Ex Parte Shirai et al

Patent Trial and Appeal Board

Sep 28, 2016

12361800 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/361,800 0112912009 Kazuhiko Shirai
36738 7590 09/30/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
200802329.01 8931
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHIKO SHIRAI, Y ASUHIRO RABARA, KOKI IW AZAKI,
and TSUYOSHI KODERA
Appeal2014-003138
Application 12/361,800 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and
BRADLEY B. BAY AT, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON A.PPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellants identify Sony Corp. as the real party in interest. Appeal Br. 2.
Appeal 2014-003138
Application 12/361,800
THE INVENTION
Appellants' invention is directed to location based computerized
personal organizers. (Spec. 1 ).
Claims 1 and 8 are the independent claims on appeal. Claim 8,
reproduced below, is illustrative of the subject matter on appeal.
8. A personal organizer configured for automatically
obtaining current position information for events scheduled on
a calendar in the personal organizer and using the information
in combination with event location information in the personal
organizer to calculate and present route and estimated time of
arrival (ET A) information to the scheduled event, wherein the
personal organizer is configured such that if the ET A is later
than the event time in the calendar, a delay notification
automatically is sent from the personal organizer to at least one
contact associated with the event, wherein the personal
organizer is configured for generating a reminder of the
scheduled event at a manufacturer-defined or user-defined
default reminder period of "X" hours prior to every event only
of a specified category of events and no reminders ever are
generated for events not in a categor; specified for reminders.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thompson
Meisels
Elsey
Coughlin
US 2003/0005150 Al
US 2008/0086455 Al
US 2009/0156178 Al
US 7,869,941 B2
Jan.2,2003
Apr. 10, 2008
June 18, 2009
Jan. 11, 2011
The following rejections are before us for review.
Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Coughlin, Meisels, and Thompson.
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Application 12/361,800
Claims 8-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Coughlin and Elsey.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 6-8 of the
Final Office Action only concerning the rejection of claims 8-13.
ANALYSIS
Claims 1-7
Independent claim 1 is directed to a "personal organizer" and recites,
in pertinent part,
wherein the processor is configured for accessing
the computer readable medium for generating the
reminder at an end user-defined reminder time in
the data structure if the end user-defined reminder
time is provided in the data structure for the event,
and further wherein responsive to the processor
determining that no user-defined reminder time is
in the data structure for the event, the processor is
configured for accessing the computer readable
medium for determining, for only an "N" earliest
future events, whether a reminder should be
generated by default, wherein N is an integer
greater than one.
Concerning this limitation, the Examiner finds that Thompson teaches
the following at paragraph 61:
[0061] If a reminder request is not set in the appointment from
of FIG. 4 then a default time period from the user profile will
be used if a reminder is requested in the telephony proforma.
(Answer 2). The Examiner finds that:
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Application 12/361,800
Thus, Thompson teaches that a reminder is generated by
default, at a default time, in the situation that there is none set in
the Appointment form, but it is set in the Telephony form ....
Thompson clearly teaches a calendar with multiple events. For
example, paragraph 50 states:
The gateway 12 may also be arranged to provide appointment
reminders based on schedule 16. Calendar software typically
provides reminders through a 'popup ' dialog window.
Thus, it is clear that Thompson's description of determining
whether a default reminder should be generated for one
appointment is applicable to all appointments made using the
calendar system. As shown in paragraph 50 and as is known in
the art, the calendar taught by Thompson consists of more than
one appointment, as do most calendars.
(Id. at 2-3).
Appellants argue, however,
At its most relevant Thompson teaches using a default
time for a reminder if a time has not been specified,
paragraph 61. But Claim 1 ties ("responsive to") determining
that no user-defined reminder time exists to determining, for
only an "N" earliest future events, whether a reminder should
be generated by default, wherein N is an integer greater than
one. No matter how many "possibilities" (Office Action,
page 9, line 1) N being greater than one contemplates,
Thompson generates one and only one reminder of one and
only one future event.
(Appeal Br. 4).
We do not find that the relied upon paragraphs in Thompson disclose
determining, for only an "N" earliest future events, whether a reminder
should be generated by default, wherein N is an integer greater than one.
We do not agree with the Examiner's finding that "determining whether a
default reminder should be generated for one appointment is applicable to all
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Appeal 2014-003138
Application 12/361,800
appointments made using the calendar system" (Answer 3), meets the above
claim requirement. There is nothing in paragraphs 50 and 61 of Thompson
that discloses or suggests that the system determines for only an "N" earliest
