Baum, Marc et al.

Patent Trials and Appeals Board

Dec 17, 2020

2019004573 (P.T.A.B. Dec. 17, 2020)

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.
13/335,279 12/22/2011 Marc Baum 102005.024027 2494
71581 7590 12/17/2020
BakerHostetler / Comcast
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
WALSH, JOHN B
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC BAUM, PAUL J. DAWES, MIKE KINNEY, REZA RAJI,
DAVID SWENSON, and AARON WOOD
___________

Appeal 2019-004573
Application 13/335,279
Technology Center 2400
____________

Before JOHNNY A. KUMAR, SCOTT B. HOWARD and
SCOTT E. BAIN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 74–77, 79, 81, 83–85, 93–95, 97–101 and 103–105.
We have jurisdiction over the rejected claims under 35 U.S.C. § 6(b). We
affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
iControl Networks, Inc.. See Appeal Br. 1. Our reference to page numbers
is based upon the cover page of the Appeal Brief being page 1, as the Appeal
Brief does not contain any page numbers.
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STATEMENT OF THE CASE
Embodiments of Appellant’s invention relate to “a mobile
communication system which allows mobile vehicles to communicate with
neighboring vehicles and roadside communication networks.” Spec. ¶ 3.
Exemplary Claim
74. A method comprising:
sending, to a controller device of a security system,
enrollment data associated with a gateway device, wherein
configuration of the controller device, based on the enrollment
data, enables communication, via the gateway device, between
the security system and a remote device;
based on the configuration of the controller device,
receiving, by the gateway device and from the controller
device, security data associated with the security system;
and
controlling, by the gateway device and based on the
security data, operation of the security system.
Appeal Br. 8, Claims App.
Rejections
(A). Claims 74, 75, 77, 83–85, 93–95, 97 and 99–101, 103 are
rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1–3, 5, 12, 17, 18, 21, 28 and 43 of Baum
(US 8,473,619 B2, issued June 25, 2013).
(B). Claims 76, 79, 81, and 98 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–3, 5, 12,
17, 18, 21, 28 and 43 of Baum in view of Tabe (US 2007/0256105 A1,
published Nov. 1, 2007 A1).
(C). Claims 93–95, 97 and 98 are rejected under 112(b), second
paragraph, as being indefinite.
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(D). Claims 74–77, 79, 81, 83–85, 97–101 and 103–105 are rejected
under 102(e) as being anticipated by Tabe.
ANALYSIS2
Rejections A and B under Non-Statutory Double-Patenting

Appellant advances no arguments regarding claims 74, 75, 77, 83-85,
93-95, 97 and 99-101, 103 as rejected by the Examiner under Rejection A,
and claims 76, 79, 81 and 98, as rejected by the Examiner under Rejection
B. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
Accordingly, we pro forma sustain the Examiner’s Rejections A and B on
the grounds of Non-Statutory Double-Patenting, respectively.

Rejection D under 35 U.S.C. § 102(e)

We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred.
Appellant disputes the Examiner’s findings that Tabe discloses
“sending, to a controller device of a security system, enrollment data
associated with a gateway device, wherein configuration of the controller
device, based on the enrollment data, enables communication, via the
gateway device, between the security system and a remote device,” as
recited in claim 74, and similarly recited in independent claims 93 and 99.
Appeal Br. 5, 6.

2 Rejection C of claims 93–95, 97, and 98 under 35 U.S.C. § 112, second
paragraph has been withdrawn by the Examiner. Ans. 3.
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The Examiner finds that Tabe discloses the disputed elements in
paragraphs 76, 91, 92, 96, 97, and 124 of Tabe. Ans. 5, 6.
Appellant contends:
[t]he cited portions of Tabe disclose “[a] system component
announces its presence by broadcasting a detection control
message.” Tabe ¶ 97. A “[c]ontrol server receives the
broadcast and adds the system component to the profile for that
particular environment by extracting a detection type and
properties for the system component from the detection
message.” Id. Yet, according to Tabe, adding the “system
component to the profile” merely allows the system component
to be tracked or monitored. See id. ¶ 96. Tabe is silent
regarding “enrollment data associated with a gateway device”
enabling communication “via [a] gateway device, between the
security system and a remote device,” as in claim 74.

Appeal Br. 5.

Appellant also contends:
the Examiner does not address Appellant’s contention that Tabe
does not disclose enabling communication “via [a] gateway
device, between [a] security system and a remote device,” as
recited in claim 74.
. . .
The general disclosure of a “control server” allowing a “system
component” to be tracked and monitored in Tabe does not
disclose each and every element of “sending, to a controller
device of a security system, enrollment data associated with a
gateway device, wherein configuration of the controller device,
based on the enrollment data, enables communication, via the
gateway device, between the security system and a remote
device,” as recited by claim 74. See Tabe, ¶¶ 96-97.

Reply Br. 2, 3.
We agree with Appellant as our interpretation of the disclosure of
Tabe coincides with that of Appellant. See Appeal Br. 5, 6; Reply Br. 2, 3.
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Application 13/335,279

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We conclude that the Examiner’s findings are not supported by Tabe for the
reasons set forth by Appellant.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of independent claims 74, 93, and 99, and we will not sustain the
Examiner’s rejection of these claims.
Therefore, on this record, we find the weight of the evidence supports
the positions articulated by Appellant in the briefs. Accordingly, as such, we
cannot sustain the Examiner’s rejections of claims 74, 93, and 99. Because
we reverse the rejection of independent claims 74, 93, and 99 on appeal, we
also reverse the rejections of dependent claims 75–77, 79, 81, 83–85, 94, 95,
97, 98, 100, 101, and 103–105, which depend on claims 74, 93, and 99
respectively.
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejection D under 35 U.S.C. § 102(e).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basi
s
Affirmed Reversed
74, 75, 77, 83–
85, 93–95, 97,
99–101, 103
Nonstatutory
Double Patenting
74, 75,
77, 83–
85, 93–
95, 97,
99–101,
103

76, 79, 81,
98
Nonstatutory
Double Patenting
76, 79,
81, 98

74–77, 79, 81,
83–85, 93–95,
97–101, 103–
105
102(e) Tabe 74–77, 79,
81, 83–85,
93–95,
97–101,
103–105
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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

Overall
outcome
74–77,
79, 81,
83–85,
93–95,
97–101,
103–105