Ex Parte LeBeau et al

Patent Trial and Appeal Board

Jun 21, 2016

13250279 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/250,279 09/30/2011 Michael J. LeBeau
26192 7590 06/23/2016
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-2357002 6424
EXAMINER
YOUNG, KEVIN L.
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. LEBEAU and JOHN NICHOLAS JITKOFF
Appeal2014-009379
Application 13/250,279
Technology Center 2100
Before CARL W. WHITEHEAD JR., ADAM PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1 and 47---65
under 35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to:
A computer-implemented method for information sharing
between computers includes receiving at a computer system a
search request from a first computer, generating with the
computer system one or more search results that are responsive
to the first computer, formatting the results for display on a
second computer that is different than the first computer, and
Appeal2014-009379
Application 13/250,279
automatically providing the results for display on the second
computer.
Abstract.
Representative Claim (disputed limitations emphasized)
1. A computer-implemented method, comprising:
receiving a query and information regarding a mobile computing
device;
obtaining search results that are responsive to the query;
identifying, at the search system, a set of devices that are registered to
a user of the mobile device;
receiving information regarding each of the devices of the set of
devices that are registered to the user of the mobile device;
classifying each of a subset of the devices of the set of devices that are
registered to the user of the mobile device, as a likely target device based at
least on (i) the information regarding the mobile computing device, (ii) the
search results, and (iii) the information regarding each of the devices of the
set of devices that are registered to the user of the mobile device; and
providing one or more of the search results for output on one or more
of the devices that are classified as likely target devices.
Rejection on Appeal
Claims 1 and 47---65 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reisman (US Patent Application Publication Number
2009/0319672 Al; published December 24, 2009) and Sekimoto (US Patent
Application Publication Number 2009/0019394 Al; published January 15,
2009). Non-final Rejection 2-8.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed April 4, 2014), the Reply Brief (filed
September 2, 2014), the Answer (mailed July 2, 2014), and the Non-final
Rejection (mailed January 17, 2014) for the respective details. We have
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Application 13/250,279
considered in this decision only those arguments Appellants actually raised
in the Briefs.
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief, except where
noted.
Claims 1, 53, and 60
Appellants summarize Reisman's paragraph 25, highlighting:
"to avoid burdening the user with the complications of too much
flexibility and too many choices, it may be desirable that both
the user and the content author be able to pre-set affinities,
preferences, and recommendations, relating to task types,
content types, and device availabilities, that could automatically
place elements on the device set or device set group that is
presumably best suited to the apparent context, while leaving the
user with the ability to recognize that expected targeting (based
on conventions and/or unobtrusive cues) and to accept it with no
further action, or override it if desired."
Appeal Brief 6.
Appellants contend:
[T]hat the "pre-set affinities, preferences, and recommenda-
tions," of Reisman are different than "classifying each of a
subset of the devices of the set of devices that are registered to
the user of the mobile device, as a likely target device based at
least on (i) the information regarding the mobile computing
device, (ii) the search results, and (iii) the information regarding
each of the devices of the set of devices that are registered to the
user of the mobile device," as claimed.
Appeal Brief 6.
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Application 13/250,279
Appellants, however, fail to provide an explanation of why Reisman's
"pre-set affinities, preferences, and recommendations" are different than the
claimed invention. See id. We note that the Examiner relied upon
paragraphs 339, 357, 362, 395, 650, and 651 in addition to paragraphs 23
and 25 to support the Examiner's findings in regard to the disputed claim
limitation, however, Appellants have not addressed those findings. See Non-
final Rejection 3. Further, Appellants indicate that support for the disputed
claim limitations can be found in the Specification at paragraphs 25, 32, 33,
and 38, as well as in Figure 2A. See Appeal Brief 2--4 (indicating support
for the claimed subject matter in claim 1, as well as independent claims 53
and 60, which are commensurate in scope). Conversely, none of the cited
paragraphs in the Appellants' Specification provides a description for the
disputed claim limitations that would distinguish the claimed invention over
the cited prior art.
We agree with the Examiner's findings and sustain the Examiner's
obviousness rejection of claim 1, as well as independent claims 53 and 60.
Once the Examiner has satisfied the burden of presenting a prima facie case
of obviousness, the burden then shifts to Appellants to present evidence
and/or arguments that persuasively rebut the Examiner's prima facie case.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants did not
particularly point out errors in the Examiner's reasoning to persuasively
rebut the Examiner's prima facie case of obviousness, the rejection is
therefore sustained. We also sustain the Examiner's obviousness rejection
of dependent claims 47-52, 54--59, and 61---65 because although Appellants
argue the claims in separate groups, the arguments are predicated on the
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Application 13/250,279
alleged deficiencies of the prior art which, for the reasons stated above, we
do not find deficient.
DECISION
The Examiner's obviousness rejection of claims 1 and 4 7----65 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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