Ex Parte Sandberg et alDownload PDFPatent Trial and Appeal BoardSep 23, 201613088876 (P.T.A.B. Sep. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/088,876 04/18/2011 10949 7590 09/27/2016 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 FIRST NAMED INVENTOR Jesper Sandberg 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. 042933/403463 9375 EXAMINER SALL, EL HADJI MALICK ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 09/27/2016 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESPER SANDBERG and ANNA KLIT OLESEN Appeal2015-004801 Application 13/088,876 Technology Center 2400 Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and SCOTT E. BAIN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Appeal2015-004801 Application 13/088,876 STATEMENT OF THE CASE Claim 1, which is illustrative of the invention, reads as follows: 1. A method comprising: determining a distance between a location of an apparatus and a location associated with a received message; and controlling, by a processor, perceptibility of content of the message based at least in part on the determined distance. The Rejections Claims 1--4, 6-12, and 14--20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta (US 2010/0075697 Al, Mar. 25, 2010) in view of Gerrity (US 2003/0160700 Al, Aug. 28, 2003). Final Act. 2--4. Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta and Gerrity, further in view of Guenter (US 7,346,225 B2, Mar. 18, 2008). Final Act. 5. Appellants; Contentions With respect to claim 1, Appellants dispute the propriety of combining Gupta and Gerrity and focus their arguments on whether the teachings of the combination of the references would have taught or suggested the claimed subject matter (Br. 6-9). In particular, Appellants contend that the "Combination of Gupta and Gerrity is Motivated, at Best, By Impermissible Hindsight." Br. 6. Appellants also contend that "the Examiner has failed to articulate a coherent rationale for combining Gupta and Gerrity." Id. at 8. Appellants further contend that "the combination of Gupta and Gerrity is improper because a person of ordinary skill in the art would not have a reasonable expectation of success in combining Gerrity 2 Appeal2015-004801 Application 13/088,876 with Gupta, and the combination would render Gerrity useless for its intended purpose." Id. at 10. Issue on Appeal Did the Examiner err in rejecting independent claims 1, 9, and 18 as being obvious over Gupta and Gerrity because there are no teachings in the references to suggest making the proposed combination? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. In response to each of the arguments raised by Appellants, the Examiner presents detailed findings and responses, which are not rebutted by Appellants in a Reply Brief. In particular, the Examiner properly identifies the relevant teachings in Gupta and Gerrity and states how each claimed element is met by those teachings (see Final Act. 3; Ans. 6). Additionally, because the proposed rejection is based on the combination of the references, Appellants' challenge to the references individually is not persuasive of error in the Examiner's position. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (stating that "one cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references"). In this case, the teaching value of Gerrity is in 3 Appeal2015-004801 Application 13/088,876 disclosing the perceptibility of the content of the message, whereas the remaining claimed elements are disclosed by Gupta. We specifically agree with the Examiner's response to each of Appellants' arguments with respect to Gerrity's teachings and whether the combination would have made the system of Gerrity unsatisfactory for its intended purpose (Ans. 6). We disagree with Appellants (Br. 6-9) that there is no motivation for combining the references and find that the Examiner has articulated how the claimed features are met by the references' teachings with some rational underpinning to combine Gupta and Gerrity. We specifically agree with the Examiner's determination that an ordinarily skilled artisan would have been motivated to provide "a sensory monitor for measuring reaction in an individual to the embedded message." Ans. 6. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). We also disagree with Appellants' argument that the proposed combination of Gupta and Gerrity is motivated by impermissible hindsight. It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on "an apparent reason to combine the known elements in the fashion claimed." KSR, 550 U.S. at 417-18. That is, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the 4 Appeal2015-004801 Application 13/088,876 marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417-18. In the present case, the Examiner found that the proposed combination would have resulted in "a sensory monitor for measuring reaction in an individual to the embedded message" (see Ans. 6). We find this articulated rationale to be sufficient to justify this combination. In other words, we find that the proposed combination would merely require the ordinarily skilled artisan to use common sense, see KSR, 550 U.S. at 421. Therefore, we agree with the Examiner that the combination of Gupta and Gerrity would have suggested all the recited limitations of independent claims 1, 9, and 18 to one of ordinary skill in the art. Appellants provided additional arguments with respect to the patentability of dependent claims 2, 6-8, 10, 14--16, and 19 (Br. 12-16). The Examiner has rebutted each of those arguments in the Answer by a preponderance of the evidence (Ans. 7). We agree with the Examiner's findings and underlying reasoning and adopt them as our own. CONCLUSION The Examiner did not err in rejecting claims 1-20 under 35 U.S.C. § 103(a). DECISION The decision of the Examiner rejecting claims 1-20 is affirmed. 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). AFFIRMED 5 Copy with citationCopy as parenthetical citation