Ex Parte Lukose et al

Patent Trial and Appeal Board

May 24, 2017

13351660 (P.T.A.B. May. 24, 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.
13/351,660 01/17/2012 Raj an Lukose 82837107 5145
56436 7590 05/26/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
MAY, ROBERT F
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJAN LUKOSE and CRAIG PETER SAYERS
Appeal 2017-000063
Application 13/3 51,66c1
Technology Center 2100
Before KRISTEN L. DROESCH, LINZY T. McCARTNEY, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—3 and 5—15, which constitute all of the pending claims. Claim 4
has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION for
independent claims 1, 11, and 15 under pre-AIA 35 U.S.C. § 103(a),
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Hewlett Packard Enterprise Development LP,
Enterprise DC Holdings LLC, and Hewlett Packard Enterprise as the real
parties in interest. App. Br. 3.
Appeal 2017-000063
Application 13/351,660
STATEMENT OF THE CASE
Claimed Invention
Appellants’ claimed invention relates to storing and delivering to a
user device an “item of interest” such as a notice or reminder, wherein
delivery is triggered by the location of the user device. Abstract; Spec. H 1—
2. Appellants’ Specification describes an exemplary embodiment in which a
user stores a reminder on a mobile device to “purchase certain items while at
the grocery store,” and the reminder subsequently is shown to the user the
next time the user (with the device) is detected to be at the grocery store.
Spec. H2, 20. Claims 1,11, and 15 are independent. Claim 1, reproduced
below, is illustrative of the invention and the subject matter on appeal:
1. A method for delivering an item of interest, said method
comprising:
receiving the item of interest;
displaying, on a user device, a plurality of candidate
action contexts m response to receiving the item of interest;
receiving, on the user device, a selection of an action
context from the plurality of candidate action contexts, wherein
the action context is a condition related to a location of the user
device to trigger delivery of the item of interest;
storing the item of interest, the action context, and an
association of the item of interest to the action context;
determining, by a processor of the user device, that an
indication regarding the action context has been received;
determining that the action context is triggered based on
the location of the user device;
and
delivering the item of interest.
App. Br. 14 (Claims App’x) (emphasis added).
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Appeal 2017-000063
Application 13/351,660
Rejections on Appeal
Claims 1, 3, 5, 11, 12, and 15 stand rejected under pre-AIA 35 U.S.C.
§ 102(e) as being anticipated by Stout et al. (US 2012/0313780 Al; Dec. 13,
2012) (“Stout”). Final Act. 3-8.
Claims 2, 6, 7, 9, 10, 13, and 14 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Stout and Gruber et al. (US
2012/0311584 Al; Dec. 6, 2012) (“Gruber”). Final Act. 9-13.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Stout and Lunt et al. (US 7,788,260 B2; Aug. 31, 2010)
(“Lunt”). Final Act. 14—15.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments Appellants could have made
but chose not to make in the Briefs are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants have persuaded us the Examiner erred in
rejecting the independent claims as anticipated. We, however, enter a new
ground of rejection for the independent claims under pre-AIA 35 U.S.C.
§ 103(a). We provide the following to highlight and address specific
arguments.
Rejection Under Pre-AIA 35 U.S.C. § 102(e)
Appellants argue the Examiner erred in finding Stout discloses
“wherein the action context is a condition related to a location of the user
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Application 13/351,660
device to trigger delivery of the item of interest,” as recited in claim 1,2
App. Br. 8—9. Specifically, Appellants argue Stout discloses only tracking
the location of a different (second) device other than “the user device” as
recited, and therefore, in Stout, the device storing the “item of interest” (such
as notice or reminder) is not the same device whose “location” is used to
trigger delivery of the item of interest, as claim 1 requires. Id. We are
persuaded by Appellants’ argument that Stout does not disclose the disputed
limitation as required by § 102, but we find one of ordinary skill in the art
would understand Stout as teaching this limitation, and therefore we enter a
new ground of rejection under § 103, as set forth below.
As the Examiner finds, Stout discloses using the geographic location
of “a” user device to “alert when the user device comes within a user-
specified geographical area.” Ans. 4 (citing Stout H 31, 44). Stout also
discloses “a” user specifying an “alert type” and entering that alert type in a
user device. Id.; see also Stout 122. The portions of Stout cited by the
