Ex Parte Calvarese et alDownload PDFPatent Trials and Appeals BoardJun 21, 201915350226 - (D) (P.T.A.B. Jun. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/350,226 11/14/2016 Russell Calvarese 126568 7590 06/25/2019 Zebra Technologies Corporation 3 Overlook Point Lincolnshire, IL 60069 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 150984US01 7845 EXAMINER GENACK, MATTHEW W ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): docketing@zebra.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL CALV ARESE and CHARLES G. LAURIA 1 Appeal 2018-008610 Application 15/350226 Technology Center 2600 Before JOHNNY A. KUMAR, JENNIFER L. MCKEOWN, and JOHN P. PINKERTON, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of apparatus/computer program product claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Invention The invention on appeal relates a device for "associating an identifier (ID) of a handheld mobile device, such as a data capture device, with a 1 According to Appellants, Symbol Technologies, LLC is the real party in interest. Appeal 2018-008610 Application 15/350,226 location of the mobile device, and, more particularly, to detecting the location of the mobile device by recognition of a gesture, such as a hand wave, performed by a user of the mobile device." Spec. ,i 1. Representative Claim 1 Representative claim 1 under appeal reads as follows: A device association arrangement, comprising: a mobile device movable and operable by a user in a venue, and operative for transmitting a device identifier (ID) that identifies the mobile device; a camera system deployed in the venue, and operative for imaging the user in the venue; and a control system operatively connected to the mobile device and the camera system, and operative for prompting the user to perform a gesture, for controlling the camera system to image and detect the gesture and a location of the mobile device that is proximal to the detected gesture, for receiving the device ID from the mobile device, and for associating the device ID with the location of the mobile device. App. Br. 12 (Claims App.). Rejections Claims 1-3, 6, 8-9, 11-13, 16, and 18-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Cheung, US 2014/0333786 Al, published Nov. 13, 2014 (hereinafter "Cheung"), in view of Zimmerman, US 2014/0259032 Al, published Sept. 11, 2014 (hereinafter "Zimmerman"). Claims 4 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Cheung in view of Zimmerman as applied to claims 1 and 2 Appeal 2018-008610 Application 15/350,226 11 above, further in view of Saravanan, US 2017/0118209 Al, published Apr. 27, 2017 (hereinafter "Saravanan"). Claims 5 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Cheung in view of Zimmerman as applied to claims 1 and 11 above, further in view ofNguyen et al., US 9,538,005 Bl, issued Jan. 3, 2017 (hereinafter "Nguyen"). Claims 7 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Cheung in view of Zimmerman as applied to claims 1 and 11 above, further in view of Application/Control Number: 15/350,226 Art Unit: 2645, Stekkelpak et al., US 2014/0188989 Al, published July 3, 2014 (hereinafter "S tekkelpak"). Claims 10 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Cheung in view of Zimmerman as applied to claims 1 and 11 above, further in view of Branton, US 2014/0143039 Al, published May 22, 2014 (hereinafter "Branton"). Appellants' Contentions Appellants contend that the Examiner erred in rejecting independent claims 1 and 11 under 35 U.S.C. § 103(a) because: [T]he Office Action has not identified any reason for why one of ordinary skill in the art would have modified this system to include the teachings of Zimmerman's position detection in place of the location detection provided by Cheung ... Moreover, the modification of Cheung with the position detection implementation of Zimmerman renders the combination inoperable for its intended purposes. 3 Appeal 2018-008610 Application 15/350,226 App. Br. 7. Zimmerman fails to teach or suggest how its mobile device location detection functionality operates and that its implementation would be successful in the arrangement of Cheung. That is, Zimmerman fails to discuss any particular aspects that would allow it to operatively function in an environment that includes a multitude of electronic devices, as described in Cheung. App. Br. 8. In other words, relying on the camera device 40 to determine the location of the device 200 would leave blind-spots, rendering Cheung' s system at least partially inoperable for its intended purpose of interacting with the electronic device based on its location. For that reason, a modification to Cheung to use the camera device 40 for location determination would likely worsen Cheung' s system, leading those of ordinary skill away from modifying Cheung in the claimed manner. App. Br. 9-10. ANALYSIS Issue on Appeal: Did the Examiner err in combining Cheung and Zimmerman to teach or suggest all the limitations of independent claim 1 ( and similarly recited in claim 11) because the references are not properly combinable? We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. See App. Br. 6-11. Further, we have reviewed the Examiner's response to the arguments presented by Appellants. 4 Appeal 2018-008610 Application 15/350,226 We disagree with Appellants' arguments. To the extent consistent with our analysis below, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. The Examiner finds, and we agree, that Cheung teaches all elements of claim 1 (Final Act. 5-6; Kim ,-J,-J 7, 9, 11, and 12, Figures 1 and 2), except for the "gesture" element for which the Examiner relies upon Zimmerman. (Final Act. 6-7; Zimmerman ,-J,-J 61 and 62). As to Appellants' above contentions, we are not persuaded the Examiner erred. Appellants' arguments essentially are premised on a "physical" or "bodily" incorporation of limitations of one reference into the other. This is not the standard of obviousness. See In re Sneed, 710 F .2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review") (citations omitted); In re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.") ( citations omitted). Moreover, "[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect." EWP Corp. 5 Appeal 2018-008610 Application 15/350,226 v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). Furthermore, an ordinarily skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). "[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." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). In particular, the Examiner finds, and we agree: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheung with Zimmerman such that the control system is operative for prompting the user to perform a gesture, for controlling the camera system to image and detect the gesture and a location of the mobile device that is proximal to the detected gesture. One of ordinary skill in the art would have been motivated to make this modification in order to collect information on the behavior of audience members (Zimmerman: [0003]). Final Act. 6-7. Thus, the Examiner has set forth why an ordinarily skilled artisan would have been motivated to combine the teachings of Cheung and Zimmerman to arrive at the claimed invention. Final Act. 6-7. Appellants have not presented any persuasive evidence or argument why the ordinarily skilled artisan would not have possessed the knowledge and skills to know how to combine the prior-art references. As such, we find that one of 6 Appeal 2018-008610 Application 15/350,226 ordinary skill in the art would have recognized how to adjust Cheung to accommodate the teachings from Zimmerman. Moreover, Appellants have not provided persuasive evidence that combining the respective teachings of the references would have been "uniquely challenging or difficult for one of ordinary skill in the art," or that such a combination would have "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor have Appellants provided any objective evidence of secondary considerations, which, as our reviewing court explains, "operate[] as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the proper combinability of the prior-art references as suggested by the Examiner. Therefore, we sustain the Examiner's obviousness rejection of independent claims 1 and 11, and their respective dependent claims not argued separately. We have considered Appellants' arguments in the Reply Brief, but find them unpersuasive to rebut the Examiner's responses. Appellants contend that the Examiner's Answer sets forth a new ground of rejection. Reply Br. 2-3. This is petitionable matter. See MPEP §1207.03: If appellant believes that an examiner's answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CPR l.18l(a) within two months from the mailing of the examiner's ans,ver requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection, 7 Appeal 2018-008610 Application 15/350,226 MPEP §1207.03, IV (Eighth Edition, August 2001, Revised August 2012). Therefore, this issue is not before us. Consequently, we conclude there is no reversible error in the Examiner's rejections of claims 1-20. DECISION We affirm the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED 8 Copy with citationCopy as parenthetical citation