Ex Parte Sereboff et al

Patent Trial and Appeal Board

Jun 8, 2017

12469639 (P.T.A.B. Jun. 8, 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.
12/469,639 05/20/2009 Aaron P. Sereboff P6559US00 2322
30671 7590 06/12/2017
DITTHAVONG & STEINER, P.C.
Keth Ditthavong
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
DRAGOESCU, CLAUDIA B
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
docket@dcpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON P. SEREBOFF, MICHAEL L. KAESSNER,
and CHRISTOPHER D. NEWMAN
Appeal 2017-003622
Application 12/469,639
Technology Center 2100
Before KRISTEN DROESCH, DENISE M. POTHIER, and
JASON M. REPKO, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 12—29. App. Br. 4.1 Claims 1—11 have been canceled.
Id. at 14 (Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed December 1, 2015, (2) the Appeal Brief (App. Br.) filed May 2,
2016, (3) the Examiner’s Answer (Ans.) mailed November 3, 2016, and (4)
the Reply Brief (Reply Br.) filed January 3, 2017.
Appeal 2017-003622
Application 12/469,639
Invention
Appellants’ invention concerns a “device and method of exchanging
contact information, information on hobbies, shared interests, images,
business advertising, etc., with selected individuals. The method of
exchanging contact information may be used to drive users to a website to
access information stored on the website.” Spec., Abstract.
Claim 12 is reproduced below with emphasis:
12. A device for exchanging user information comprising:
a device selector that selects one of a plurality of device identifiers
via a physical device selector button, wherein each actuation of the
physical device selector button is respectively associated with each of
the plurality of device identifiers specific to the device;
a first data connection circuitry that sends the one selected device
identifier to a second device and receives a device identifier specific
to the second device;
a data storage that stores the plurality of device identifiers and the
received device identifier; and
a second data connection circuitry that sends the plurality of device
identifiers and the received device identifier to a database that stores
user information corresponding to the plurality of device identifiers
and the received device identifier,
wherein access to the database is precluded until the device is
registered to a service and the service is associated with a subscriber,
wherein the registration of the device to the service and the
exchange of the one selected device identifier and the device identifier
specific to the second device do not grant immediate access to user
information stored at the database; and
wherein the registration of the device to the service and the
exchange of device identifiers creates, at least in part, a point of
contact between subscribers corresponding to the device identifiers.
The Examiner relies on the following as evidence of unpatentability:
Friedman US 2002/0119789 A1 Aug. 29, 2002
US 2008/0064374 A1 Mar. 13, 2008
US 2009/0125521 A1 May 14, 2009
Coffing
Petty
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Application 12/469,639
The Rejections
Claims 12, 13, 15—22, and 24—29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coffing and Friedman. Final Act. 5—11.
Claims 14 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coffmg, Friedman, and Petty. Final Act. 11—12.
OBVIOUSNESS REJECTION OVER COFFING AND FRIEDMAN
Regarding independent claim 12, the Examiner finds Coffmg teaches
a device selector (e.g., a switch) that can pre-tag received device identifiers
into groups but does not teach the recited “each actuation of the device
selector button is respectively associated with each of the plurality of device
identifiers specific to the device” that permits selecting a device identifier
(ID) to send to other devices. Final Act. 5 (citing Coffmg || 9, 42, 45), 7.
The Examiner turns to Friedman in combination with Coffmg to teach the
disputed “device selector” recitation. Final Act. 8—9 (citing Friedman H 37,
55—56, Fig. 4); Ans. 5—6. Appellants argue Coffmg does not teach the
claimed “each actuation” element, because Coffmg “does not contemplate
different ID types presented by the sending user.” App. Br. 9. Appellants
also assert Friedman cannot teach this disputed element of claim 12 because
the buttons taught by Friedman are not specifically associated with a device
identifier, but rather, a key is displayed and a control knob scrolls the keys in
Friedman. App. Br. 9 (Friedman 137, 55—56).
