Ex Parte Apte et al

Patent Trial and Appeal Board

Nov 30, 2016

13551551 (P.T.A.B. Nov. 30, 2016)

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.
13/551,551 07/17/2012 Raj B. Apte 12710 8093
27752 7590 12/02/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
PASCUAL PEGUERO, NATALI
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJ B. APTE, ERIK JOHN HASENOEHRL, and
CHRISTOPHER PAULSON
Appeal 2016-004310
Application 13/551,551
Technology Center 2400
Before ALLEN R. MacDONALD, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004310
Application 13/551,551
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—5, 7, 8, 10—13, and 15—22. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 12 under appeal read as follows (emphasis
and bracketing added):
1. A method of building a room list in a structure having at least
two rooms, comprising:
[(A)] forming an ad hoc mesh network in the structure with at least
two nodes, each node having
[(i)] a room-limited communication module,
[(ii)] a room-transparent communication module;
[(B)] analyzing signals from the room-limited communication
modules and the room-transparent communication modules
between nodes;
[(C)] building the room list of the rooms in the structure based on
the signals from the nodes ', and
[(D)] associating each node of the plurality of nodes with one of the
rooms.
12. A method of making a list of rooms that are within a structure
having at least two rooms:
[(A)] providing at least two nodes forming a mesh network,
[(i)] the nodes each having a room-limited communications
module providing room-limited signals and a room-
transparent communications module providing room-
transparent signals,
[(ii)] at least one of the nodes being associated with a consumer
product located in one of the rooms;
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[(B)] measuring the room-limited and room-transparent signals
between the nodes, wherein measuring comprises measuring
both
[(i)] time offlight for the room-limited signal and
[(ii)] signal strength for the room-transparent signal,
[(C)] analyzing the signals;
[(D)] associating each of the nodes to one of the rooms based on the
analyzing;
[(E)] determining the location of the consumer product in the
structure; and
[(F)] creating a list of the rooms in the structure, including a
purpose of the room in which the consumer product is located
based on information about the consumer product that is
provided to the mesh network from the node associated with the
consumer product.
Rejections on Appeal
1. The Examiner rejected claims 1, 2, 8, 11—13, 16, 20, and 22, as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Park et
al. (US 2008/0069008 Al; published Mar. 20, 2008), Suomela (US
2005/0169214 Al; published Aug. 4, 2005), and Sibert (US 2008/0265799
Al; published Oct. 30, 2008).1
2. The Examiner rejected claims 3—5, 7, 10, 17—19, and 21 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Park,
Suomela, Sibert, and Pitchers et al. (US 2008/0218334 Al; published Sept.
11, 2008).2
1 Claims 1, 2, 8, 11—13, 16, 20, and 22 are grouped together. We select
claim 1 as representative. Except for our ultimate decision, claims 1, 2, 8,
11, 13, 16, 20, and 22 are not discussed further herein.
2 As to this rejection, claims 3—5, 7, 10, 17—19, and 21 are argued only by
repeating the argument for claim 1. Therefore, our decision as to the
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Application 13/551,551
3. The Examiner rejected claim 15 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Park, Suomela, Sibert, and
Larsen et al. (US 2008/0303707 Al; published Dec. 11, 2008).* * 3
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
A rejection under 35 USC § 103 requires that the cited
combination of reference teach or suggest each limitation set
forth in the claims. In the instant case, the Park reference is cited
for inter alia the teaching of the analysis of differing
transmissions. Paragraph 8 of Park describes the use of
transmission elements in the background art where the differing
elements have distinctly different transmission speeds. This is
not part of the disclosed invention of Park and the isolated
teaching of different transmission rates for use in a Time of
arrival or Time difference of arrival system does not teach or
suggest the use of nodes having room-transparent and room-
limited transmission elements. As the cited portion necessarily
requires receipt of multiple signals, elements differentiated by an
ability to transmit through a structure, or lack thereof, are not
indicated or suggested.
App. Br. 3, emphases added.
underlying § 103 rejection of claim 1 is determinative. Therefore, except for
our ultimate decision, the Examiner’s rejection of these claims is not
discussed further herein.
3 As to this rejection, claim 15 is argued only by repeating the argument for
claim 1. Therefore, our decision as to the underlying § 103 rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
Examiner’s rejection of this claim is not discussed further herein.
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Application 13/551,551
2. Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
Park is also silent with regard to the claimed limitations of:
building a room list based upon signals from network nodes,
assigning nodes to the built room list and using room-transparent
and room limited elements in each network node.
Nothing in the Suomela reference teaches or suggests that
a room list is built upon or from signals received from devices
serving as nodes in a network.
App. Br. 3.
3. Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
The Sibert reference is added to the underlying combination for
the purpose of providing a teaching of nodes comprising room-
transparent and room-limited communications. As noted above,
the invention of Park has no need for this combination which is
referenced as background art. Suomela has no such need as there
is no communications between nodes other than to user interface
points which need access to all nodes. The addition of Sibert
appears to be necessitated only by the vision presented by
Applicant's claims.
App. Br. 3—4, emphases added.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the cited references fail to describe the argued limitations?
ANALYSIS
As to Appellants’ above contention 1, we disagree. Appellants argue
a “rejection under 35 USC § 103 requires that the cited combination of
reference teach or suggest each limitation set forth in the claims.” App.
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Br. 3, emphasis added. Appellants’ argument does not account for the
impact of the KSR decision, in which the Supreme Court repudiated any
requirement to “teach or suggest each limitation” to show obviousness. KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting
the rigid approach of the Court of Appeals.”). Rather, the requirement is
only that the Examiner show “the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.” KSR, 550 U.S. at 406
