Ex Parte Gorti et al

Patent Trial and Appeal Board

Jun 20, 2017

10898145 (P.T.A.B. Jun. 20, 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.
LB 1053 1760
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
10/898,145 07/23/2004
84326 7590 06/21/2017
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
Sreenivasa Rao Gorti
06/21/2017 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SREENIVASA RAO GORTI, DAVID PATRON,
PAUL VANVLECK, and JAVIER B. ARELLANO
Applicant: SBC Knowledge Ventures, L.P.
Appeal 2015-0013281
Application 10/898,145
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—13, 17—24, 26—28, and 30—33. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Jan. 8,
2014), Reply Brief (“Reply Br.,” filed Nov. 10, 2014), and Specification
(“Spec.,” filed July 23, 2004), and the Examiner’s Answer (“Ans.,” mailed
Sept. 10, 2014) and Final Office Action (“Final Act.,” mailed Oct. 23, 2013).
Appeal 2015-001328
Application 10/898,145
CLAIMED INVENTION
Appellants’ claimed invention “relates to the Internet, and, more
particularly^] to network architecture and platforms for the delivery of
personal services and push ecommerce.” Spec. 11.
Claims 1, 8, 18, and 27 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method, comprising:
receiving, at a computer server associated with a
merchant, an identification token associated with a mobile device
that enters a service environment associated with the merchant,
wherein the identification token is an opaque token generated by
a source other than the mobile device;
receiving, at the computer server, an address of a profile
agent that is associated with the mobile device, wherein the
profile agent is external to the mobile device;
querying the profile agent from the computer server for a
profile of a user associated with the mobile device, wherein the
user does not have a pre-existing relationship with the merchant;
receiving, at the computer server, the profile, wherein the
profile agent filters personal identification of the user such that
the merchant does not have access to the personal identification
of the user; and
sending a personalized offer from the computer server to
the profile agent based on the profile, wherein the personalized
offer is associated with the merchant, and wherein the profile
agent applies preferences and policies of the user to determine
whether to forward the personalized offer to the mobile device.
REJECTIONS
I. Claims 12, 21, and 27 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.2
2 The Examiner has withdrawn the rejection of claim 3 under 35 U.S.C.
§112, first paragraph. Ans. 2.
2
Appeal 2015-001328
Application 10/898,145
II. Claims 21 and 28 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention.3
III. Claims 1, 2, 4—8, 12, 13, 17—24, 26—28, and 30-33 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Hyndman
(US 2005/0278547 Al, pub. Dec. 15, 2005) and Moore (US 7,200,566 Bl,
iss. Apr. 3, 2007).
IV. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hyndman, Moore, and Blakley (US 2004/0128546 Al, pub. July 1, 2004).
V. Claims 9—11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hyndman, Moore, and Nykanen (US 6,714,778, iss. Mar. 30, 2004).
VI. Claims 1, 2, 4—8, 17—24, 26—28, and 30—33 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Yared (US 2003/0148781 Al,
pub. Aug. 7, 2003) and Moore.
VII. Claims 9—11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yared, Moore, and Nykanen.
VIII. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yared, Moore, and Hyndman.
ANALYSIS
Rejection I
The written description requirement of 35 U.S.C. § 112, first
paragraph, is met when the Specification “reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
3 The Examiner has withdrawn the rejection of claim 3 under 35 U.S.C.
§ 112, second paragraph. Id.
3
Appeal 2015-001328
Application 10/898,145
matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (enbanc) (citing Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563). However, there is no requirement “that the
[Specification recite the claimed invention in haec verba.'” Id. at 1352.
In rejecting claim 12 under 35 U.S.C. § 112, first paragraph, the
Examiner identifies the limitation “wherein the opaque identification token
is valid only while the mobile device remains in the service environment” as
lacking the requisite written description support in the Specification. Final
Act. 21. Specifically, the Examiner acknowledges that the Specification
describes a one-time opaque identification that is valid only while a user
remains in the “cell.” Ans. 2; see also Spec. 149.4 But the Examiner
maintains that the described “cell” does not support the claimed “service
environment.” Ans. 2. Claim 8, from which claim 12 depends, recites that
the token is generated “when the mobile device enters a service environment
associated with the merchant.” In our view, one of ordinary skill in the art
would understand that a “cell,” as described in the Specification at
paragraphs 48-49, provides the requisite support for the claimed “service
environment associated with the merchant,” as required by claim 12. For
example, paragraph 48 of the Specification describes that merchant sites
register with a cell phone operator to be notified of a new user’s presence
4 We note that paragraph 49 of the Specification filed on July 23, 2004
corresponds to paragraph 52 of the Specification as published on January 26,
2006. The paragraph numbering in the published Specification jumps from
paragraph 5 to paragraph 8, with paragraphs 5 and 8 of the published
Specification corresponding to paragraphs 5 and 6 of the originally-filed
Specification, respectively. Although Appellants and the Examiner appear
to refer to the published Specification, our decision refers to the
Specification as originally filed by Appellants.