The Examiner further finds that Coffmg teaches “the registration of
the device to the service and the exchange of the one selected device
identifier and the device identifier specific to the second device do not grant
immediate access to user information stored at the database” in claim 12.
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Application 12/469,639
Final Act. 7 (citing Coffing 112). Appellants argue Coffing does not teach
or suggest the “wherein registration of the device” clauses of claim 12. App.
Br. 6—7 (reproducing Coffing H 11, 12, 18, 35). Specifically, Appellants
assert that “the levels of interaction” discussion in Coffing is distinct from
the setting of the available channels discussion in Coffing. App. Br. 6—7
(citing Coffing 112). Appellants argue that the statement of “none at all”
relates to available communication channels not the interaction level. App.
Br. 7-8.
ISSUES
Under § 103, has the Examiner erred in rejecting claim 12 by finding
that Coffing and Friedman collectively would have taught or suggested:
(I) “each actuation of the physical device selector button is
respectively associated with each of the plurality of device identifiers
specific to the device” and
(II) “the registration of the device to the service and the exchange of
the one selected device identifier and the device identifier specific to the
second device do not grant immediate access to user information stored at
the database”?
ANALYSIS
I.
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 12 which calls for, in pertinent part, “each
actuation of the physical device selector button is respectively associated
with each of the plurality of device identifiers specific to the device.” For
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Application 12/469,639
this limitation, the Examiner relies on Coffing and Friedman. Final Act. 5,
7—9 (citing Coffing || 9, 42, 45 and Friedman || 37, 55—56, Fig. 4).
Coffing teaches sending and receiving of unique profile identifiers
(IDs) (e.g., device identifiers) specific to user devices (e.g., wireless
electronic business/personal card) that are registered to an electronic
business/personal card service. Coffing 19. Coffing also teaches the
devices “may be equipped with a manual switch with several settings such
that the received IDs are pre-tagged with a certain group, social type or
interest so as to shorten the processing during classification.” Id. 145.
Based on these teachings, we agree with the Examiner that Coffing teaches a
device selector (e.g., a manual switch) that selects from device identifiers
(e.g., unique profile identifiers specific to devices). Final Act. 5; see also
Coffing 119 (describing a “selector switch”).
Appellants contend that this manual switch in Coffing is not taught as
“a single actuation switch” and that the “the single button of Coffing
described in figure 1 only relates to transmitting of identifiers to others and
not the ‘manual switch’ described in paragraph [0045].” App. Br. 9—10.
Notably, claim 12 recites “a physical device selector button” not a single
actuation button. Courts have “repeatedly emphasized that an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in
open-ended claims containing the transitional phrase ‘comprising.’” KCJ
Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
Similarly, the Examiner reasonably construes the recited “button” as
requiring one or more buttons. Ans. 5 (stating “[t]his limitation means that
the device has one or more physical buttons used to select a different device
ID”).
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As such, the argument of whether or not Coffing, or for that matter
Friedman, teaches a single actuation button is not availing. App. Br. 9—10.
Even so, Appellants state Coffing teaches single buttons are known in the art
for various applications, including being used to transmit identifiers. See id.
Coffing reinforces this concept, teaching a single button can be used to both
activate (1) the send/receive function and (2) the exchange of wireless
identifications “so that the flavor of the moment is not diluted by multiple
clicks and button exchanges.” Coffing 141.
The Examiner acknowledges Coffing does not discuss its selector
permits each actuation of the selector button is associated with device
identifiers specific to the device as recited in claim 12 and turns additionally
to Friedman. Final Act. 8—9 and Ans. 5—6 (both citing Friedman 37,
55—56, Fig. 4). In this regard, Friedman teaches a user can set up a number
of different “keys” on the portal server associated with different information
types and/or services (e.g., a standard key for general information, a business
key for business-oriented information/services and personal key for personal
information/services) to provide an efficient mechanism for exchanging
information using a limited amount of memory. Friedman 55—56, cited in
Final Act. 8—9. Notably, the keys in Friedman associated with business and
personal information are similar to the device IDs in this application’s
disclosure, which are also associated with personal and business profiles.
