2020004319 (P.T.A.B. Sep. 28, 2021)

Stuart Lacey et al.

Patent Trials and Appeals BoardSep 28, 2021

2020004319 (P.T.A.B. Sep. 28, 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. 14/874,337 10/02/2015 Stuart H. Lacey 102987-5002-US 7503 24341 7590 09/28/2021 Morgan, Lewis & Bockius LLP (PA) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER PAN, PEILIANG ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 09/28/2021 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte STUART H. LACEY, NARESH SINGHAL, and DOUGLAS CHELINE _____________ Appeal 2020-004319 Application 14/874,337 Technology Center 2400 ______________ Before JAMES R. HUGHES, ERIC S. FRAHM, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 21–40, which are all of the claims pending in the application. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Trunomi Ltd. as the real party in interest. Appeal Br. 4. Appeal 2020-004319 Application 14/874,337 2 CLAIMED SUBJECT MATTER The claims are directed to context-based permissioning of personally identifiable information. Spec. ¶ 1. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A method for providing access to personal information of a user, comprising: at a server system including one or more electronic devices with one or more processors and memory storing one or more programs for execution by the one or more processors: generating a plurality of context profiles for a user; detecting an event associated with a request for personal information of the user; generating a request for consent to share the personal information of the user with a third party; sending, to the user, the request for consent to share the personal information of the user with the third party; receiving, from the user, consent information that includes: an indication of consent to share at least a subset of the requested personal information with the third party, wherein the indication of consent specifies that the requested personal information is to be shared with the third party when a first context profile, of the plurality of context profiles, is active, and an indication of denial of consent to share at least a subset of the requested personal information with the third party, wherein the indication of denial of consent specifies that the requested personal information is not to be shared with the third party when a second context profile, of the plurality of context profiles, is active; in response to receiving the consent information, storing the received indication of consent in association with the first context profile of the plurality of profiles for the user; Appeal 2020-004319 Application 14/874,337 3 receiving one or more signals used to determine the user’s context; determining an active context profile for the user based on the received one or more signals; determining whether the active context profile matches the first context profile; in accordance with a determination that the active context profile matches the first context profile, facilitating transmitting the personal information of the user to the third party; and in accordance with a determination that the active context profile matches the second context profile, forgoing facilitating transmitting the personal information of the user to the third party. Appeal Br. 33–34 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Boss et al. (“Boss”) US 2004/0154022 A1 Aug. 5, 2004 Laurila et al. (“Laurila”) US 2009/0080404 A1 Mar. 26, 2009 Hall US 2013/0240618 A1 Sept. 19, 2013 Jones et al. (“Jones”) US 2013/0262305 A1 Oct. 3, 2013 REJECTIONS Claims 21–23, 27–30, 34–37, and 40 stand rejected under 35 U.S.C. § 103 as unpatentable over Hall, Laurila, and Jones. Final Act. 2–7. Claims 24–26, 31–33, 38, and 39 stand rejected under 35 U.S.C. § 103 as unpatentable over Hall, Laurila, Jones, and Boss. Final Act. 7–9. Appeal 2020-004319 Application 14/874,337 4 ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 2–12) in light of Appellant’s arguments (Appeal Br. 15–32) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 3–16) and Appellant’s reply in the Reply Brief (Reply Br. 3–17). We agree with Appellant’s contentions (Appeal Br. 26–30; Reply Br. 3–6) that the Examiner erred in rejecting claims 21–23, 27–30, 34–37, and 40 because the Examiner failed to articulate a reason why a person of ordinary skill in the art would have modified Hall’s system and method with Laurila’s teachings. The Examiner found that Hall does not explicitly disclose, but that Laurila does disclose, “the indication of consent specifies that the requested personal information is to be shared with the third party when a first context profile, of the plurality of context profiles, is active,” as recited in independent claims 21, 28, and 35. Final Act. 4–5. Thereafter, the Examiner proffered: It would have been obvious to one of the ordinary skilled in the art, before the effective filing date of the claimed invention, to apply the teaching of Laurila into the system of Hall to use the indication of consent specifies that the requested personal information is only to be shared with the third party when at least a first context profile, of the plurality of context profiles, is active. Hall teaches “An automated method adapted to allow sharing of information among a set of users” (see Hall, abstract). Therefore, Laurila’s teaching could enhance the system of Hall, because Laurila teaches “The invention relates to a usage profile that is selected to be an active profile of a device.” (see Laurila, [0001]). Id. at 5–6. This statement appears to be a restatement of the subject matter of independent claims 21, 28, and 35 and, more importantly, fails to articulate a Appeal 2020-004319 Application 14/874,337 5 reason why a person of ordinary skill in the art would modify Hall’s system and method with Laurila’s teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also Reply Br. 3. The Examiner did not articulate why the additional information would benefit an artisan of ordinary skill. Indeed, the Examiner’s explanation “addresses neither the benefits that could have been obtained by combining the prior art references nor the PHOSITA’s motivation to combine at the time of the invention.” In re Nuvasive, 842 F.3d 1376 (Fed. Cir. 2016). Accordingly, the Examiner failed to establish a prima facie case under 35 U.S.C. § 103. Thus, on the record before us, we do not sustain the Examiner’s rejection of claims 21–23, 27–30, 34–37, and 40 as unpatentable over Hall, Laurila, and Jones. With regard to the Examiner’s obviousness rejection of dependent claims 24–26, 31–33, 38, and 39, as explained above, Appellant persuades us that the Examiner erred in rejecting for obviousness the independent claims from which claims 24–26, 31–33, 38, and 39 ultimately depend. Because the Examiner’s § 103 rejection of the dependent claims depends on the findings made in the § 103 rejection of the independent claims, on the record before us, we reverse the Examiner’s § 103 rejection of claims 24–26, 31–33, 38, and 39. The additional reference used to reject the dependent claims, Boss, does not cure the deficiencies in the Examiner’s combination of Hall and Laurila. Appeal 2020-004319 Application 14/874,337 6 Because we agree with at least one of the dispositive arguments for claims 21–40 advanced by Appellant, we need not reach the merits of Appellant’s other contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). DECISION We reverse the Examiner’s decision rejecting claims 21–40.2 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–23, 27–30, 34–37, 40 103 Hall, Laurila, Jones 21–23, 27–30, 34–37, 40 24–26, 31–33, 38, 39 103 Hall, Laurila, Jones, Boss 24–26, 31–33, 38, 39 Overall Outcome 21–40 REVERSED 2 In the event of further prosecution of this application, we leave it to the Examiner to consider the issue of patent eligibility under 35 U.S.C. § 101. 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 not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.