Ex Parte Silver et al

Patent Trial and Appeal Board

Feb 2, 2015

11936303 (P.T.A.B. Feb. 2, 2015)

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.
11/936,303 11/07/2007 Edward M. Silver 050421 (9400-366) 9560
39072 7590 02/03/2015
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
02/03/2015 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 EDWARD M. SILVER and
NICHOLAS S. HUSLAK
___________

Appeal 2012-010772
Application 11/936,303
Technology Center 3600
____________

Before JOHN C. KERINS, ANNETTE R. REIMERS, and
JILL D. HILL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Edward M. Silver and Nicholas S. Huslak (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–3, 7–9,
11, 20, 21, and 25–27: (1) under 35 U.S.C. § 112, second paragraph, as
indefinite; and (2) under 35 U.S.C. § 103(a) as unpatentable over Leibold
(US 6,178,378 B1; iss. Jan. 23, 2001), Tashiro (US 2005/0096842 A1; pub.
May 5, 2005), Lin (US 2007/0197231 A1; pub. Aug. 23, 2007), Kawasaki
(US 7,031,832 B2; iss. Apr. 18, 2006) and Chen (US 2007/0118415 A1;
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Application 11/936,303

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pub. May 24, 2007).1 Claims 4–6, 10, 12–19, and 22–24 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “[a] method[] . . . and computer
program product[] for estimating departure times for arrival at origination
points in a transportation system and notifying a user accordingly.” Spec.
para. 1; Fig. 3. Claims 1 and 11 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method comprising:
performing operations as follows on at least one
processor:
receiving a range of first departure times selected
by a first user, a travel time of the first user to a station
served by a plurality of transportation units according to
a schedule, and a transportation route, wherein the station
is on the transportation route, and a first user location that
is remote from the station;
receiving global positioning device location
information for the plurality of transportation units on the
transportation route;
receiving a range of second departure times
selected by a second user, a travel time of the second user
to the station and a second user location that is remote
from the station;
calculating a plurality of first departure times
within the range of first departure times based on the
travel time of first user to the station and the global
positioning device location information for the plurality

1 The Examiner includes canceled claims 4–6 and 22–24 in the heading of
the rejection. See Ans. 5; see also id. at 10. We consider this a
typographical error.
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Application 11/936,303

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of transportation units such that if the first user departs
first user location at a selected one of the first departure
times, the first user will reach the station with at least
time to board one of the plurality of transportation units;
and
calculating a plurality of second departure times
within the range of second departure times based on the
travel time of the second user such that if the second user
departs the second user location at a selected one of the
second departure times, the second user will reach the
station with at least time to board the one of the plurality
of transportation units;
wherein the plurality of first departure times and
the plurality of second departure times are calculated
such that the first and second user arrive at the station at
approximately the same time.

ANALYSIS
Indefiniteness
Independent claim 1 calls for a method including the step of
calculating a plurality of second departure times within the range of second
departure times based on the travel time of the second user such that if the
second user departs the second user location at a selected one of the second
departure times, the second user will reach the station with at least time to
board the one of the plurality of transportation units. See Appeal Br. 9,
Claims App. The Examiner finds that
[t]his level of detail is not found in the
[S]pecification. The [S]pecification just states that
the departure times are coordinated and not
explicitly on how it’s done(Paragraph 45 “ the
departure times of two or more people can be
coordinated so that they will arrive at
approximately the same time in order to catch the
same train”)[.]