4
Appeal 2015-001328
Application 10/898,145
within a “cell,” and, upon detecting a new user present in the cell, the
operator’s presence service notifies all merchant sites registered in the cell.
Claim 21 depends from claim 18 and further recites that “the user
profile agent is a multi-hop agent.” The Examiner acknowledges that the
Specification describes that “mobile agents” can be “multi-hop agent[s].”
Ans. 3. But the Examiner maintains that the Specification lacks written
description support for the claimed user profile agent being a multi-hop
agent. Ans. 3; see also Final Act. 4. However, we find that the
Specification reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date including
that the user profile agent can be a multi-hop agent. See, e.g., Spec. 26—27
(claims 27 and 28 (reciting in claim 28 that the profile agent of claim 28
comprises a mobile agent)), 143 (mobile agent can be a multi-hop agent).
Claim 27 recites “in response to detection of the mobile device by a
service provider associated with a merchant. . . forwarding] the
personalized offer to the mobile device only if the personalized offer
satisfies the profile policies and preferences.” The Examiner acknowledges
that the Specification describes forwarding personalized offers based on
policies, but the Examiner maintains that the Specification does not describe
forwarding the offers based on preferences, as recited in claim 27. However,
we agree with Appellants (Reply Br. 5) that the Specification includes the
requisite written description support. See Spec. 146 (describing applying
preferences of a user to determine whether to forward a personalized offer).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 12, 21, and 27 under 35 U.S.C. § 112, first paragraph.
5
Appeal 2015-001328
Application 10/898,145
Rejection II
Our reviewing court has held that prior to issuance, the test for
indefiniteness under 35 U.S.C. § 112, second paragraph is a “lack of clarity
(in its several forms) based on the perspective of one of ordinary skill in the
art in view of the entire written description and developing prosecution
history.” In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014).
Claim 21 depends from claim 18 and further recites that the user
profile agent is a multi-hop agent. The Examiner maintains that it is unclear
if the claimed “user profile agent,” as recited in claim 21, refers to a mobile
agent, because the Specification “teaches that a mobile agent is a multi-hop
agent,” not “that the user profile is a multi-hop agent.” Ans. 4. However,
we find that a person of ordinary skill in the art would understand what is
claimed when the claim is read in light of the Specification, namely, that the
user profile agent is a multi-hop agent, i.e., one of two types of mobile
agents. See Spec. 143; see also Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the [Specification.”).
Claim 28 depends from claim 27 and further recites that the profile
agent is a mobile agent. The Examiner takes the position that “it is unclear
how the profile agent is a mobile agent, since the profile agent is distinct
from the mobile device as recited in claim 27.” Ans. 5. But the claimed
mobile agent is not the same as a mobile device. See Spec. 142 (“[mjobile
agents are software abstractions that can migrate across tahe network (hence
mobile)[,] representing users in various tasks (hence agents)”). As such, the
Examiner does not adequately explain why, and we fail to see why, a person
6
Appeal 2015-001328
Application 10/898,145
of ordinary skill in the art would not understand what is claimed when
claim 28 is read in light of the Specification.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 21 and 28 under 35 U.S.C. § 112, second paragraph.
Rejection III
Independent Claim 1 and Dependent Claims 2, 4—7, and 32
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 because Moore does not disclose or suggest
that “the profile agent applies preferences ... of the user to determine
whether to forward the personalized offer to the mobile device,” as recited in
claim 1. App. Br. 12—14. The Examiner relies on Moore as disclosing the
argued limitation. Final Act. 5—6 (citing Moore, col. 8,11. 39-61, col. 9,1.
16-col. 10,1. 56), 23 (citing Moore, col. 7,11. 32—64, col. 8,11. 39-63, col. 9,
11. 16-18).
