Ex Parte Thursfield

Board of Patent Appeals and Interferences

Aug 10, 2009

10481142 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL PHILIP THURSFIELD
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Appeal 2009-003135
Application 10/481,1421
Technology Center 2600
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Decided: August 10, 2009
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Before MAHSHID D. SAADAT, MARC S. HOFF, and CARLA M.
KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Koninklijke Philips Electronics N.V.
Appeal 2009-003135
Application 10/481,142

Appellant’s invention relates to an interactive display, including
recording means conceived to record a message and playback means
conceived to playback the message via the interactive display. A recorded
message is parsed to determine identification characteristics of the intended
receiver. In one embodiment, a camera with face recognition is used to
determine whether a person is the intended receiver of the message. If so,
playback of the message is triggered (Spec. 1, 2).
Claim 1 is exemplary of the claims on appeal:
1. An interactive display comprising:
recording means conceived to record a message, wherein said
message is parsed to determine at least one identification characteristic of an
intended receiver of said message;
playback means conceived to playback the message via the interactive
display;
identification means conceived to identify at least one characteristic of
a person; and
verification means conceived to verify whether at least one
characteristic of the person maps onto the at least one identification
characteristic of the intended receiver and, if so, triggering the playback
means to playback the message, including previously stored messages
associated with the identified receiver, via the interactive display.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Atick US 6,111,517 Aug. 29, 2000
Bien US 6,311,077 B1 Oct. 30, 2001
Rabin US 6,603,464 B1 Aug. 5, 2003
Claims 1-3, 5, and 7-10 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Rabin.
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Application 10/481,142

Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rabin in view of Atick.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rabin in view of Bien.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed December 17, 2007) and the Examiner’s Answer (“Ans.,”
mailed March 26, 2008) for their respective details.

ISSUE
The Examiner finds that Rabin anticipates the claimed invention, or
renders it obvious in view of Atick or Bien, because Rabin teaches
verification means by which the treating physician or nurse can retrieve the
stored medical record (Ans. 7). Appellant argues that Rabin fails to address
any such verification, as the means are defined in the claims, and does not
address playback based on characteristics of a person mapping onto an
identification characteristic of an intended receiver of the message (Br. 6).
The contentions of Appellant and the Examiner thus present us with
the following issue:
Has Appellant shown that the Examiner erred in finding that Rabin
teaches parsing a recorded message to determine at least one identification
characteristic of an intended receiver of a message, in combination with
verification means conceived to verify whether at least one characteristic of
a person maps onto the at least one identification characteristic of the
intended receiver, and if so, triggering message playback?
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Application 10/481,142