Examiner do not disclose, however, that the user device receiving the “alert
type” is the same device being geographically tracked. Rather, in Stout, the
application is used “to notify the user [who inputted the alert] when a friend
of the user enters a user-specified geographical area .... [A] location
awareness module within the friend’s client device 138 sends the current
location of the friend’s client device 138 to the [first user’s] application
140.” Stout 131 (emphasis added). The Examiner points to no other
embodiments or illustrations in Stout.
2 Appellants argue all of the claims rejected as anticipated (claims 1,3,5,
11, 12, and 15) as a group, and we choose claim 1 as representative of the
group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/351,660
Based upon the foregoing, the Examiner finds Stout “teaches the
ability to track the location of any available mobile device, including the
interface device 134 itself being used to create the alert and then triggering
the alert to [the same] device 134 when the device’s location enters into the
previously specified geographical area.” Ans. 4 (emphasis added). On the
record before us, we agree with this finding. One of ordinary skill would
understand the teaching of geographical tracking in Stout to be applicable to
any device.
The Examiner’s finding regarding the “teachings]” of Stout,
however, only supports an obviousness rejection, not anticipation. “To
anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
We cannot sustain an anticipation rejection by “fill[ing] in missing
limitations simply because a skilled artisan would immediately envision
them” from the prior art reference. Nidec Motor v. Zhongshan Broad Ocean
Motor, 851 F.3d 1270, 1274—75 (Fed. Cir. 2017). The absence of a single
limitation—even if that limitation would be obvious from the cited
reference—negates anticipation. See In re Schreiber, 128 F.3d at 1477.
Accordingly, because the cited portions of Stout do not disclose the same
“user device” receiving the “item of interest” and being geo-tracked, we are
persuaded the Examiner erred in finding Stout anticipates claim 1.
We, therefore, do not sustain the rejection of claims 1,11, and 15
under 35 U.S.C. § 102(e) as anticipated by Stout, nor do we sustain the
anticipation rejection of dependent claims 3, 5, and 12, which include the
limitations of their base claims.
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Appeal 2017-000063
Application 13/351,660
Rejections UnderPre-AIA 35 U.S.C. § 103(a)
The Examiner rejected dependent claims 2, 6, 7, 8, 9, 10, 13, and 14
as unpatentable over Stout and additional references. Because we do not
sustain the rejection of the independent claims, we summarily do not sustain
the rejection of the dependent claims. In light of our rejection of the
independent claims under the new ground of obviousness, however, we
leave to the Examiner to reenter the previous obviousness rejections of the
dependent claims or reevaluate them, as the Examiner deems fit.
NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
The following is a quotation of pre-AIA 35 U.S.C. § 103(a):
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 [of
this title], if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which
said subject matter pertains. Patentability shall not be
negatived by the manner in which the invention was made.
Independent claims 1,11, and 15 are rejected as being unpatentable
over Stout. Stout teaches or suggests every element of claims 1,11, and 15
including, for the reasons set forth above, the elements “wherein the action
context is a condition related to a location of the user device to trigger
delivery of the item of interest” (and the related limitation “determining that
the action context is triggered based on the location of the user device”).
The remaining limitations of claims 1,11, and 15 are taught or suggested by
Stout for the reasons set forth in the Final Action and the Answer.
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Appeal 2017-000063
Application 13/351,660
We leave the patentability determination of the dependent claims to
the Examiner. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See MPEP § 1213.02.
DECISION
The Examiner’s rejections of claims 1—3 and 5—15 are REVERSED.
In a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b), we reject independent claims 1, 11, and 15
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Stout.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the prosecution will be remanded to
the examiner. The new ground of rejection is
binding upon the examiner unless an amendment
or new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the
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Application 13/351,660
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in th q Manual of Patent Examining Procedure (MPEP) § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
REVERSED
37 C.F.R, §41.500?)
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