Ex Parte Tseng et al

Patent Trial and Appeal Board

Feb 3, 2017

13842767 (P.T.A.B. Feb. 3, 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.
13/842,767 03/15/2013 Erick Tseng 079894.1609 6190
91230 7590
Baker Botts L.L.P.
2001 Ross Avenue. 6th Floor
Dallas, TX 75201
EXAMINER
HONG, DUNG
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
02/07/2017 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):
ptomaill @bakerbotts.com
ptomail2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK TSENG, YOON KEAN WONG,
YAEL MAGUIRE, and
MICHAEL JOHN McKENZIE TOKSVIG
Appeal 2016-002907
Application 13/842,7671
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN F. HORVATH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application relates to determining the location of a user of a
mobile device in two or more ways (e.g., GPS in the device, as well as RFID
between the mobile device and a kiosk at a known location), then enabling
or disabling a functionality of the mobile device “based on whether the
compared locations correspond to each other.” Spec. 14.
1 Appellants state the real party in interest is Facebook, Inc. App. Br. 3.
Appeal 2016-002907
Application 13/842,767
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A method comprising:
by one or more computing devices, accessing a plurality
of determinations of the location of a user of a mobile computing
device, each determined location having been determined
without reference to explicit location information manually input
by a user of the mobile computing device,
by one or more computing devices, comparing a first
determined location with at least one second determined
location, the first determined location having been determined
based on first location determination input, each of the second
determined locations having been determined without reference
to the first location determination input; and
by one or more computing devices, allowing a
functionality associated with the mobile computing device or the
user of the mobile computing device when the first determined
location corresponds to one or more of the second determined
locations.
Rejections
All claims stand rejected under 35 U.S.C. § 103(a) as obvious over the
following combinations of prior art. Final Act. 4—18.
Prior Art References
Inventor Number Date
Harper US 8,718,673 B2 May 6, 2014
Zhou et al. US 2013/0115940 Al May 9, 2013
Brinton et al. US 2010/0185479 Al July 22,2010
Surendran et al. US 2010/0318537 Al Dec. 16, 2010
Northcutt US 7,310,534 B2 Dec. 18, 2007
Chou US 7,282,684 B1 Sept. 18, 2007
August et al. US 8,390,450 B2 Mar. 5, 2013
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Application 13/842,767
§ 103 Rejections
Claims Prior Art Citation
1,3,5, 6 Harper, Zhou Final Act. 4
2 Harper, Zhou,2 Brinton Final Act. 6
4 Harper, Zhou, Surendran Final Act. 7
7 Harper, Zhou, Northcutt Final Act. 8
8 Harper, Zhou, Chou Final Act. 9
9, 10 Harper, Zhou, Chou, Surendran Final Act. 10
11, 13 Harper, August Final Act. 12
12 Harper, August, Brinton Final Act. 14
14—16 Harper, August, Surendran Final Act. 14
17 Harper, August, Northcutt Final Act. 16
18 Harper, August, Chou Final Act. 17
19, 20 Harper, August, Chou, Surendran Final Act. 18
ISSUES
1. Did the Examiner err in finding Zhou teaches or suggests
“allowing a functionality associated with the mobile computing device or the
user of the mobile computing device when the first determined location
corresponds to one or more of the second determined locations,” as recited
in independent claim 1?
2. Did the Examiner err in finding August teaches or suggests
“preventing a functionality associated with the mobile computing device or a
user of the mobile computing device when the first determined location does
not correspond to one or more of the second determined locations,” as
recited in independent claim 11?
3. Did the Examiner err in finding Brinton teaches or suggests
“the first determined location and at least one of the second determined
locations were determined within a predetermined time of the comparison,”
2 Zhou is not expressly listed in the Final Rejection for claims 2, 4, and 7—
10, but is necessarily included due to those claims depending from claim 1.
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Application 13/842,767
as recited in dependent claim 12?
ANALYSIS
Claims 1—10
Claim 1 recites “allowing a functionality associated with the mobile
computing device or the user of the mobile computing device when the first
determined location corresponds to one or more of the second determined
locations.” The Examiner relies on Zhou for this. Final Act. 5; Ans. 5.
The functionality in this case is starting or stopping a download.
The download is started when the . . . wireless device is within
the range of a WIFI access point (first location), paused when out
of range of the WIFI access point, then download is resumed
when within a WIFI access point (second location). The two
locations correspond to one another in that they are both WIFI
access points.
Final Act. 2—3. The Examiner construes “corresponds” to mean “ANY
similarities between determined locations can be used since the claim does
not limit how the two locations correspond.” Ans. 3 (emphasis omitted).
Although we apply the broadest reasonable interpretation during
examination, “[ajbove all, the broadest reasonable interpretation must be
reasonable in light of the claims and specification.” PPC Broadband, Inc. v.
Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016).
The broadest reasonable interpretation “does not give the [Examiner] an