See Spec. 139. Friedman further teaches a known device selector (e.g.,
control buttons 440, 441 and knob 450) that permits a user to select from
among these keys (e.g., device IDs) to transmit or exchange with other users.
Friedman | 56, Fig. 4, cited in Final Act. 8.
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Appellants contend that Friedman’s buttons 440 and 441 are not
“associated with each of the plurality of device identifiers” but rather control
knob 450 is associated with the identifiers given that knob 450 scrolls
through the keys. App. Br. 9. We are unpersuaded. Friedman states the
keys are selected using controls 440, 441, and 450; buttons 440 and 441 are
used to select menu items and to jump back and forth between stored portal
data (e.g., keys) and control knob 450 permits scrolling between menu items
and data. Friedman || 37, 56. Thus, Friedman teaches buttons 440 and 441
are involved in selecting items and thus are associated with device identifiers
(e.g., keys). Moreover, as noted above and similar to the above discussion,
the recited “actuation of the physical device selector button” in claim 12
does not recite a “single actuation” or require the actuation be based on a
single button as argued. App. Br. 10.
Appellants also argue Coffmg teaches using device identifiers of
different devices so that registered users can be matched and not a plurality
of device identifiers for a single device. App. Br. 9; Reply Br. 2. The
Examiner agrees and turns to Friedman in combination with Coffmg to teach
the claimed feature of “each of the plurality of device identifiers specific to
the device” in claim 12. Final Act. 7—9.
In the Reply Brief, Appellants argue for the first time that (1) Coffmg
and Friedman do not teach “the use of ‘a plurality of device identifiers
specific to the device’,” (2) “there is no teaching of any use of ‘physical
device selector button’ in the context of the entire claims,” (3) Coffmg and
Friedman do not support a teaching of a physical button as recited, (4)
selecting categories is not similar to selecting device identifiers, and (5) the
Examiner provides no “technical reasoning for the modification.” Reply
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Br. 2 (emphasis omitted). For the most part, these arguments are waived
because they were not raised in the Appeal Brief or in response to argument
raised in the Examiner’s Answer. 37 C.F.R. § 41.41(b)(2).
In any event, Friedman teaches or suggests device identifiers (e.g.,
keys as discussed above) specific to a device (e.g., portal memory device).
See Friedman || 55—56. When combined with Coffing, as proposed, the
Coffmg/Friedman device further teach a selector button associated with a
“plurality of device identifiers specific to the device” as recited. Final Act.
8—9; Ans. 5—6. The rejection also provides a reason with a rational
underpinning for combining Coffmg and Friedman—“to provide a physical
selector switch for selecting a device ID to send to other devices, because
doing so would provide an efficient mechanism for exchanging information
using a limited amount of portal device memory.” Final Act. 9 (citing
Friedman | 55); see also Ans. 6. Moreover, as noted above, both Coffmg
and Friedman teach and suggest the recited “a physical device selector
button.” We also refer above concerning how Friedman’s “keys” are similar
to the recited “device identifiers.”
Accordingly, the Examiner did not err in determining Coffmg and
Friedman teach or suggest “wherein each actuation of the physical device
selector button is respectively associated with each of the plurality of device
identifiers specific to the device” as recited in claim 12.
II.
Appellants further argue that Coffmg does not teach or suggest the
“wherein the registration of the device to the service” limitations in claim
12, including “wherein the registration of the device to the service and the
exchange of the one selected device identifier and the device identifier
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specific to the second device do not grant immediate access to user
information stored at the database.” App. Br. 6—7 (reproducing Coffmg
11, 12, 18, 35). Specifically, Appellants contend that Coffmg “only
considers levels of interaction that go to no interaction (see, e.g.,
communication) but not full levels of privacy as the Examiner alleged (Final
Office Action, p.3 and Advisory Action, p.2).” App. Br. 7. We are not
persuaded.