(quoting 35 U.S.C. § 103) (emphasis added); id. at 418 (“[T]he analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”). We
conclude that as to the argued “use of nodes having room-transparent and
room-limited transmission elements” limitation, the Examiner articulates
just such a showing in the rejection from which this appeal is taken. Final
Act. 3—5.
Further, Appellants argue that Park does not disclose, teach, or
suggest determining “use of nodes having room-transparent and room-
limited transmission elements.” We find that Examiner did not cite Park for
the limitation. Rather, the Examiner cited Sibert (“Sibert teaches each node
having a room-limited communication module, a room-transparent
communication module.”). Final Act. 4. We conclude that Appellants’
argument does not address the actual reasoning of the Examiner’s rejection.
Instead, Appellants attack the Park reference singly for lacking a teaching
that the Examiner relied on a combination of references to show. It is well
established that one cannot show nonobviousness by attacking references
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individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Appellants argue a finding the Examiner
never made. This form of argument is unavailing to show Examiner error.
As to the Appellants’ above contention 3, we disagree. Appellants
argue that a rejection under § 103 requires a showing of “need” or
“necessity” to establish obviousness. We find no such requirement in the
law. Rather, as we stated above, the requirement is only that the Examiner
show “the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR, 550 U.S. at 406 (quoting 35 U.S.C.
§ 103) (emphasis added).
As to the Appellants’ above contention 2, we agree. We conclude,
consistent with Appellants’ argument, there is insufficient articulated
reasoning to support the Examiner’s finding that “Suomela teaches a method
of building a room list in a structure having at least two rooms.” Final Act.
3. Therefore, we conclude there is insufficient articulated reasoning to
support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellants’
invention.
NEW GROUNDS OF REJECTION
We reject claim 1 herein as obvious under 35 U.S.C. § 103(a) based
on new references. We leave it to the Examiner to review the patentability
of claims 2—5, 7, 8, 10-13, and 15—22 over the newly cited references and
previously applied references.
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Claim 1
We reject claim 1 as being unpatentable under 35 U.S.C. § 103(a)
over Smith et al. (US 7,324,824 B2; issued Jan. 29, 2008).4’5
In the art of outlet add-on modules, Smith ’824 discloses a method of
building a room list in a structure having at least two rooms (column 17,
lines 66—67, a facility being a hospital with several floors). Further, Smith
’824 discloses each of the following:
[(A)] forming an ad hoc mesh network in the structure with at least
two nodes (Figure 5, network appliance 130; at the Abstract the
plug-in module is for forming a wireless mesh network; column
5, lines 19-36, the network may be an ad hoc mesh network;
column 7, lines 22—24, plural appliances throughout a facility),
each node having a communication module comprising
[(A)(i)] a room-limited communication module (column 10,
lines 51—54, optical systems may comprise alternative
and!or additional components to antennas 390 to
receive and/or transmit optical signals), and
[(A)(ii)] a room-transparent communication module (column 9,
line 63, signals may be communicated via an antenna);
4 Which incorporates by reference Smith et al. co-pending U.S. application
Ser. No. 10/968,814 (now US 7,312,752 B2). Smith ’824 at column 1, lines
11—15, and column 13, lines 40-41.
5 In the art of outlet add-on modules, Hazani et al. (US 2008/0231111 Al)
also discloses a network device (Figure 32b, module 323; at paragraph 224
the plug-in module is for data networking), comprising a node having a
communications element (Figure 20, interface module 250 with connector
258) where the communication element comprises both (at paragraph 175
there may be a mix of multiple interface types) a room-limited
communication module (infrared non-wired interface at paragraph 174) and
a room-transparent communication module (radio frequency non-wired
interface at paragraph 174).
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[(B)] analyzing signals from the room-limited communication
modules and the room-transparent communication modules
between nodes (column 21, lines 50-51, the network appliance
functions as a network monitor; column 23, lines 1—3, network
monitors may measure the time of flight (ToF) between them to
create a model of the environment where ToF measurements
are an embodiment of position location information; column 22,
lines 4—5, signal strength may also be used as position location
information);
[(C)] building the room list of the rooms in the structure based on the
signals from the nodes (column 13, lines 49—62, a model of an
environment in which an object is to be located is maintained,
the environment comprises a physically mappable space, and
sensors monitor the environment, i.e. position location
information, and provide feedback to a positioning engine;
column 14, lines 56—63, the sensor is the network appliance;
column 17, lines 4—7, RF data from each network monitor is
measured and transmitted to the positioning engine); and
[(D)] associating each node of the plurality of nodes with one of the
rooms (column 17, lines 4—7, network monitors are placed at
known locations in the facility).
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to combine pre-existing elements disclosed by
Smith ’824 where the combination does not create some new synergy. “[A]
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR, 550
U.S. at 416-417 (emphasis added).6
6 Similarly, to the extent the combinations of Smith’s embodiments involve
substitution of elements among the embodiments, it would have been
obvious to one of ordinary skill in the art at the time the invention was made
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37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1—5, 7, 8, 10-13, and 15—22 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) We reject claim 1 as being unpatentable under 35 U.S.C. § 103(a).
to substitute known elements in the embodiments disclosed by Smith ’824
for other analogous known elements disclosed by Smith ’824. “[Wjhen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR, 550 U.S.
at 416 (emphasis added).
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(3) On this record, claims 2—5, 7, 8, 10-13, and 15—22 have not been
shown to be unpatentable.7
(4) Claim 1 is not patentable.
DECISION
The Examiner’s rejections of claims 1—5, 7, 8, 10-13, and 15—22 are
reversed.
Claim 1 is newly rejected.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R, $ 41.50(b)
7 We leave it to the Examiner to review the patentability of claims 2—5, 7, 8,
10-13, and 15—22 over the newly cited references and previously applied
references.
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