, MRUNALINI YERNENI
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOSES LYNN GEORGE 1
Appeal2015-004527
Application 12/708,372
Technology Center 2600
Before KRISTEN L. DROESCH, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The disclosed invention relates to systems and methods for providing
location data to users of mobile devices during wireless communications.
1 Appellant indicates the real party-in-interest is QUALCOMM
Incorporated. App. Br. 2.
Appeal2015-004527
Application 12/708,372
Spec. i11, Abstract. Representative claim 1, reproduced from the Claims
Appendix of the Appeal Brief, reads as follows (disputed limitations in
italics):
1. A mobile computing device, comprising:
a housing;
a display; and
a processmg circuit coupled with the display, the
processing circuit to:
initiate a wireless telephone communication with a second
mobile device,
wirelessly transmit a current location of the mobile
computing device to at least one server based at least in part on
initiation of the wireless telephone communication when an opt-
out preference is not set to the current location,
receive location data for the second mobile computing
device, the location data for the second mobile computing device
being determined based at least in part on a current location of
the second mobile computing device, and
display the location data for the second mobile computing
device, wherein the location data for the second mobile
compitting de-vice inclitdes:
a street address corresponding to the current location of
the second mobile computing device; and
at least one of a business name associated with the street
address or a point of interest name associated with one of the
street address or the current location of the second mobile
computing device.
REJECTIONS
Claims 1, 2, 4--20, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sheha et al. (US 2008/0188246 Al; published Aug. 7,
2008) ("Sheha") and Tsuchiya (US 2008/0090592 Al; published Apr. 17,
2008).
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Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sheha, Tsuchiya, and Scott et al. (US 2010/0203874 Al; published Aug. 12,
2010) ("Scott").
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sheha, Tsuchiya, and Book (US 2009/0197621 Al; published Aug. 6,
2009).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sheha, Tsuchiya, and Van Os et al. (US 2009/0325603 Al; published
Dec. 31, 2009).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Appeal Brief, the Examiner's Answer, and the arguments
in the Reply Brief. We disagree with Appellant's conclusions. Specific
findings and arguments are highlighted and addressed below for emphasis.
Claims 1. 2. 4-10. and 12-24
Appellant argues that Sheha fails to disclose "displaying a street
address corresponding to the current location of the second mobile
computing device," as recited in claim 1. See App. Br. 7-10, 12. Appellant
contends Sheha's Figure 5, item 32 and paragraph 42, relied upon by the
Examiner, discloses that identification information 32 identifies the caller by
the name and billing address of the telephone account holder, as with
traditional Caller-ID. See id. at 7, 9, 12; Reply Br. 4--5. Appellant further
asserts the name of the street provided in the identification information 32 is
missing from the driving route 29 and driving directions 35 depicted in
Figure 5, and other street names are instead provided. See App. Br. 7, 9-10,
12. Appellant contends the identification information 32 "cannot possibly
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correspond to" the map location 34 of the destination telephone number. Id.
at 7, 10, 12. Appellant also argues that "the 'driving directions 35' depicted
in Figure 5 only display street names and [a] final driving direction such as
'tum right on S[.] Madison Ave[.] and go North for 400 feet."' Reply Br. 4
(citing Sheha Fig. 5, element 35). Appellant contends "a street name alone,
however, is not the same as a 'street address corresponding to the current
location of the second mobile computing device."' Id.
Appellant also argues that the Examiner relies improperly on
Tsuchiya to teach or suggest "a point of interest name associated with one of
the street address or the current location of the second mobile computing
device," as recited in claim 1. See App. Br. 8. Appellant contends that
Tsuchiya's teaching that
the name of a nearby tram stop, which is transmitted to avoid
displaying the actual location or address of the device, as
disclosed by Tsuchiya, may not be fairly characterized as the
claimed "point of interest name associated with one of the street
address or the current location of the second mobile computing
device."
Id. at 8, 10, 12-13; see Reply Br. 6. Appellant contends transmitting a point
of interest name together with the address of the current location of the
mobile terminal is directly contrary to the purpose of Tsuchiya, and fails to
accomplish ensuring privacy of the user as taught by Tsuchiya. See App. Br.
10, 13; Reply Br. 6.
Appellant's arguments focus on the description of the location data of
claim 1. The location data recited in claim 1 as including
a street address corresponding to the current location of the
second mobile computing device; and at least one of a business
name; and at least one of a business name associated with the
street address or a point of interest name associated with one of
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the street address or the current location of the second mobile
computing device
merely describes the content type of the location data. Similar to claim 1,
the similar recitations in claims 9 and 15 merely describe the content type of
the additional location data.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
unpatentable over the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability); King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship."') (citations omitted).
The descriptions of the location data and additional location data
recited in claims 1, 9, and 15 are not functionally related to the display of the
mobile computing device recited in claim 1, the computer system executable
instructions recited in claim 9, and the server of the system recited in claim
15. The display of claim 1 and the server of claim 15 remain the same
structures regardless of the specific content type of the location data or
additional location data. Likewise, the computer system executable
instructions recited in claim 9 (i.e., "determine additional location data for
the first and second mobile devices based at least in part on the second
location data") are performed the same way regardless of the specific
content type of the additional location data. In this regard, claims 1, 9, and
15 are similar to the claim in Ngai. That the location data or additional
location data includes a street address and at least one of a business name or
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a point of interest does not change the display recited in claim 1, the
computer system executable instructions recited in claim 9, and the server
recited in claim 15. It merely describes a new, non-functional feature for the
device, system, and computer system executable instructions that already
exist.