Notably, neither claim 12 recites nor Coffmg uses the word “privacy”
or the phrase “levels of privacy.” On the other hand, claim 12 does recite
“the registration of the device to service and the exchange ... do not grant
immediate access to user information stored at the database.” Thus,
although the claim’s language may imply “setting privacy levels” through
the recitation of “not granting] immediate access to user information” (see
Ans. 2—3), there is no explicit recitation found in claim 12.
The rejection relies on Coffmg to teach the above, disputed limitation.
Final Act. 7 (citing Coffmg 112). As the Examiner explains, Coffmg
discusses “both users will have ability to determine the level of their
information that will be seen by the other, and to set the available channels
for future communication, e.g. IM, email, phone, etc[.] or none at all.”
Coffmg 112, reproduced at Ans. 4. That is, the receiving user and the other
registered user can both (1) “determine the level of their information that
will be seen by the other” and (2) “to set the available channels for future
communication.” Coffmg H 11—12. By having the ability to determine the
level of the information that will be seen by others, “the user has the control
to determine what the levels of interaction should be, i.e., determine if the
other users can see all, some, or none of the user’s information.” Ans. 4.
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Coffing therefore teaches a user can decide that some or no
information will be seen by others (see Coffing 112) and suggests “the
registration of the device to the service and the exchange of the one selected
device identifier and the device identifier specific to the second device do
not grant immediate access to user information stored at the database” as
recited in claim 12. The user can then later permit the other registered user
access to other of the user’s information by changing the information level
that will be seen by others. See id. Thus, regardless of whether the
statement “none at all” relates to communication channels or interaction
level (see App. Br. 7—8), Coffing teaches and suggests separately the user
can “determine the level of their information that will be seen by the other.”
Coffing 112.
Appellants further assert that “in at least all instances,” Coffing
teaches a user can see “a picture and other general information.” App. Br.
10 (citing Coffing 112). Yet, this is just one embodiment of Coffing. Other
embodiments in Coffing, as discussed above, suggest that the user can
determine that other users have no access (e.g., cannot see any level of
information). See Coffing 112. Moreover, as broadly as recited, claim 12
does not recite that the registration and exchange limit access to no
information. Rather, the claim recites the registration and exchange “do not
grant immediate access to user information,” without specifying what user
information. As such, even if Coffing teaches other users will always have
access to “a picture and other general information,” Coffing suggests a user
can still limit immediate access to other information, such as likes and
dislikes and links to favorite websites. See id. H 12, 35—36.
Appellants’ arguments to the contrary are unavailing.
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III.
Appellants state the appealed claims do not stand or fall together,
organizing the claims into four groups: Group I (claim 12), Group II (claims
13-20), Group III (claim 21), and Group IV (claims 22—29). App. Br. 4.
Appellants rely on the discussion of claim 12 for claim 21. See App. Br. 10—
11. We are not persuaded for the reasons stated previously. Similarly, for
claims 13, 15—20, 22, and 24—29, Appellants state these claims depend from
either claim 12 or claim 21 and are patentable due to their dependencies. Id.
at 11. For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claims 12 and 21 and claims 13, 15—20, 22,
and 24—29 not separately argued.
OBVIOUSNESS REJECTION OVER COFFING, FRIEDMAN,
AND PETTY
Claims 14 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coffmg, Friedman, and Petty. Final Act. 11—12. For this
rejection, Appellants contend that Petty does not remedy the purported
deficiencies of Coffmg and Friedman. App. Br. 12. As discussed above,
Coffmg and Friedman teach and suggest the disputed limitations. Petty thus
need not cure any alleged deficiency.
Accordingly, Appellants have not persuaded us of error in the
rejection of dependent claims 14 and 23.
DECISION
We affirm the Examiner’s rejection of claims 12—29 under § 103.
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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).
AFFIRMED
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