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Ans. 5. In other words, the Examiner takes the position that “the
[S]pecification does not disclose the specific procedure of how the
coordination is performed as claimed.” See id. at 11.
Appellants contend that
the explanation in paragraph 45 of the
Specification, . . . clearly states that the departure
times of two or more users can be coordinated so
that they will arrive at approximately the same
time . . . is sufficient to support a claim recitation
directed to calculating a departure time to allow a
second user to arrive at a station [at approximately
the same time] as a first user.
Reply Br. 2; see also Appeal Br. 4–5.
Appellants’ argument is persuasive. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). The Specification describes
that
[a]lthough some embodiments are described
herein with respect to a single user of the
transportation, additional embodiments may
involve a plurality of users departing from
different points (e.g., homes/offices within walking
distance of a particular transportation origination
point) and planning to arrive at the same
transportation origination point using another
embodiment that coordinates information from the
plurality of users and estimates a departure time
for each of them.
Spec. para. 42; see also Appeal Br. 2–3. The Specification further describes
that “[i]n some embodiments, the departure times of two or more people can
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Application 11/936,303

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be coordinated so that they will arrive at approximately the same time in
order to catch the same train, bus or plane.” Id. at para. 45; see also Appeal
Br. 2–3. The calculating step for a second user (referred to by the Examiner
(see Ans. 5)) is identical to the calculating step for a first user, except that it
applies to a second user. See Appeal Br. 9, Claims App. Appellants’
disclosure supports the calculating step being applicable to one or more
users. See Spec. paras. 42, 45. Claim 1 further requires that the at least one
processor calculates (coordinates) the plurality of first departure times for a
first user and the plurality of second departure times for a second user such
that the first and the second user arrive at the station at approximately the
same time. See id. at paras. 19, 31, 35, 42, 45.2 We agree with Appellants
that “[a] specific procedure of coordinating departure times for two or more
users is not claimed.” Reply Br. 2; see also Appeal Br. 4–5.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claim 1 and its dependent claims 2, 3,
and 7–9 for indefiniteness.
Similar to claim 1, claim 11 calls for a computer program product
including computer readable program code that is configured to calculate a
plurality of second departure times within the range of second departure
times based on the travel time of the second user such that if the second user

2 We note that claim 1 does not require the second user to board the same
transportation unit as the first user. See Appeal Br. 9, Claims App; see also
id. at 5; Reply Br. 2; Spec. 45. Claim 1, as presented, calls for each of the
first and the second user “[to] reach the station with at least time to board. . .
one of the plurality of transportation units.” See id. In other words,
although claim 1 requires that the first and the second user arrive at the
station at approximately the same time, the first and the second user may
board the same or a different transportation unit.
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departs the second user location at a selected one of the second departure
times, the second user will reach the station with at least time to board the
one of the plurality of transportation units. See Appeal Br. 10–11, Claims
App. For the reasons set forth above with regard to claim 1, we likewise do
not sustain the Examiner’s rejection of independent claim 11 and its
dependent claims 20, 21, and 25–27 for indefiniteness.
Obviousness
The Examiner finds that “Leibold does not explicitly disclose . . .
receiving a range of second . . . departure times of a second user. Leibold
describes . . . only a single user environment.” Ans. 8. The Examiner
further finds that
Chen . . . teaches of a multi user system which
schedules the departure time of the various users
based on [their] present position and calculates a
departure time such that when the user leaves the
present position they will arrive at a meeting
location with other users at a certain time . . . Chen
teaches that the plurality of first departure times
and the plurality of second departure times are
calculated such that the first and second user arrive
at the meeting location at the same time.
Id. at 8–9 (citing Chen, paras. 45, 46).3 The Examiner concludes that it
would have been obvious “[to include] Chen’s teachings of having a
networked environment of multiple users for the purpose of allowing

3 The Examiner relies on Tashiro for disclosing the step of receiving a range
of departure times selected by a user. See Ans. 7. The Examiner relies on
Lin for disclosing the step of receiving GPS position of the plurality of
transportation units on the transportation route. See id. at 8. The Examiner
relies on Kawasaki for disclosing the step of calculating a plurality of first
departure times within a range of departure times. See id.

