Ex Parte Ismail

Patent Trial and Appeal Board

Feb 29, 2016

13443196 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/443,196 04/10/2012
7590 02/29/2016
John L. Rogitz
ROGITZ & AS SOCIA TES
750 B Street, Suite 3120
San Diego, CA 92101
FIRST NAMED INVENTOR
SAMIR ISMAIL
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.
50U8032.03 3308
EXAMINER
JOHNSON, GERALD
ART UNIT PAPER NUMBER
2699
MAILDATE DELIVERY MODE
02/29/2016 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 SAMIR ISMAIL
Appeal2014-003457
Application 13/443,196
Technology Center 2600
Before DAVID M. KOHUT, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-003457
Application 13/443,196
TI'IJVENTION
Appellant's invention is directed to using short message service
(SMS) encapsulating tagged messages such as XML messages to send
information to Internet servers and/or peer devices. Spec. 1. Claim 17 is
representative of the subject matter on appeal:
17. A method, comprising:
preprogramming a destination address into a mobile
wireless communication device such that a user of the mobile
wireless communication device does not input or need to know
the destination address;
presenting on the mobile wireless communication device
at least a first graphical user interface (U/I) visibly listing items
of data a user can select to be sent to at least one receiver;
wherein at least a first item on the U/I is a position of the
mobile wireless communication device and at least a second
item on the UI is an arrival time at a location determined by the
mobile wireless communication device based at least in part on
a speed input by the user of the mobile wireless communication
device; and
sending at least one item on the list to the destination
address which is associated with the at least one receiver.
REJECTIONS ON APPEAL
Claims 1-7 and 17-20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 4-5.
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Haney (US 2006/0223 518 A 1; published Oct. 5,
2006), Rangel (US 2008/0025343 A 1; published Jan. 31, 2008), Carver (US
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Application 13/443,196
5,268,844; issued Dec. 7, 1993), and Wilson (US 2006/0148495 Al;
published July 6, 2006). Final Act. 5-11.
Claims 8-16 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Haney, Rangel, Ruckart (US 2008/0208444 Al;
published Aug. 28, 2008), Carver, and Yamane (US 200710155404 A 1;
published July 5, 2007). Final Act. 11-18.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Carver and Wilson. Final Act. 18-19.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Carver, Wilson, and Haney. Final Act. 19-
21.
Claims 1-20 stand rejected on the grounds of nonstatutory
obviousness-type double patenting as being unpatentable over various
claims of U.S. Patent No. 8,060,123 B2 (issued Nov. 15, 2011) and U.S.
Patent No. 8,195,211 B2 (issued June 5, 2012), alone or in combination with
Wilson. Final Act. 21-29.
ISSUES
Appellant's contentions present us with the following issues:
A) Did the Examiner err in rejecting claims 1-7 and 17-20 under
35 U.S.C. § 112, first paragraph?
B) Did the Examiner err in finding the combination of Carver and
Wilson teaches or suggests "a user of the mobile wireless communication
device does not input or need to know the destination address" ("user"
limitation), as recited in independent claim 17?
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Application 13/443,196
C) Did the Examiner err in finding the combination of Haney, Rangel,
Ruckart, Carver, and Yamane teaches or suggests the processor of a receiver
"to determine the selected item of data using information receivable by the
receiver," as recited in independent claim 8?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellant's contentions. We disagree with Appellant's conclusions that the
Examiner's rejections of the claims are in error.
Double Patenting Rejections
Appellant does not present any arguments contesting the obviousness-
type double patenting rejections of claims 1-20. See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived."). Accordingly, we summarily
sustain the obviousness-type double patenting rejections of claims 1-20.
Issue A: 35 U.S. C. § 112, First Paragraph Rejection
The Examiner finds claims 1-7 and 17-20 do not comply with the
written description requirement because the Specification does not support
"in that a user of the wireless telephone does not enter the destination
address" (as recited in independent claim 1) and "such that a user of the
mobile communicating device does not input or need to know the destination
address" (as recited in independent claim 17). Final Act. 4-5. Appellant
argues the limitations are supported on pages 6 and 7 of the Specification.
App. Br. 4-5; Reply Br. 1-2.
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Application 13/443,196
Section 112, first paragraph, of 35 U.S.C. requires the specification to
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal citations
omitted). The claim limitations at issue are negative claim limitations that
set forth the user does not enter/input the destination address. Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
We agree with the Examiner (Ans. 14) that the sections of the
Specification cited by Appellant describe the geographic position is
encapsulated in the XML message and sent to the server without any user
