Ex Parte Matthews et al

Patent Trial and Appeal Board

Nov 7, 2017

13726031 (P.T.A.B. Nov. 7, 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.
13/726,031 12/22/2012 Joseph H. Matthews III 335077-US-NP 3141
69316 7590 11/09/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
SCHWARTZ, JOSHUA L
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH H. MATTHEWS III, JOSEPH A. SCHRADER,
TED TAI-YU CHEN, RAMAN K. SARIN, and GREGORY HOWARD
Appeal 2017-005710
Application 13/726,031
Technology Center 2600
Before ROBERT E. NAPPI, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 1 through 6, 8 through 20, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-005710
Application 13/726,031
INVENTION
Appellants’ disclosed and claimed inventions are directed to using
mobile devices to initiate a check-in notification to indicate location of the
mobile device to other associated with the mobile device. Abstract. Claim 1
is illustrative of the invention and reproduced below.
1. A mobile device, comprising:
a display component configured to present a user
interface on an integrated display of the mobile device, the user
interface including:
a selectable control configured to receive a user selection
to initiate a check-in notification that indicates at least a
location of the mobile device and a timestamp of the date and
time; and
a processing system to implement computer instructions
as a check-in service that is configured to initiate
communication of the check-in notification to the two or more
other associated devices responsive to the user selection to
initiate the check-in notification, the check-in service
implemented as part of a private hub that supports
communication between members of the private hub, the
members of the private hub including the mobile device and the
two or more associated devices, and wherein the private hub
enables at least one member to control membership in the
private hub.
REJECTIONS AT ISSUE1
The Examiner has rejected claim 22 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2—3.
1 Throughout this Decision we refer to the Appeal Brief filed August 24,
2016 (“App. Br.”), Reply Br. filed February 28, 2017, Examiner’s Answer
mailed December 30, 2016 (“Ans.”), and the Final Action mailed March 24,
2016 (“Final Act.”).
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Application 13/726,031
The Examiner has rejected claim 22 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 3^4.
The Examiner has rejected claims 1 through 7, 9, 11 through 17, 21,
and 22 under 35 U.S.C. § 103(a) as being unpatentable over Parish (US
2013/00406554), Tseng (US 2012/0166452), Pai (US 2012/0302256), and
Staton (US 2006/00999691). Final Act 5-15.2
The Examiner has rejected claims 10 under 35 U.S.C. § 103(a) as
being unpatentable over Parish, Tseng, Pai, Staton, and Kandekar (US
2012/0252418). Final Act 15.
The Examiner has rejected claims 8, 12, 16, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Parish, Tseng, Pai, Staton,
and Bell (US 7,629,891). Final Act 16.
The Examiner has rejected claims 19 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Parish, Tseng, Pai, Staton, and Siegel (US
2010/02176461). Final Act 16-17.
ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of claims 1 through 6, 8 through 20, and 22.
2 We note the Examiner’s statement of the rejection based upon Parish,
Tseng, Pai, and Stanton includes claims 8, 12, and 16; however, the
discussion of the rejection on pages 12 and 14 of the Final Act clearly states
that the rejection of these claims also relies upon Bell. Accordingly, we
have considered these claims as rejected based upon Parish, Tseng, Pai,
Stanton and Bell.
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Application 13/726,031
Initially, we note Appellants have not identified an error in the
Examiner’s rejection under 35 U.S.C. § 112(a) and (b). Accordingly we
summarily sustain the Examiner’s rejections of claim 22 under 35 U.S.C.
§112.
Appellants contend, with respect to independent claim 1, the
Examiner erred in rejecting claim 1 because the reasoning to combine the
references is allegedly insufficient. App. Br. 12—19. Appellants argue
Parish, Tseng, and Pai are directed to systems that allow users to join social
networks, and that combining them with Stanton’s “monitoring member”
which would frustrate the principal operation of each of Parish, Tseng, and
Pai. App. Br. 14—16. Specifically, Appellants argue the combination
“would disable Parish’s option for non-members to join the location-based
service.” App. Br. 15. Further, Appellants argue that adding a “monitoring
member in Pai and would eliminate a user’s ability in Pai’s system to decline
invitations to share their location.” Id
The Examiner responds to Appellants’ arguments, stating the
combination of Stanton with the other references is to have the features of
the other references performed on a private network, and this does not
require substantial reconstruction or change the principle operation of the
