2019006319 (P.T.A.B. Feb. 25, 2021)

Oliver Gamble

Patent Trials and Appeals BoardFeb 25, 2021

2019006319 (P.T.A.B. Feb. 25, 2021)

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. 14/541,132 11/13/2014 Oliver Wendel Gamble 1277 7590 02/25/2021 Oliver Gamble 436 East 75th Street New York, NY 10021 EXAMINER GELIN, JEAN ALLAND ART UNIT PAPER NUMBER 2643 MAIL DATE DELIVERY MODE 02/25/2021 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 OLIVER WENDEL GAMBLE _____________ Appeal 2019-006319 Application 14/541,132 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–6 and 16–20. Claims 7–15 are allowed by the Examiner. We have jurisdiction over the rejected claims under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest is Oliver W. Gamble, who is also the named inventor. See Appeal Br. 1. Appeal 2019-006319 Application 14/541,132 2 STATEMENT OF THE CASE2 Introduction Appellant’s claimed invention relates to “Method and System for Interactive Notation and Text Data Storage with a Mobile Device.” Title. Independent Claim 1 1. A method, comprising: transmitting and receiving alphanumeric text characters between a plurality of mobile device [sic] via a communication network, storing the transmitted and received alphanumeric text in records in a searchable database file enabling the user to search of the contents of the alphanumeric text in stored and generate search results unique to the database contents in response to a given string of alphanumeric characters entered by the user. Appeal Br. 6. Evidence The prior art relied upon by the Examiner as evidence is: Name Reference Date Soderbacka et al. (“Soderbacka”) US 6,665,531 A1 Dec. 16, 2003 Bautista US 2011/0055340 A1 Mar. 3, 2011 Swink et al. (“Swink”) US 2015/0017953 A1 Jan. 15, 2015 Ford et al. (“Ford”) US 2015/0382161 A1 Dec. 31, 2015 2 We herein refer to the Final Office Action, mailed April 24, 2017 (“Final Act.”); the Appeal Brief, filed October 24, 2017; the Supplemental Appeal Brief, filed January 23, 2018 (“Supp. Br.”); and the Examiner’s Answer, mailed May 1, 2018 (“Ans.”). No Reply Brief was filed. A petition to revive this application as unintentionally abandoned was granted on July 30, 2019. This appeal was docketed to the Board on August 29, 2019. Appeal 2019-006319 Application 14/541,132 3 Table of Rejections Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1, 2, 4–6, 16, 17, 20 102(a)(1) Ford B 3, 18, 193 103 Ford, Soderbacka C 1, 2, 4, 5, 16, 17 102(a)(1) Bautista D 6 103 Bautista, Swink E 18, 19 103 Bautista, Soderbacka Analysis In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Rejection A under § 102 of Claims 1, 2, 4–6, 16, 17, and 20 Issues under § 102 Issues: Did the Examiner err by finding Ford expressly or inherently discloses the disputed, dispositive steps of transmitting and storing: 3 Regarding Rejection B, the Examiner omits a statement of rejection for claim 3 in the Final Action (5–6). However, the Examiner indicates in the Answer that claim 3 is rejected for the same reasons as claim 19, i.e., under § 103 Rejection B over Ford and Soderbacka. See Ans. 11. Because claim 3 recites similar limitations as claim 19, we have made appropriate correction under Rejection B, as indicated in the Table of Rejections above. We have thus corrected an omission in the Examiner’s listing of rejected claims for Rejection B under 35 U.S.C. § 103 on page 5 of the Final Action. Appeal 2019-006319 Application 14/541,132 4 transmitting and receiving alphanumeric text characters between a plurality of mobile device [sic] via a communication network storing the transmitted and received alphanumeric text in records in a searchable database file enabling the user to search of the contents of the alphanumeric text in stored and generate search results unique to the database contents in response to a given string of alphanumeric characters entered by the user[,] within the meaning of independent claim 1?4 Analysis Anticipation Rejection A of Independent Claim 1 over Ford The Examiner relies upon Ford’s description, at paragraphs 26–28, 30, 32, 33 for disclosing the “transmitting” and “storing” steps. Final Act. 3. Appellant argues that the cited sections of Ford do not disclose the disputed limitations of claim 1. Appeal Br. 8–12. Based upon our review of Ford, we find a preponderance of the evidence supports the Examiner’s findings. In particular, we find Ford’s description of alphanumeric texts (para. 32), and Ford’s “send to caller” option (para. 26) in sending data messages between cellphone users, expressly or inherently disclose the disputed claim 1 limitation of “transmitting and receiving alphanumeric text characters between a plurality of mobile device [sic] via a communication network.” (emphasis added). See Ans. 10–11. 4 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-006319 Application 14/541,132 5 We also find Ford’s description of storing dialed telephone numbers, and automatically interrogating a database using the stored telephone numbers, discloses the “storing” step of claim 1. See Ford ¶ 30. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection A of independent claim 1. Anticipation Rejection A of Dependent Claim 2 over Ford Dependent claim 2 recites: The method of claim 1, wherein the fields of the record are interactive with functionality of the mobile device, enabling the mobile device to trigger activities base [sic] on the contents of specific fields. Appellant contends: “There is no teaching on field(s) or of field(s) interacting with the mobile device in the Examiner’s citations of Ford et al patent. In the Applicant’s application, the teaching is on content of a field being interacted up by the application when a specific time is reach of the mobile device clock (Paragraphs # 12, # 19, and # 21).” Appeal Br. 15. The Examiner finds Ford teaches a cellular phone having the capability to transmit and receive text/SMS/MMS messages. The Examiner finds the phone searches and uses the stored content and/or message to trigger an activity. See Ans. 11; Final Act. 3 (citing Ford ¶¶ 32–34, 39). We find a preponderance of the evidence supports the Examiner’s findings, because we find Ford’s descriptions of SMS and MMS delivery mechanisms, interrogating a database, and “send to caller” options (between Appeal 2019-006319 Application 14/541,132 6 mobile devices) disclose the disputed limitation recited in dependent claim 2. See Ford ¶¶ 32–34, 39. Therefore, on this record, we are not persuaded the Examiner erred regarding anticipation Rejection A of dependent claim 2 over Ford. Anticipation Rejection A of Dependent Claim 4 over Ford Dependent claim 4 recites: “The method of claim 2, wherein the content of a field in one record can affect the operating system of mobile device, allowing the time relate [sic] field to trigger a notification alarm.” (emphasis added). The Examiner cites to Ford at paragraphs 28, 29, and 33 for disclosing the limitation of dependent claim 4. See Final Act. 4. Appellant urges that paragraphs 28, 29, and 33 of Ford do not disclose “the control of a field in one record can affect the operating system of mobile device, allowing the time relate[d] [sic] field to trigger a notification alarm.” Appeal Br. 17. In particular, Appellant contends Ford is not an anticipatory reference, because: A closer look at paragraphs # 28 and #29 of Ford et al patent reveals teaching on recognizing the type of application that is being used / interacted with. That this will determine the type of sending method that will be used to send information: SMS or MMS. There is no teaching on field(s) or of field(s) interacting with the mobile device in the Examiner's citations of Ford et al patent. Appeal Br. 17. Because we do not see any disclosure of triggering a notification alarm in the paragraphs of Ford cited by the Examiner, we are constrained Appeal 2019-006319 Application 14/541,132 7 on this record to reverse the Examiner’s Rejection A of claim 4 over Ford, for essentially the same reasons argued by Appellant. See Appeal Br. 17. Anticipation Rejection A of Dependent Claim 5 over Ford Dependent claim 5 recites: The method of claim 2, wherein the content of all the records in database can be search [sic] by a specific field to retrieve all records within the database with the same searched for item. The Examiner cites to Ford, paragraph 30, for teaching this limitation. See Final Act. 4. We note paragraph 30 of Ford describes, in pertinent part: “The processor 30 automatically interrogates a database using the telephone number [(i.e., specific field)] stored at step 102 to obtain the destination address.” (emphasis added). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection A of dependent claim 5. Anticipation Rejection A of Dependent Claim 6 over Ford Dependent claim 6 recites: The method of claim 1, wherein alphanumeric information is exchanged between mobile devices while a voice conversation is in progress. The Examiner finds Ford teaches this limitation. See Final Act. 4 (citing Ford ¶¶ 26, 32, 37, 39). Appeal 2019-006319 Application 14/541,132 8 We are not persuaded the Examiner has erred because we find Ford’s description of sending a data message between two cell phones discloses this limitation. See Ford ¶ 26. We additionally find this claim 6 temporal limitation is disclosed by Ford’s description of a data message that is sent via a new channel which runs in parallel with the voice channel used for the telephone call. See Ford ¶ 37. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection A of dependent claim 6. Anticipation Rejection A of Independent Claim 16 over Ford Independent method claim 16 recites: A mobile device-implemented method comprising: software for storing and retrieving content of sent and received text messages stored in a record format in searchable database files, and have the mobile device able to access. The Examiner finds Ford expressly or inherently discloses the claim 16 limitations. See Final Act. 4 (citing Ford ¶¶ 23, 27, 30–35, and 39). However, Appellant contends: The core element of the Applicant’s patent Claim # 16, is the capture of text message and saving their content in field(s) of a record (Paragraphs # 12 and # 26, Figure # 3, # 5, and #8). A review of all the paragraphs in Ford et al patent (US 2015/0382161) cited by the Examiner fails to teach of this element. Since there is no such teaching in Ford et al on this element of Claim # 16, it cannot be said that the Applicant’s patent is anticipated by Ford. If there is no anticipation, then the claim (Claim # 16) is allowed. Appeal 2019-006319 Application 14/541,132 9 Appeal Br. 20–21. We do not find the Examiner’s findings are supported by a preponderance of the evidence, because we do not see an express or inherent description in the cited paragraphs and figures of Ford that discloses “software for storing and retrieving content of sent and received text messages stored in a record format in searchable database files, and have the mobile device able to access” (claim 16 (emphasis added)). In particular, we do not find a description of text messages stored in searchable database files in the cited portions of Ford. Although Ford may well suggest storing SMS and MMS messages in a message database, there is no explicit disclosure that this is the case. Nor has the Examiner explained why the use of a messaging database would have been inherent to Ford’s system. As such, the Examiner’s findings have failed to meet the strict identity requirement of anticipation. Because Appellant has persuaded us the Examiner erred, we are constrained on this record to reverse Rejection A under § 102 of independent method claim 16 over Ford. Rejection A of Dependent Claims 17 and 20 over Ford Because we have reversed Rejection A of independent claim 16, we also reverse Rejection A of associated dependent claims 17 and 20. Appeal 2019-006319 Application 14/541,132 10 Rejection B under § 103 of Claims 3, 18, and 19 over Ford and Soderbacka Dependent claim 3 recites: The method of claim 2, wherein the content of a field in one record can affect the contents of one or more fields in the same record, allowing a time relate [sic] field to trigger the removal of all outdated information in other fields of the record. Appellant contends: The cited material teaches only on deleting entire records from memory, there is no teaching on deleting a portion of and SMS from memory. This is primary due to the lack of concept of storing a SMS in fields of a database table. If there are no (conception of) fields, then there is no teaching on fields. Appeal Br. 22–23. The Examiner rejects claim 3 on the same basis as claim 19, citing Soderbacka at column 5, lines 6–67. See Final Act. 11–12. The Examiner finds “Soderbacka teaches a deleting short message can also be a self- deleting short message including, in addition to a normal text message, an indication of said message being deleted from the memory (corresponding to the removal of all outdated information).” Ans. 13. See Soderbacka, col. 5, ll. 46–48. We are not persuaded the Examiner has erred, because we find Soderbacka’s deletion instructions and commands, which delete a previous, useless message, at least suggest, under obviousness Rejection B, the disputed limitation of “allowing a time relate[d] field to trigger the removal of all outdated information in other fields of the record.” See Final Act. 5 Appeal 2019-006319 Application 14/541,132 11 (citing Soderbacka, col. 2, ll. 11–46); see also Final Act. 11–12 (citing Soderbacka, col. 5, ll. 6–67, in particular, see col. 5, ll. 46–48). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection B of dependent claim 3. Rejection B of Dependent Claims 18 and 19 Claim 18 recites: The method of claim 16, wherein the software stored on the mobile device can search fields of the records in the database and interactive with them base[d] [sic] on of[sic] the mobile device internal clock function, enabling the mobile device to trigger activities base on a time setting in a specific field. Claim 19 recites: The method of claim 18, wherein the content of a field in one record can affect the contents of one or more fields in the same record, allowing the time relate[d] field to trigger the removal of all outdated information in other fields of the record. The Examiner finds claims 18 and 19 are taught, or at least