unfettered license to interpret claims to embrace anything remotely related to
the claimed invention. Rather, claims should always be read in light of the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010). Here, we agree with Appellants that the Examiner’s interpretation is
unreasonably broad. If two locations “corresponded” merely based on
“ANY similarity,” then locations as different as Detroit and Dallas would
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Application 13/842,767
correspond based on similarities of both being cities, both starting with the
letter ‘D’, and both being in the United States. We agree with Appellants
the Specification uses the term more narrowly: “locations correspond to each
other when the determinations agree, perhaps within some degree of
precision, that the user is in the same place.” App. Br. 8; Spec. 135.
[T]he precision required for two determined locations to
correspond to each other may depend on one or both of the
location determination methods used. ... For example, if one
location determination method is accurate to 10 meters and [the]
second method is accurate to 5 meters, then the determined
locations may agree when the determined locations are within 15
meters of each other.
Spec. 135 (emphasis added). Here, the Examiner has not shown Zhou
teaches resuming downloads when two determined locations are the same.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and its dependent claims 2—10.
Claims 11 and 13—20
Independent claim 11 is similar to claim 1 but recites “preventing a
functionality associated with the mobile computing device or a user of the
mobile computing device when the first determined location does not
correspond to one or more of the second determined locations.”
The Examiner relies on August for teaching this limitation. Ans. 7.
“August discloses ... a security tag for monitoring, tracking, and securing
the portable phone within a protected region wherein the phone is disabled
when the phone is exiting the protected region.” Id. (emphasis omitted).
Appellants contend “August's system merely makes and relies on a
single determination of the device’s location to decide whether to disable the
device.” App. Br. 11; Reply Br. 5. We are not persuaded of Examiner error.
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The Examiner finds a person of ordinary skill would have been
motivated to modify Harper with August “to limit operation of a mobile
device when compared first and second locations are determined to be
greater than a predetermined threshold (i.e. outside of a protected region).”
Ans. 7. Thus, the first determined location could be the GPS location of a
mobile device as taught by Harper (Final Act. 4, citing Harper 6:11—27), and
the second determined location could be the protected region where the
mobile device is expected to stay, as taught by August. See Ans. 7.
The Specification teaches “[t]he location of a user of a mobile device
may be determined using any suitable location determination method.”
Spec. 132. “[A] location determination method may include advanced
knowledge of the user’s intended or estimated location.” Id. Appellants
have not explained how the Specification’s broad reading of a “determined
location” would not include August’s “protected region” in which a cell
phone is intended to stay. See August 3:3—20, 7:28—41 (“the phone 100 is
fully operable when used within a protected region, such as a building”).
Thus, Appellants have not persuaded us the Examiner erred in finding
August’s protected region teaches a “second determined location.” Ans. 7.
Accordingly, we sustain the Examiner’s rejection of claim 11, and
claims 13—20, which Appellants argue are patentable for similar reasons.
See App. Br. 10-13; 37 C.F.R. § 41.37(c)(l)(iv).
Claim 12
Dependent claim 12 further recites “the first determined location and
at least one of the second determined locations were determined within a
predetermined time of the comparison.”
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The Examiner relies on Brinton for teaching this limitation. Ans. 6.
Specifically, the Examiner finds “Brinton discloses . . . position data from
the vehicle is collected as the vehicle travels to the plurality of different
locations, then the position data is analyzed to determine whether the vehicle
was at each predetermined location during the corresponding predetermined
time.” Id. However, we agree with Appellants that “whether a vehicle has
adhered to a predetermined schedule” is not relevant to whether the
determination of locations was “within a predetermined time of the
comparison.” App. Br. 9. For example, Brinton discloses that in some
embodiments, the location data will not be conveyed for analysis until “after
a trip over a specified predefined route has been completed,” meaning the
analysis of the location data (i.e., the claimed “comparison”) will not occur
until an unknown time after the location information is initially gathered
(i.e., when the locations “were determined”). Brinton 134. Additionally,
the Examiner has not identified any other teachings in Brinton that would
have suggested some type of relationship between the location determination
and the time of comparison.
Accordingly, we do not sustain the rejection of claim 12.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1—10 and 12, but we affirm the rejection of claims 11 and 13—20.
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.
§ 41.50(f).
AFFIRMED-IN-PART
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