Ex Parte Gorti et alDownload PDFPatent Trial and Appeal BoardJun 20, 201710898145 (P.T.A.B. Jun. 20, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation