Ex Parte ThursfieldDownload PDFBoard of Patent Appeals and InterferencesAug 10, 200910481142 (B.P.A.I. Aug. 10, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PAUL PHILIP THURSFIELD ____________________ Appeal 2009-003135 Application 10/481,1421 Technology Center 2600 ____________________ Decided: August 10, 2009 ____________________ 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. 2 Appeal 2009-003135 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? 3 Appeal 2009-003135 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). 4 Appeal 2009-003135 Application 10/481,142 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 5 Appeal 2009-003135 Application 10/481,142 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). 6 Appeal 2009-003135 Application 10/481,142 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 7 Appeal 2009-003135 Application 10/481,142 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 8 Appeal 2009-003135 Application 10/481,142 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. 9 Appeal 2009-003135 Application 10/481,142 REVERSED ELD US PHILIPS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT P O BOX 3001 BRIARCLIFF MANOR, NY 10510 10 Copy with citationCopy as parenthetical citation