Ex Parte SINGH et al

Patent Trial and Appeal Board

Dec 23, 2013

11425623 (P.T.A.B. Dec. 23, 2013)

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.
11/425,623 06/21/2006 MUNINDAR P. SINGH I395/US 9544
49278 7590 12/23/2013
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
WOO, KUO-KONG
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
12/23/2013 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 MUNINDAR P. SINGH and MONA SINGH
___________

Appeal 2011-006522
Application 11/425,623
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006522
Application 11/425,623

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STATEMENT OF THE CASE
Appellants are appealing the rejection of claims 1-60. Appeal Brief 6.
We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to a system and method for naming a
location based on user-specific information wherein the name generation
module and not the user generates a name for the location based upon an
atemporal correlation between the general information relating to the
location and the user-specific information. Appeal Brief 8; Specification 2-
3.

Illustrative Claim
1. A system for naming a location, the system comprising:
a mobile communication device associated with a user
comprising a position locator system configured to identify a
location of the mobile communication device;
a first data store for storing general information relating
to the location, wherein the general information is managed by
or for an entity other than the user;
a second data store for storing user-specific information
that is managed by or for the user; and
a name generation module configured to receive the
location of the mobile communication device, to retrieve from
the first data store general information relating to the location,
and to generate a name for the location based on an atemporal
correlation between the general information relating to the
location and the user-specific information.
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Application 11/425,623

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Rejections on Appeal
Claims 1, 2, 4-7, 10, 11, 13-15, 18-25, 27, 29, 30, 32, 33, 37-45, 47-
51, and 53-60 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zelentsov (U.S. Patent Application Publication Number 2007/0067098
A1; published March 22, 2007) and Karr (U.S. Patent Number 6,952,181
B2; issued October 4, 2005). Answer 4-9.
Claims 3, 8, 9, 12, 16, 17, 26, 28, 31, 34-36, 46, and 52 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Zelentsov, Karr, and
Ganesh (U.S. Patent Number 6,999,777 B1; issued February 14, 2006).
Answer 9-11.

Issue
Do Zelentsov, Karr, and Ganesh, either alone or in combination,
disclose a system for naming a location wherein a name generation module
is configured to receive the location of a mobile communication device and
retrieve general information relating to the location and then generate a
name for the location based on an atemporal correlation between the general
information and user-specific information?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
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Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellants argue in regard to Zelentsov’s eMark that:
The eMark is based entirely on user-specific information
since the user has specified all of the information that is stored
in the eMark. The eMark is not generated by retrieving general
information relating to the location and generating a name
based on an atemporal correlation between the retrieved general
information relating to the location and the user-specific
information. Instead, the eMark is based entirely on user-
specified information, which is user-specific information. Thus,
Zelentsov teaches away from generating a name based on an
atemporal correlation between the retrieved general information
relating to the location and the user-specific information.

Appeal Brief 34.
Appellants appear to be attempting to distinguish the information or
data recited in claims as “user-specific” and “general” information. See
claim 1. However, neither of the claimed data stores is structurally or
physically configured to only accept one type of the claimed data. Moreover,
the generated “name” is not positively recited as being used to change or
affect any machine or computer function. (claim 1). Therefore, a question
arises as to how much patentable weight should be accorded, if any, to the
claimed data elements. Data designations that are merely labels are
considered to be non-functional descriptive material if the informational
content of the data does not affect how the invention functions. See In re
Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983).
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The Examiner finds that the eMark is based upon “mobile phone
positioning service and user-specific information” and therefore “is not
based entirely upon user-specified information” as Appellants contend.
Answer 14. The Examiner reasons in relation to the eMark that it is “not
logical to state a first data storing general information relating to the
location, wherein the general information is managed by other” because how
can relating the information to the location be achieved without any
knowledge of a mobile station, and therefore, the “eMark is established by
system and not by user alone.” Id. We find no error with the Examiner’s
findings.
Zelentsov discloses that the eMark is generated by the person or
business wishing to provide geographical and optionally personal or other
contact information. Zelentsov [0019]. Zelentsov discloses, “This is done
by communicating with software adapted to the purpose of accepting the
geographic profile information from a user, storing it on a server or database
and issuing the eMark designation to the user.” Id.
Zelentsov further discloses, “Instead of providing the usual tedious
input of name and address and contact information, the identifying party
would complete the products they wished to order and at the end of the order
would simply provide their eMark or individual designator.” Zelentsov
[0025]. According to Zelentsov, the vendor would then take the eMark or
designator, retrieve information from a database and look up all the required
information for shipment of the product. Id.
We agree with the Examiner’s findings that Zelentsov discloses both
“user-specific” information as well as “general” information. See Answer 4-
5. In particular, Zelentsov discloses, “Temporary designators may be
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automatically created on the database without manual input by the user when
GPS enabled cell phones or similar devices communicate the user’s
temporary location to the server.” Abstract (emphasis added).
We also agree with the Examiner that the eMark is established by a
system (see Answer 14) and therefore, we find that Zelentsov teaches
storing both general and user-specific information and generating a name
based upon the two types of information. See Answer 5.
Although the Examiner finds that Zelentsov does not explicitly
disclose the relationship between the user specific and general information,
we find no error in the Examiner’ reliance upon Karr to address Zelentsov’s
deficiency. Answer 5. In particular, we agree with the Examiner findings
that Karr provides a system for determining wireless location issuing one or
more commercial mobile radio telecommunication systems. Id. at 6. We
disagree with Appellants’ contentions that Zelentsov in combination with
Karr fails to “render obvious the features of comparison of general
information relating the location to the user-specific location or determining
when a portion of the general information substantially matches a portion of
the user-specific information” for the reasons stated above. Appeal Brief 37.
Therefore, we sustain the Examiner’s obviousness rejection of claim
1. Independent claims 7, 25, 44, and 58 recite limitations commensurate in
scope to claim 1, therefore, we sustain the Examiner’s rejection of
independent claims 7, 25, 44, and 58, as well as dependent claims 2, 4-6, 10,
11, 13-15, 18-24, 27, 29, 30, 32, 33, 37-43, 45, 47-51, 53-57, 59, and 60 for
the same reasons as stated above.
As to claims 3, 8, 9, 12, 16, 17, 26, 28, 31, 34-36, 46, and 52, the
Examiner relies upon Ganesh to disclose that an address book, call log, and
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message log can be part of “call records.” Answer 10. As discussed above,
we do not find the combination of Zelentsov and Karr to be deficient (see
Appeal Brief 43). Therefore, we also sustain the Examiner’s rejection of
claims 3, 8, 9, 12, 16, 17, 26, 28, 31, 34-36, 46, and 52 over Zelentsov, Karr
in further view of Ganesh for the same reasons stated above.

DECISION
The Examiner’s obviousness rejection of claims 1-60 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED

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