To find that the disputed limitations of claims 1, 9, and 15 are entitled
to patentable weight would mean that each novel type of location data is
sufficient to warrant a separate patent even if the remainder of the claimed
invention is unchanged. This would result not only in Appellant's types of
location data distinguishing over the prior art, but would mean equally that
other types of location data would distinguish over the prior art. The King
and Ngai decisions, however, preclude such repeated patenting of a known
device, system, and executable computer system instructions by the mere
inclusion of novel non-functional descriptive material. See King Pharms.,
616 F.3d at 1279 ("The rationale behind this line of cases is preventing the
indefinite patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations."); cf In re Ngai, 367 F.3d at 1339 ("If we
were to adopt Ngai's position, anyone could continue patenting a product
indefinitely provided that they add a new instruction sheet to the product.").
We agree with, and adopt as our own, the Examiner's findings that the
combination of Sheha and Tsuchiya teach or suggest the subject matter of
independent claims 1, 9, and 15. See Final Act. 3-6; Ans. 2-11. We are not
persuaded by Appellant's arguments that the non-functional descriptive
material of the location data and additional location data distinguishes these
claims over the prior art. We further observe that, based on providing
driving directions of varying resolution 35, and depicting a final driving
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direction "tum right on S[.] Madison Ave[.] and go North for 400 feet," (see
Sheha i-f 42, Fig. 5), one with ordinary skill in the art at the time of the
invention would have recognized that Sheha's teaching of providing driving
directions of varying resolution would include providing an indication of the
house/building number with the street name (i.e., Madison Ave.) in place of,
or in addition to, the street name and "go ... 400 feet" in order to provide
additional resolution. We also observe that Appellant's argument that
transmitting a point of interest name together with the address of the current
location of the mobile terminal is directly contrary to the purpose of
Tsuchiya, and fails to accomplish ensuring privacy of the user as taught by
Tsuchiya is misplaced. See App. Br. 10, 13; Reply Br. 6. The intended
purpose of the secondary reference need not be preserved. Rather, the
proper question is whether the proposed modification would render the prior
art invention being modified (i.e., Sheha) unsatisfactory for its intended
purpose. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Accordingly, we sustain the rejection of independent claims 1, 9, and
15. Dependent claims 2, 4--8, 10, 12-14, and 16-24 are not separately
argued (see App. Br. 13, 15-16). Therefore, for the same reasons as claims
1, 9, and 15, we sustain the rejections of claims 2, 4--8, 10, 12-14, and 16-
24.
Claim 3
Appellant contends Scott does not teach the additional limitation
recited in dependent claim 3. App. Br. 15. Appellant's argument, however,
is conclusory, merely reciting the claim limitation, the teachings of Scott,
and stating that the two are not the same. Id. Nowhere does Appellant
explain why Scott's teaching of adding extended contact information, such
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as a street address, to an address book does not teach or suggest the
limitation "save at least a portion of the location data to a contacts
application," recited in claim 3. Rule 41.37 "require[s] more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellant instead contends Scott's teaching of adding extended
information to an address book does not teach or suggest the claimed
"location data for the second mobile computing device," recited in claim 1.
See App. Br. 15; Reply Br. 10-11. The Examiner, however, did not rely on
Scott in rejecting claim 1. The Examiner relied on the combination of Sheha
and Tsuchiya. See Final Act. 3. Thus, Appellant's argument does not
address the Examiner's rejection.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 3. Accordingly, we sustain the rejection of claim 3.
Claim 11
Claim 11 depends from independent claim 9 and recites "accessing a
database to identify the street address that corresponds to the current location
of the first mobile device and accessing the database to identify the street
address that corresponds to the current location of the second mobile
device." Appellant's arguments addressing the limitations of claim 11, are
nearly identical to the arguments presented for claims 1, 9, and 15.
Compare App. Br. 14, with App. Br. 7-13.
Appellant also argues that the online database and application server
(ODAS) 3 position information for the MAP caller-ID is disclosed to be a
"map location 34 of the destination telephone number. See Reply Br. 9
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(citing Sheha il 42). Appellant contends Sheha contains no disclosure
indicating the map location 34 is anything more than map coordinates, and
one skilled in the art would not be led to conclude that a street address of the
remote caller is looked up in a database in the course of generating driving
directions 35 because a destination street address is not actually displayed in
Sheha's driving directions. See id.
Similar to claims 1, 9, and 15, Appellant's arguments focus on the
description of the location data as a street address. The street addresses
recited in claim 11 merely describe the content type that that is accessed in
the database. For similar reasons as those explained above with respect to
claims 1, 9, and 15, we are not persuaded by Appellant's arguments that the
non-functional descriptive material of street addresses distinguishes these
claims over the prior art.
We agree with, and adopt as our own, the Examiner's findings that
Sheha further teaches or suggests the limitations of claim 11. See Final Act.
12; Ans. 8-9. We further observe that, based on Sheha's additional
teachings that the ODAS periodically updates each mobile device with the
other's position information to provide real time driving directions and route
information so the data is always accurate and reliable (see Sheha i-fi-150-51,
55), one with ordinary skill in the art at the time of the invention would have
further recognized that Sheha's real time driving directions of varying
resolution 35 (i.e., including a house/building number and street) are
obtained by accessing the ODAS to identify the house/building number and
street corresponding to the position information of the first mobile device
and the second mobile device.
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For the foregoing reasons, in addition to those reasons discussed
above addressing claims 1, 9, and 15, Appellant does not persuade us of
error in the Examiner's rejection of claim 11. Accordingly, we sustain the
rejection of claim 11.
DECISION
We AFFIRM the rejections of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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