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns an interactive
display, including recording means conceived to record a message and
playback means conceived to playback the message via the interactive
display. A recorded message is parsed to determine identification
characteristics of the intended receiver. In one embodiment, a camera with
face recognition is used to determine whether a person is the intended
receiver of the message. If so, playback of the message is triggered (Spec. 1,
2).
Rabin
2. Rabin teaches a method and device for medical record keeping
and information distribution, wherein a specially equipped pen scans
information, as it is written, into a database (col. 1, ll. 60-64).
3. Rabin is silent regarding the details of verification that a user is
the “intended recipient” of a “message” in the sections cited by the
Examiner (col. 6, ll. 40-60; col. 6, l. 59 – col. 7, l. 15).
4. Rabin teaches that information is captured and converted into
structured medical records (col. 6, ll. 45-46), and that the treating
physician’s or nurse’s personal identification code(s) are scanned into the
medical record (col. 6, l. 66 – col. 7, l. 5).
5. Rabin teaches optionally password-protecting each form to
reduce the likelihood that an unauthorized person can access it (col. 8, ll. 20-
23).
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6. Rabin teaches that its structured records may be supplied to a
pharmacy (col. 9, l. 41), laboratory (col. 10, l. 20), medical necessity/billing
compliance (col. 10, l. 39), and/or billing and receivables management (col.
10, l. 54).
Atick
7. Atick teaches real-time face recognition in a continuous
monitoring system for regulating access to a computer system or other
restricted environment (Abstract).
Bien
8. Bien teaches a combined cosmetics compact and cellular
radiotelephone device having a casing which includes the working
components of a radiotelephone and a mirror (Abstract).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
ANALYSIS
CLAIMS 1-3, 5, AND 7-10
Independent claim 1 includes parsing a message “to determine at least
one identification characteristic of an intended receiver,” “identification
means conceived to identify at least one characteristic of a person,” and
“verification means conceived to verify whether at least one characteristic of
the person maps onto the at least one identification characteristic of the
intended receiver,” and if so, playing back the message, “including
previously stored messages associated with the identified receiver.”
Independent claim 8 recites parsing a message “to determine at least one
identification characteristic of an intended receiver of said message,” as well
as playing back a message “and previously stored messages associated with
the identified person … when at least one characteristic of an identified
person maps onto the at least one identification characteristic of the intended
receiver.”
The Examiner finds that Rabin teaches the claimed “verification,” in
that Rabin “teaches a record recording and modifying system where a person
will enter their name as the identifier, and later be able to retrieve said record
by using said identifier. Different users, patients as well as doctors, will be
able to retrieve different records according to their identification” (Ans. 7).
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We disagree with the Examiner’s finding. Rabin teaches a method and
device for medical record keeping and information distribution, wherein a
specially equipped pen scans information, as it is written, into a database (FF
2). Rabin is silent regarding the details of verification that a user is the
“intended recipient” of a “message” in the sections cited by the Examiner
(FF 3). Those sections merely disclose that information is captured and
converted into structured medical records (FF 4) and that the treating
physician’s or nurse’s personal identification code(s) are scanned into the
medical record (FF 4). Rabin does teach optionally password-protecting
each form to reduce the likelihood that an unauthorized person can access it
(FF 5).
The Examiner’s position appears to be that the treating physician’s or
nurse’s code corresponds to the claimed “identification characteristic of an
intended receiver of the message,” and that Rabin inherently teaches that
scanning such codes will enable the system to grant access to the medical
record by that physician or nurse. As noted, however, Rabin does not
disclose any system for identifying at least one characteristic of a person
(seeking to access a stored form), nor verification means to verify whether
that characteristic maps onto “the at least one identification characteristic of
the intended receiver,” said identification characteristic being the one parsed
when the recording means recorded the message, as recited in claim 1.
Further, Rabin contemplates the dissemination of its records to many
other entities beyond the “intended recipients” (i.e., the treating physician or
nurse). Rabin teaches that its structured records may be supplied to a
pharmacy, laboratory, medical necessity/billing compliance, and/or billing
and receivables management (FF 6). Rabin does not contemplate entering
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those entities into the medical record when it is created (see col. 6, l. 59 –
col. 7, l. 15). Thus, when the “message” of Rabin is parsed to determine at
least one identification characteristic of an intended receiver, those entities
are not included among the intended receiver(s). Were a person in the
pharmacy or lab, for example, to attempt to access the claimed “message,”
he or she would be unsuccessful, because that person’s identification
characteristic would not match “the at least one identification characteristic
of the intended receiver,” as claims 1 and 8 require. Rabin therefore does not
teach all the limitations of the claimed invention.
Because Rabin does not teach all of the limitations of the claimed
“verification means,” Appellants have shown error in the Examiner’s
rejection of independent claims 1 and 8, and we will not sustain the rejection
of claims 1-3, 5, and 7-10 under 35 U.S.C. § 102(e) as anticipated by Rabin.
CLAIM 4
As noted supra, we reverse the rejection of claim 1, from which claim
4 depends. The Examiner has not identified, nor do we find, teachings in
Atick that remedy the deficiencies of Rabin. We therefore conclude that
Rabin in combination with Atick fails to render claim 4 obvious, for the
same reasons expressed with respect to claim 1. Therefore, we will not
sustain the rejection of claim 4 under 35 U.S.C. § 103(a).
CLAIM 6
As noted supra, we reverse the rejection of claim 1, from which claim
6 depends. The Examiner has not identified, nor do we find, teachings in
Bien that remedy the deficiencies of Rabin. We therefore conclude that
Rabin in combination with Bien fails to render claim 6 obvious, for the same
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reasons expressed with respect to claim 1. Therefore, we will not sustain the
rejection of claim 6 under 35 U.S.C. § 103(a).

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in finding that Rabin
teaches parsing a recorded message to determine at least one identification
characteristic of an intended receiver of a message, in combination with
verification means conceived to verify whether at least one characteristic of
a person maps onto the at least one identification characteristic of the
intended receiver, and if so, triggering message playback.

ORDER
The Examiner’s rejection of claims 1-3, 5, and 7-10 under 35 U.S.C.
§ 102 is reversed.
The Examiner’s rejection of claims 4 and 6 under 35 U.S.C. § 103 is
reversed.
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REVERSED

ELD

US PHILIPS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
P O BOX 3001
BRIARCLIFF MANOR, NY 10510
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