future events, whether a reminder should be generated by default. Following
the Examiner's logic, if all applicable appointments are given default
reminders, then there is nothing that limits such defaults to an integer
greater than one, as required by claim 1.
Thus, we cannot sustain the rejection of independent claim 1, and
claims 2-7, which depend from claim 1.
Claims 8-13
Concerning claim 8, Appellants argue:
Turning to Claim 8, while paragraph 93 of Elsey
discusses notification periods that can vary by subject,
category, or information content of the appointment record, the
clear error meriting reversal of the rejections is that nowhere
does Elsey teach or suggest that no reminders ever are
generated for events not in a category specified for reminders.
Instead, Elsey generates a reminder one hour prior to domestic
flights and two hours prior to international flights but nowhere
contemplates removing an entire category of less important
events from reminders altogether. The rejections merit reversal
for failing to show where each and every element in Claim 13
[sic] appears in the evidence of record, as opposed to mere
examiner argumentation intended to serve as a surrogate
therefor.
(Appeal Br. 5).
The Examiner, however, found that
The originally filed specification lacks a special definition of
event category; therefore, the specification is of such scope that
it does not exclude the category of events (that do not receive a
reminder) taught by Elsey. At paragraph 93, Elsey describes
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Application 12/361,800
the possible scenarios where "The notification is provided by
server 28 a period before the appointment, where the length of
the period may be predetermined or selected by the user, or
varies with the subject, category and/or information content of
the appointment record provided by the user." In the scenario
where the length of the period may be predetermined or
selected by the user (i.e., the length of the period does not vary
with the subject category and/or information content), Figure 19
is clearly the tool used by a user to select the length of the
period. When looking at the bottom "Reminders" section of
Figure 19, it clearly shows two possible categories of events
when it comes to reminders that the user can select: 1) Do not
send a reminder, and 2) Send a reminder before the event. To
be more precise with the language of the claim, Elsey teaches
that no reminder is ever sent for future events that are not in the
"Send a reminder before the event" category and are in the "Do
not send a reminder" category.
(Answer 3--4).
We disagree with Appellants here because paragraph 93 of Elsey
discloses that "server 28 may be programmed to send a reminder notification
to a user prior to his/her appointment," and that "the length of the period
may ... vary with the category of the appointment." Elsey provides an
example of a category driven reminder stating that:
[I]f an appointment concerns catching a domestic flight which
generally requires a relatively short check-in process, barring
any user override, based on an analysis of the subject, category
and/ or information content of the appointment record, server 28
automatically generates and sends a reminder notification to the
user an hour before the scheduled flight. On the other hand, if
it concerns catching an international flight which generally
requires a relatively long check-in process, the lead period for
generating and sending such a reminder notification may be two
hours.
(Elsey, para. 93).
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Thus, we find that Elsey explicitly discloses the claim requirement of
a "user-defined default reminder period of 'X' hours prior to every event
only of a specified category of events," because the X value for a domestic
flight is disclosed as being different than the value used for an international
flight.
We further find that Elsey offers the option of a user specified "send"
or "not send" reminder. (See Elsey, Figure 19; see also Answer 3--4). We
choose to apply to the claims the mode in which the user chooses to "[ s ]end
a reminder before the event." Thus, for this mode, we find that Elsey meets
the claim requirement of "no reminders ever are generated for events not in a
category specified for reminders," because, in the airline ticket embodiment
(see Elsey, para. 93) for example, flight reminders will be sent only for
events tied to airline travel.
Appellants' argument is also not commensurate with the broader
scope of claim 8, which does not require a distinction between "less
important events from reminders altogether." (Appeal Br. 5). In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Appellants' argument that "[ t ]here is no evidence of record to support
the allegation of common sense as to what 'certainly lies within the skill of
an ordinary artisan .... "' (Appeal Br. 5---6), is rendered moot given the
common sense finding by the Examiner concerns Thompson and claims 1-7
supra. (Final Act. 9).
Therefore, we sustain the rejection of independent claim 8. We also
sustain the rejection of dependent claims 9-13 for the same reasons, because
Appellants have not challenged these claims with any reasonable specificity.
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
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CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-7 under
35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 8-13 under
35 U.S.C. § 103(a).
DECISION
The rejection of claims 1-7 is reversed.
The rejection of claims 8-13 is sustained.
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-IN-PART
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