suggested, by the combined teachings and suggestions of Ford and Soderbacka. See Final Act. 5. We agree with the Examiner’s finding that Soderbacka’s teaching of deleting a short message from memory in response to exceeding the short message storage time at least suggests removing useless messages and enables the mobile device to trigger activities base on a time setting in a specific field. See Ans. 12 (citing Soderbacka, col. 10, ll. 57–64, col. 5, ll. 49–53). Appeal 2019-006319 Application 14/541,132 12 Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection B of dependent claims 18 and 19. Anticipation Rejection C of Claims 1, 2, 4, 5, 16, and 17 over Bautista Rejection C of Independent Claim 1 over Bautista Regarding the § 102 rejection of independent claim 1, the Examiner finds Bautista discloses: (1) receiving and transmitting alphanumeric text at paragraphs 24, 25, 28, 31; (2) that the alphanumeric text has to be stored prior to transmitting or upon receiving the message in order to read/display the message at paragraphs 34 and 35; and, (3) that a search command is received from the user to query the database, also at paragraphs 34 and 35. See Ans. 13. We agree with the Examiner’s anticipation finding because we find Bautista’s sending of alphanumeric characters to the user in the form of a SMS text message that the user receives on his mobile device discloses the disputed imitation of “transmitting and receiving alphanumeric text characters between a plurality of mobile device [sic] via a communication network,” as recited in claim 1 (emphasis added). See Bautista ¶¶ 24, 25. We further agree with the Examiner’s findings because we find Bautista’s querying of a database with text messages teaches the disputed claim 1 limitation of “storing the transmitted and received alphanumeric text in records in a searchable database file enabling the user to search of the contents of the alphanumeric text in stored [sic] and generate search results unique to the database contents in response to a given string of Appeal 2019-006319 Application 14/541,132 13 alphanumeric characters entered by the user” (emphasis added). See Bautista ¶¶ 34, 35. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding anticipation Rejection C of independent claim 1 over Bautista. Anticipation Rejection C of Dependent Claim 2 over Bautista Regarding claim 2, Appellant argues there is no software installed on the mobile device. Appeal Br. 31. We are not persuaded by Appellant’s argument and agree with the Examiner’s finding of anticipation because Bautista requires software to be installed on the mobile device. See Ans. 13 (citing Bautista ¶ 3). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding anticipation Rejection C of dependent claim 2 over Bautista. Anticipation Rejection C of Dependent Claim 4 over Bautista The Examiner cites to Bautista at paragraph 37 for teaching the disputed limitation of dependent claim 4. Ans. 14. Because we do not see a disclosure of triggering a notification alarm in the cited section of Bautista, on this record, we are constrained to reverse the Examiner’s anticipation Rejection C of claim 4 over Bautista for essentially the same reasons argued by Appellant. Appeal 2019-006319 Application 14/541,132 14 Anticipation Rejection C of Dependent Claim 5 over Bautista We are not persuaded the Examiner has erred because we find that Bautista’s description of querying the database discloses the disputed limitation of dependent claim 5. See Bautista ¶¶ 34–35. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding anticipation Rejection C of dependent claim 5 over Bautista. Anticipation Rejection C of Independent Claim 16 over Bautista We do not find the Examiner’s findings (Ans. 14–15) are supported by a preponderance of the evidence because we do not see an express or inherent description of the claimed “software for storing and retrieving content of sent and received text messages stored in a record format in searchable database files, and have the mobile device able to access” (claim 16), in the paragraphs and figures of Bautista that are cited by the Examiner. In particular, we do not find text messages stored in searchable database files are described in the cited paragraphs of Bautista. Because we are persuaded the Examiner erred, we are constrained on this record to reverse anticipation Rejection C of independent claim 16 over Bautista. Anticipation Rejection C of Dependent Claim 17 over Bautista Claim 17 depends directly from independent method claim 16. Because we have reversed anticipation Rejection C of independent claim 16, Appeal 2019-006319 Application 14/541,132 15 we also reverse anticipation Rejection C of associated dependent claim 17 for the same reasons. Obviousness Rejection D of Dependent Claim 6 