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different users to meet each other at certain locations (meeting location) at a
certain time.” Id. at 9.
Appellant contends that
Chen discloses a meeting scheduling system that
determines the travel time required for a
participant to reach a meeting and sends the
participant a notification of when the participant
should depart to reach the meeting location on
time. . . . Chen’s meeting scheduling system is
only concerned with an individual meeting
participant’s location and the meeting start time
and does not attempt to coordinate the [departure
times] of multiple participants to ensure they arrive
at approximately the same time for the meeting.
See Appeal Br. 7; see also id. at 6; Reply Br. 2–3.
Appellants’ argument is persuasive. At the outset, we note that claim
1 calls for “calculating a plurality of . . . departure times.” See Appeal Br. 9,
Claims App. Claims are construed with an eye toward giving effect to all
terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006). In this case, the scheduling application of Chen does not
calculate a plurality of departure times for a participant (user) (see Spec.
paras. 4, 34), but rather calculates a single departure time for a participant
(user) (see Chen, para. 45). The Examiner’s interpretation renders
meaningless or superfluous the phrase “a plurality of departure times” by
interpreting that phrase to mean a single departure time. See Ans. 8 (“Chen .
. . teaches a multi user system [that] calculates a departure time.”); see also
id. at 9.
Chen discloses that if a meeting location is available at the desired
date and time, the meeting scheduling application obtains the schedules for
the meeting participants 406. See Chen, para. 45; Fig. 4. Chen further
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discloses that if a participant is available (i.e., has no schedule conflicts), the
scheduling application calculates the travel time, adds that time to the
participant’s schedule 410, and transmits a notification that indicates the
participant’s departure time to the participant 412. See id.; see also Chen,
Fig. 4. The scheduling application calculates the travel time for each
available participant and transmits a notification to each available participant
indicating his or her departure time. See id.; see also Chen, Fig. 4.
Claim 1 calls for a method including the steps of calculating a
plurality of first and second departure times for respective first and second
users, wherein the plurality of first departure times for the first user and the
plurality of second departure times for the second user are calculated such
that the first and the second user arrive at the station at approximately the
same time. See Appeal Br. 9, Claims App. Because a participant’s
departure time is based on the meeting time in Chen (see Chen, para. 45), we
acknowledge that the participants would, most likely, arrive at the meeting at
approximately the same time. See Ans. 11–12. However, as discussed
above, Chen fails to teach or suggest that the scheduling application
calculates a plurality of departure times for a participant (user). Further,
Chen fails to teach or suggest that the scheduling application calculates
(coordinates) the departure time of one participant with the departure time of
another participant. Rather, Chen discloses that the scheduling application
calculates the travel time for each participant and transmits a notification to
each participant indicating his or her departure time. See Chen, para. 45.
Based on the foregoing, the Examiner has failed to establish a prima facie
case that the combined teachings of Leibold, Tashiro, Lin, Kawasaki, and
Chen disclose the method called for in independent claim 1.
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Application 11/936,303

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Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claim 1 and its dependent claims 2, 3,
and 7–9 as unpatentable over Leibold, Tashiro, Lin, Kawasaki, and Chen.
Independent claim 11 calls for a computer program product including
computer readable program code that is configured to calculate a plurality of
first and second departure times for respective first and second users,
wherein the plurality of first departure times and the plurality of second
departure times are calculated such that the first and second user arrive at the
station at approximately the same time. See Appeal Br. 10–11, Claims App.
The Examiner relies on the same deficient findings and conclusions for
claim 11 as discussed above in claim 1. See Ans. 5–10. Thus, the
Examiner’s findings and conclusions with respect to Leibold, Tashiro, Lin,
Kawasaki, and Chen are deficient for claim 11 as well.
For the reasons set forth above with regard to claim 1, we likewise do
not sustain the Examiner’s rejection of independent claim 11 and its
dependent claims 20, 21, and 25–27 as unpatentable over Leibold, Tashiro,
Lin, Kawasaki, and Chen.

DECISION
We REVERSE the decision of the Examine to reject claims 1–3, 7–9,
11, 20, 21, and 25–27 under 35 U.S.C. § 112, second paragraph, as indefinite
We REVERSE the decision of the Examiner to reject claims 1–3, 7–9,
11, 20, 21, and 25–27 under 35 U.S.C. § 103(a) as unpatentable over
Leibold, Tashiro, Lin, Kawasaki, and Chen.

REVERSED
Appeal 2012-010772
Application 11/936,303

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