primary reference. Answer 4.
We concur with the Examiner and are not persuaded by Appellants’
arguments. Appellants argue the combination of Parish and Stanton would
frustrate the principle operation of Parish. The operation of Parish cited by
Appellants, an option for non-members to join the location-based service, is
not the principal operation of Parish. Rather, Parish identifies the purpose of
the system is to provide a mechanism for location based check-in when the
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Application 13/726,031
location cannot be determine by other means such as GPS. See Parish paras.
3, and 6. Similarly, we are not persuaded by Appellants’ argument that the
combination of the Pai and Stanton would frustrate the principle operation of
Pai. The operation of Pai cited by Appellants, a user’s ability to decline
invitations to share their location, is just one embodiment of the Pai’s
teaching and not the principal mode of operation.
Appellants further argue the Examiner’s motivation to combine
Stanton as “more efficient” is too general and improper. App. Br. 16—18.
The Examiner responds by stating the rationale to combine Stanton
with the other references is not a general allegation of efficiency as argued
by Appellants. Answer 5—6. The Examiner restates the rationale provided
in the Final Action, and explains that the combination results in saving
bandwidth by performing processing at a local level which is more efficient
than waiting for results from the cloud. Ans. 6.
We concur with the Examiner. The Examiner provides sufficient
‘“articulated reasoning with [a] rational underpinning to support the legal
conclusion of obviousness.’” Final Act. 3—4, 6—7; Ans. 12—13. See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Here the Examiner has
provided a reasoned rationale explaining that the combination improves a
specific improvement reducing bandwidth usage and reducing waiting time.
As such we are unpersuaded that the Examiner’s rationale to combine the
references is too general and improper. As these are the only two arguments
presented with respect to claim 1, we sustain the Examiner’s rejection of
claim 1.
Appellants group claims 2 through 6, 9 through 11, and 22 with
claim 1. App. Br. 18—19. Accordingly, we similarly sustain the Examiner’s
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rejection of claim 2 through 6, 9 through 11, and 22 for the same reasons as
claim 1.
With respect to claims 13 through 15 and 17 through 20, Appellants
present the same arguments as discussed with respect to claim 1. App.
Br. 21—34. Accordingly, we similarly sustain the Examiner’s rejection of
claim 13 through 15 and 17 through 20 for the same reasons as claim 1.
With respect to claims 8, 12, and 16, Appellants contend the Examiner
erred in rejecting these claims because the Examiner acknowledges
deficiencies of Parish, Tseng, and Pai, but does not provide any reasoning
explaining how Staton cures these deficiencies and teaches the limitations of
claims 8, 12, and 16. App. Br. 18—20.
The Examiner responds, stating that Appellants’ argument is directed
to the wrong art as Stanton is used to teach the limitations of independent
claims 1 and 13, and Bell is used to teach the limitations of dependent claims
8, 12 and 16. Ans. 7.
Appellants, in the Reply Brief, address the rejection as relying on
Bell, stating:
Applicant notes that although the Office Actions in which Bell is cited
include reasoning in support of combining Bell with Parish, Tseng,
and Pai, there is no asserted motivation for combining Bell with
Staton in the current or previous rejections of claims 8, 12, and 16 15
(See, e.g., Office Action, pages 12 and 14). Because the Examiner
relies on Staton to reject independent claims land 13, from which
claims 8, 12, and 16 depend, a prima facie case of obviousness for
claims 8, 12, and 16 that is based on Bell must include reasoning
supporting why it would have been obvious to combine Bell with
Staton.
Reply Br. 8.
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We are not persuaded of error by this argument. Appellants
acknowledged the Examiner has provided a reasoning in support of the
combination (the Examiner’s rationale is on pages 12 and 14 of the Final
Act.) but assert there is no motivation to combine the references. The
Supreme Court has stated that “[t]he obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation.” KSR, 550 U.S. at 419. Thus, the argument that the Examiner
has presented a rationale and not a motivation is not persuasive of error in
the Examiner’s obviousness rejection of claim 8, 12, and 16. Accordingly,
we sustain the Examiner’s rejection of claims 8, 12, and 16.
DECISION
We sustain the Examiner’s rejections of claims 1 through 6, 8 through
20, and 22 under 35 U.S.C. § 103(a).
We sustain the Examiner’s rejections of claim 22 under
35 U.S.C. § 112.
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(f).
AFFIRMED
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