interaction, but do not describe that the user does not enter/input the
destination address. See Spec. 6-7. As further noted by the Examiner (Ans.
15), the Specification describes the list of recipients for the information
(destination address) might be from the address book of the wireless
telephone, but does not describe an embodiment or situation where the user
did not enter the information. See Spec. 5:11-15. We also agree with the
Examiner (Ans. 14-15) that although pages 6-7 of the Specification describe
a device 50 that "need not have a display or keypad," there is no description
in the Specification that the user did not preprogram (enter/input) the
destination address. Thus, Appellant fails to persuade us that the
Specification describes a reason to exclude the user as the one that
enters/inputs the destination address. Accordingly, we sustain the 35 U.S.C.
§ 112, first paragraph rejection of claims 1-7 and 17-20.
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Application 13/443,196
Issue B: Obviousness Rejections of Claims j-7 and j/-20
Appellant contends the combination of Carver and Wilson does not
teach or suggest the "user" limitation recited in claim 17. App. Br. 5-6;
Reply Br. 2-3. Specifically, Appellant argues Wilson's address book is a
well-known user-populated data structure teaching of selecting an entry from
an address book and does not teach an address that the user has not
previously keyed in. App. Br. 6. We disagree.
A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art. 1 In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (citation omitted). The Examiner finds, and we agree, that
Wilson's teaching of an address book that contains destination addresses that
are pre-programmed suggests the "user" limitation. Final Act. 19 (citing
Wilson ,-i 4). In particular, we agree with the Examiner (Ans. 16) that
destination addresses in an address book may be entered or preprogrammed
by a user other than a current user. Thus, we agree Wilson's address book
would suggest the claimed "user" limitation to a person of ordinary skill in
the art.
Because we agree with the findings and reasoning of the Examiner,
Appellant fails to persuade us of error in the rejection claim 17.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejections of: (1) claim 17;
(2) independent claim 8, for which Appellant presents substantially the same
1 We note the test under 35 U.S.C. § 103(a), which requires the prior art to
suggest the claimed subject matter, is different than that required under
35 U.S.C. § 112, first paragraph, which requires the Specification to
describe a reason to exclude. Compare Bell, 991 F.2d at 783 with Santarus,
694 F.3d at 1351.
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Application 13/443,196
arguments made for claim 1 (App. Br. 7); and (3) dependent claims 2-7 and
17-20, which are not separately argued.
Issue C: Obviousness Rejection of Claims 8-16
Appellant contends none of the references uses the receiver to
determine the selected item of data using information receivable by the
receiver as set forth in claim 8. App. Br. 7-9; Reply Br. 3--4. In support of
this contention, Appellant argues Yamane clearly states the predicted arrival
time is calculated in a step 1702 executed by the transmitting navigation
device 11, not the receiver. App. Br. 8 (citing Yamane Fig. 21 ). Appellant
further argues "Carver teaches something for transmitters ... [b Jut
transmitters are used for different functions and undertake different actions
than receivers; the fact that both are used together does not automatically
triggers suggestions that anything done in one ought to be done by the
other." Reply Br. 4. We are not persuaded by these arguments.
The Examiner finds Carver teaches a processor of a receiver that
determines the selected item of data using information receivable by the
receiver. Final Act. 13 (citing e.g., Carver 7:61-63; 9:23-29). In particular,
the Examiner finds, and we agree, Carver teaches a navigation processor of a
plotter that receives data from various electronic devices (i.e., is a
"receiver"). Ans. 17 (citing Carver 7:61-63).2 We further agree with the
Examiner that Carver teaches the plotter (receiver) determines arrival time
(selected item of data) using the received information. Carver 7: 61-63,
2 It is not clear whether the Examiner's statement "[g]iven that Carver
discloses a transmitter" (Ans. 16) is a typographical error or an additional
finding. However, we find this lack of clarity to be harmless because the
Examiner's findings in the next paragraph clearly state Carver teaches the
navigator processor receives data from electronic devices. See Ans. 17.
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Application 13/443,196
9:23-26. The Examiner explains that Yamane is merely used to show
messaging being received by the receiver from a wireless telephone. Ans.
17 (emphasis added). Thus, we agree with the Examiner that the
combination of cited references teaches or suggests the disputed limitation.
Appellant fails to persuade us of error in the rejection of claim 8.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejections of claim 8 and its
dependent claims 9-16, which are not separately argued.
DECISION
We affirm the Examiner's decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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