Moore describes a local area communications system with a mobile
device in which a consumer has stored a wish list of desired transactions
and/or consumer preferences. Moore, col. 3,11. 27—31, col. 7,11. 37-46.
Merchants can read the stored information while the consumer is located
within a proximate area of a merchant, and provide an offering of goods or
services. Id. at col. 3,11. 31—37. In particular, when a mobile shopper
approaches a shopping area, a central server recognizes the approximate
location of the mobile shopper, identifies stores in a local area proximate to
the mobile shopper, identifies participating merchants, and mediates a
connection. Id. at col. 8,11. 39—53. The mediation may consist of simply
forwarding communication from the mobile device to the servers associated
with the merchants, and vice versa. Id. at col. 8,11. 54—60.
7
Appeal 2015-001328
Application 10/898,145
The mobile wireless device may send information on all the items
stored as prospective purchases, or it may send a filtered list depending on
the capabilities of the server associated with the merchant that it is
addressing. Id. at col. 9,11. 1—4. For example, it may avoid sending
information regarding desired clothing purchases to an appliance store. Id.
at col. 9,11. 4—5. The filtering may be done at the mobile wireless device, by
the central server, or by the server associated with the merchant simply not
responding to requested items not in inventory (e.g., sending a negative
response or making no response). Id. at col. 9,11. 5—11. After receiving the
wish list or the filtered list, the server sends a proposed transaction to the
mobile wireless device.
The Examiner takes the position that filtering, as described by Moore,
describes a user profile agent that applies preferences of a user to determine
whether to forward proposed transactions from the merchant to the mobile
device. See Ans. 8—9. The difficulty with the Examiner’s analysis,
however, is that Moore’s filtering is completed before the wish list is sent to
the server of the merchant to determine a proposed transaction, not to
determine whether to forward proposed transactions from the merchant to
the mobile device, as required by claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 and claims 2-4, 7, and 42, which depend therefrom,
under 35 U.S.C. § 103(a).
Independent Claims 8, 18, and 27, and Dependent Claims 12, 13, 17, 19—24,
26, 28, and 30—33
Claims 8, 18, and 27 include language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner’s rejection
of independent claims 8, 18, and 27, and claims 12, 13, 17, 19—24, 26, 28,
8
Appeal 2015-001328
Application 10/898,145
and 30-33, which depend therefrom, under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to claim 1.
Rejections IV and V
Dependent Claims 3 and 9—11
Each of claims 3 and 9-11 depends, directly or indirectly, from one of
independent claims 1 and 8. The rejections of these dependent claims do not
cure the deficiency in the Examiner’s rejection of independent claims 1 and
8. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claims 3 and 9—11 for the same reasons set forth above with
respect to the independent claims.
Rejection VI
Independent Claims 1, 8, 18, and 27, and Dependent Claims 2, 4—7, 12, 13,
17, 19-24, 26, 28, and 30-32
In rejecting claims 1, 2, 4—8, 12, 13, 17—24, 26—28, and 30—33 under
35 U.S.C. § 103 over Yared and Moore, the Examiner relies on Moore as
disclosing that “the profile agent applies preferences ... of the user to
determine whether to forward the personalized offer to the mobile device,”
as recited in claim 1, and similarly recited in claims 8, 18, and 27. See Final
Act. 27—28. As described above in the section addressing Rejection III, we
disagree with this finding. Therefore, we do not sustain the Examiner’s
rejection of independent claims 1, 8, 18, and 27, and claims 2, 4—7, 12, 13,
17, 19-24, 26, 28, and 30—33, which depend therefrom, under 35 U.S.C.
§ 103(a) over Yared and Moore.
Rejections VII and VIII
Dependent Claims 9—13
Each of claims 9-13 depends, directly or indirectly, from independent
claim 8. The rejections of these dependent claims do not cure the deficiency
9
Appeal 2015-001328
Application 10/898,145
in the Examiner’s rejection of independent claim 8 under 35 U.S.C. § 103(a)
over Yared and Moore. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of claims 9-13, for the same reasons set
forth above with respect to independent claim 8.
DECISION
The Examiner’s rejection of claims 12, 21, and 27 under 35 U.S.C.
§112, first paragraph, is reversed.
The Examiner’s rejection of claims 21 and 27 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejections of claims 1—13, 17—24, 26—28, and 30-33
under 35 U.S.C. § 103 are reversed.
REVERSED
10