over Bautista and Swink Dependent claim 6 recites: The method of claim 1, wherein alphanumeric information is exchanged between mobile devices while a voice conversation is in progress. The Examiner concludes that claim 6 is obvious over the cited combination of Bautista and Swink. Final Act. 8–9. The Examiner finds Bautista teaches all the claim 6 limitations except “alphanumeric information is exchanged between mobile devices while a voice conversation is in progress.” See Final Act. 9. However, the Examiner finds Swink teaches mobile phones which can receive voice/data/SMS calls and GPRS data at the same time. Id.; Ans. 14 (citing Swink ¶ 122). Based upon our review of the evidence, on this record we are not persuaded the Examiner has erred. We find the limitations of claim 6 are taught or suggested by Bautista as modified with Swink’s teaching of using GPRS and GSM services in parallel, thus supporting simultaneous operation of GPRS and GSM services, in which a mobile can receive GSM voice/data/SMS calls and GPRS data calls at the same time. See Swink ¶ 122. Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding obviousness Appeal 2019-006319 Application 14/541,132 16 Rejection D of dependent claim 6 over the combined teachings and suggestions of Bautista and Swink. Obviousness Rejection E of Dependent Claims 18 and 19 over Bautista and Soderbacka Regarding the cumulative Rejection E of dependent claims 18 and 19, we have considered all of Appellant’s arguments and any evidence presented. See Appeal Br. 40–45. We disagree with Appellant’s arguments, and we adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Office Action from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer in response to Appellant’s arguments. See Final Act. 9–10. Therefore, on this record, we are not persuaded of error regarding the Examiner’s remaining Rejection E of dependent claims 18 and 19 over the combined teachings and suggestions Bautista and Soderbacka. On this record, we find the Examiner’s Rejection E of claims 18 and 19 is supported by a preponderance of the evidence. Accordingly, we sustain the Examiner’s Rejection E of dependent claims 18 and 19 over the combined teachings and suggestions Bautista and Soderbacka. Appeal 2019-006319 Application 14/541,132 17 CONCLUSIONS The Examiner did not err in rejecting claims 1, 2, 5, and 6, as being anticipated by Ford under 35 U.S.C. § 102(a)(1). The Examiner erred in rejecting claims 4, 16, 17, and 20 as being anticipated by Ford under 35 U.S.C. § 102(a)(1). The Examiner did not err in rejecting claims 1, 2, and 5 as being anticipated by Bautista under 35 U.S.C. § 102(a)(1). The Examiner erred in rejecting claims 4, 16, and 17 as being anticipated by Bautista under 35 U.S.C. § 102(a)(1). The Examiner did not err in rejecting claims 3, 18, and 19 as being obvious over the cited combination of Ford and Soderbacka under 35 U.S.C. § 103. 5 5 Regarding obviousness Rejection B of dependent claims 18 and 19, that we have sustained over the collective teachings and suggestions of Ford and Soderbacka, we decline to set forth new grounds of rejection under §103 in this Decision for independent claim 16, in which we have reversed both anticipation Rejection A (over Ford) and anticipation Rejection C (over Bautista). But cf. Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.”); Avantis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300 (Fed. Cir. 2007); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319–20 (Fed. Cir. 2007) (law of the case that a dependent claim was obvious means the parent claim must also have been obvious); In re Muchmore, 433 F.2d 824, 25 (CCPA 1970) (“Since we agree with the [B]oard's conclusion of obviousness as to these narrow claims, the broader claims must likewise be obvious.”). We leave this question of obviousness regarding independent claim 16 to the Examiner in the event of further prosecution. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects Appeal 2019-006319 Application 14/541,132 18 The Examiner did not err in rejecting claim 6 as being obvious over the cited combination of Bautista and Swink under 35 U.S.C. § 103. The Examiner did not err in rejecting claims 18 and 19 as being obvious over the cited combination of Bautista and Soderbacka under 35 U.S.C. § 103. DECISION SUMMARY Rejection Claims Rejected 35 USC § Reference(s)/ Basis Affirmed Reversed A 1, 2, 4–6, 16, 17, 20 102 Ford 1, 2, 5, 6 4, 16, 17, 20 B 3, 18, 19 103 Ford, Soderbacka 3, 18, 19 C 1, 2, 4, 5, 16, 17 102 Bautista 1, 2, 5 4, 16, 17 D 6 103 Bautista, Swink 6 E 18, 19 103 Bautista, Soderbacka 18, 19 Overall Outcome 1–3, 5, 6, 18, 19 4, 16, 17, 20 FINALITY AND RESPONSE 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 IN PART not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.