Ex Parte Ruckart

Patent Trial and Appeal Board

Oct 1, 2018

14690943 (P.T.A.B. Oct. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/690,943 04/20/2015 John Ruckart
39072 7590 10/02/2018
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
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.
060304 DIV
(9400-321 TSDV)
1066
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
10/02/2018 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 JOHN RUCKART
Appeal2018-000335
Application 14/690,943
Technology Center 3600
Before BRETT C. MARTIN, JEFFREY A. STEPHENS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
AT&T Intellectual Property I, L.P. ("Appellant") 1 seeks our review
under 35 U.S.C. § 134(a) from the Examiner's Final Office Action ("Final
Act.") rejecting claims 4, 5, 8-14, and 17-23, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons explained below, we do not find error in at least one
rejection of each pending claim. Accordingly, we AFFIRM.
1 Appellant is the applicant as provided by 37 C.F.R. § 1.46. Appellant is
also identified as the real party in interest. Appeal Br. 1.
Appeal2018-000335
Application 14/690,943
Claimed Subject Matter
Claims 4, 13, and 22 are independent. Claim 4, reproduced below
with selected limitations emphasized, illustrates the claimed subject matter.
1. A method, comprising:
establishing a communication connection with a client
device; and
sending a message, responsive to the establishing of the
communication connection, that contains information associated
with one of a first geographic location and a second geographic
1 ocation to the client device, the information being associated
with a navigation module on the client device to allow the client
device to process the information and to determine a navigation
track between the first geographic location and the second
geographic location;
wherein the information associated with one of the first
geographic location and the second geographic location
comprises a waypoint between the first geographic location and
the second geographic location;
wherein the information is an attachment to the message;
and
wherein the navigation track between the first geographic
location and the second geographic location includes the
waypoint.
Rejections
I. Claims 13, 14, and 17-21 stand rejected under 35 U.S.C. § 112,
second paragraph, "as being incomplete for omitting essential elements."
Final Act. 6.
II. Claims 4, 5, and 8-12 stand rejected under 35 U.S.C. § 112,
second paragraph, "as being incomplete for omitting essential steps." Final
Act. 7.
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Application 14/690,943
III. Claims 22 and 23 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 7.
IV. Claims 4, 5, 9-14, and 18-23 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Wissenbach et al. (US 2008/0195978
Al, published Aug. 14, 2008). Final Act. 8-10.
V. Claims 8 and 17 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Wissenbach and Chesnias et al. (US
2007/0150444 Al, published June 28, 2007). Final Act. 10.
DISCUSSION
Rejections 1-111
The Examiner determines that claims 13, 14, and 17-21 are
incomplete for failing to recite a Global Positioning System ("GPS")
interface, which the Examiner states is required on a claimed mobile device
to obtain current position data. Final Act. 6. Appellant notes, however, that
paragraph 48 of the Specification indicates that location information may be
many types of information, and GPS information is just one possible
embodiment. Appeal Br. 4. Other information that may be location
information includes address information, name information, cellular
information, and/or Wi-Fi information. Id. Accordingly, Appellant argues,
the Specification makes clear that a GPS interface is not essential matter for
practicing the invention. Id. at 5.
We agree with Appellant. Because paragraph 48 of the Specification
lists GPS information as just one of many types of information that may
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Appeal2018-000335
Application 14/690,943
constitute the claimed "information," a GPS interface does not appear to be
an essential element of the invention recited in claim 13. 2
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 13, 14, and 17-21 under 35 U.S.C. § 112, second paragraph.
The Examiner's rejection of method claims 4, 5, and 8-12, and the
rejection of claims 22 and 23 reciting a computer program product, similarly
rely on the determination that a GPS interface is essential to the claimed
inventions. See Final Act. 7. For the same reasons as claim 13, we do not
sustain the rejections under 35 U.S.C. § 112, second paragraph, of claims 4,
5, 8-12, 22, and 23. 3
Re} ection IV
Appellant argues Wissenbach does not teach sending the message
having an attachment containing the information associated with a first or
second geographic location to the client device, as required by independent
claims 4, 13, and 22. Appeal Br. 7-8. Specifically, Appellant contends
"Wissenbach does not provide any description or disclosure of the
computing device 12 sending a message to the navigation device 16 that
2 Appellant also notes that the Manual of Patent Examining Procedure
("MPEP") provides that a claim that omits matter disclosed to be essential to
the invention may be rejected under 35 U.S.C. § 112, first paragraph, for
lack of enablement, suggesting that§ 112, second paragraph, is not a proper
rejection in such circumstances. Appeal Br. 4 (citing MPEP § 2172.01). We
need not reach this issue in this case.
3 We note also that, contrary to the Examiner's suggestion, Final Act. 7,
claim 22 does not recite obtaining current position data, which further
undermines the apparent basis of the indefiniteness rejection.
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Appeal2018-000335
Application 14/690,943
contains an attachment or any description of the navigation device 16 having
the ability to process an attachment to a message." Id. at 8.
Appellant's arguments regarding Wissenbach do not address the
rejection as articulated by the Examiner. The Examiner's rejection
acknowledges that Wissenbach does not expressly teach that the information
is an attachment to the message. Final Act. 8. The Examiner states,
however, that it is well-known that a message would contain related
information. Id. The Examiner, therefore, concludes it would have been
obvious to use the specific type of information specified in the claims ( e.g.,
as an attachment). Id. at 8-9. Appellant does not dispute that, at the time of
invention, it was well known that a message may convey information in an
attachment. Because Appellant's arguments address only the Wissenbach
reference, not the Examiner's proposed modification to Wissenbach, they do
not inform us of error in the Examiner's findings and reasoning relating to
the disputed limitation of the independent claims. 4
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of independent
claims 4, 13, and 22 under 35 U.S.C. § 103(a) as unpatentable over
Wissenbach. For the same reasons, we sustain the rejection of dependent
claims rejected on the same ground, and note these claims were not argued
separately. Thus, we sustain the rejection of claims 4, 5, 9-14, and 18-23
under 35 U.S.C. § 103(a).
4 Appellant also contends the rejection improperly gives no patentable
weight to the recitation that the information is an attachment to the message.
Appeal Br. 8. We understand the Examiner to have given weight to the
limitation, but to have found it is well known to provide information as an
attachment to a message, as discussed supra.
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Appeal2018-000335
Application 14/690,943
Rejection V
Appellant argues claim 8 and 17 are patentable based on their
dependency from claims 4 and 13. Appeal Br. 8. Thus, for the same reasons
as claims 4 and 13, we sustain the rejection of dependent claims 8 and 17
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's decision to reject claims 4, 5, 8-14, and
17-23 under 35 U.S.C. § 112, second paragraph. We affirm the Examiner's
decision to reject claims 4, 5, 8-14, and 17-23 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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