14814566 - (D) (P.T.A.B. Apr. 14, 2020)

Motorola Mobility LLC

Patent Trials and Appeals BoardApr 14, 2020

14814566 - (D) (P.T.A.B. Apr. 14, 2020)

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. 14/814,566 07/31/2015 Rachid M Alameh MM01303 1007 138908 7590 04/14/2020 Burrus Intellectual Property Law Group (MM Files) 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER KHAN, OMER S ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 04/14/2020 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): BIPLaw_docketing@burrusiplaw.com pburrus@burrusiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RACHID M. ALAMEH and PAUL STEUER ____________ Appeal 2019-005359 Application 14/814,566 Technology Center 2600 ____________ Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1 and 3–14, which constitute all of the claims pending in this application. Claims 2 and 15–20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Motorola Mobility LLC. Appeal Br. 2. Appeal 2019-005359 Application 14/814,566 2 STATEMENT OF THE CASE Appellant’s invention generally relates to “electronic devices,” and more particularly to “portable electronic devices having proximity sensors.” Spec. ¶ 2. Claim 1, reproduced below, is representative of the claimed subject matter: 1. Eyewear, comprising: a frame; one or more stems extending distally from the frame, the one or more stems each comprising a temple portion and an ear engagement portion; one or more processors disposed within one or more of the frame or the one or more stems; one or more proximity sensor components operable with the one or more processors, each proximity sensor component comprising an infrared signal receiver to receive an infrared emission from an object, the one or more proximity sensor components disposed only in the ear engagement portion; the one or more processors operable to execute a control operation when the one or more proximity sensor components receive the infrared emission from the object. Appeal Br. 22 (Claims Appendix). REJECTION ON APPEAL Claims 1 and 3–14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kovarik et al. (US 2011/0144453 A1; published June 16, 2011) (“Kovarik”) and Abreu (US 2008/0144854 A1; published June 19, 2008). Non-Final Act. 3. Appeal 2019-005359 Application 14/814,566 3 ANALYSIS The application was previously subject to an appeal (No. 2017- 009195) (hereafter “Prior Appeal”), challenging the Examiner’s obviousness rejection over Kovarik and the Examiner’s obviousness rejection over Kovarik and Abreu.2 The Prior Appeal was decided on February 1, 2018, affirming the Examiner. Following the Prior Appeal, Appellant amended independent claim 1 from “the one or more proximity sensor components disposed along the ear engagement portion” to the presently claimed “the one or more proximity sensor components disposed only in the ear engagement portion.” See Appeal Br. 24 (emphasis added). Here, the Examiner finds Kovarik teaches sensors positioned somewhere in the arms of the sunglasses to provide detection function. Non-Final Act. 4–5 (citing Kovarik Fig. 8, ¶ 34); see also Ans. 4. The Examiner further finds that Abreu teaches sensors attached to the ear engagement portion. Non-Final Act. 5 (citing Abreu Fig. 1B, ¶¶ 115, 118, 472); see also Ans. 5. Specifically, the Examiner identifies Abreu’s detachable electronics package (“DEP”) attached to the ear engagement portion and storage cord that “may further include a motion sensor to detect someone behind.” Non-Final Act. 2–3, 5 (citing Abreu ¶¶ 115, 118, 472). The Examiner determines it would be obvious to modify Kovarik’s “sunglasses . . . to place the proximity sensor ‘elsewhere about the sunglasses’ . . . in order to detect object(s) moving within a predetermined distance of the sensors.” Ans. 5; see also Ans. 6 (citing 2 Claims 1 and 4–13 were rejected under 35 U.S.C. § 103 as unpatentable over Kovarik. Claims 3 and 14 were rejected under 35 U.S.C. § 103 as unpatentable over Kovarik and Abreu. Appeal 2019-005359 Application 14/814,566 4 Abreu ¶ 472; Kovarik ¶ 34). The Examiner further determines it would be obvious to modify Kovarik “and have the proximity sensor for detecting someone (perhaps assailant) behind the user of the sunglasses and allow the user to take evasive actions in an effort to prevent a possible attack from the assailant approaching from the rear, and therefore, providing safety and security to the end-user.” Ans. 5; see also Non-Final Act. 6. Appellant argues the combination of references “fails to teach eyewear with proximity sensors positioned only on the ear engagement portions.” Appeal Br. 11. Specifically, Appellant argues that “adding proximity sensors from the storage cord of Abreu to the ear engagement portions . . . of Kovarik is that the resulting eyewear would have sensors at all of the ear engagement portion, the temple portion, and the frame, . . . [which is] simply not what is claimed.” Appeal Br. 14. Appellant further argues the proposed modification would render Kovarik unsatisfactory for its intended purpose. Appeal Br. 16–20; see also Reply Br. 8–10. Specifically, Appellant argues the claimed “proximity sensors attached to the eyewear ‘only in the ear engagement portion’ ensures ‘optimal detection of objects from behind a user wearing the eyewear.’” Appeal Br. 11 (citing Spec. ¶ 28). According to Appellant, “the single imperative of Kovarik’s invention is that sensors should be positioned so that they can detect contact with a user’s face,” but modifying Kovarik with “Abreu’s sensors at the ear engagement portions” so the sensors would be “located only in the ear engaging portions of the stems would cause the Appeal 2019-005359 Application 14/814,566 5 user’s head to block those sensors from detecting facial contact.” Appeal Br. 18, 20. We are persuaded by Appellant’s arguments. The Examiner’s modification of Kovarik “place[s] the existing proximity sensors 16 behind the temple tip [i.e. claimed ear engagement portion].” Ans. 6. However, Kovarik is directed “to warn an individual that an object is approaching their face.” Kovarik ¶ 17. Kovarik endeavors to accomplish this result by including sensors to warn an individual “as [their] hands or fingers approach within a predetermined distance or proximity to their face” and “prevent or preclude undesired contact between hands and face.” Id. ¶¶ 18, 32; see id. ¶¶ 22–23. The goal of Kovarik is to “reduce the opportunities for infection of individuals.” Id. ¶ 19. Meanwhile, Abreu teaches sensors “housed in the storage cord . . . to detect someone behind.” Abreu ¶ 472. Kovarik specifically detects objects as they approach an individual’s face (the front of an individual’s head), but Abreu describes detecting an object approaching from the complete opposite direction from behind an individual (the back of an individual’s head). Therefore, we agree with Appellant that modifying Kovarik with Abreu’s storage cord sensors (sensors towards the ear engagement portion) to detect motion from behind an individual would undermine the main focus of Kovarik of detecting objects as they approach the individual’s face. Accordingly, we agree with Appellant that the Examiner has not established sufficient motivation to combine the references. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, on this record, we do not sustain the Examiner’s § 103 Appeal 2019-005359 Application 14/814,566 6 rejection of independent claim 1 and dependent claims 3–14. CONCLUSION We reverse the Examiner’s rejection of claims 1 and 3–14 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3–14 103 Kovarik, Abreu 1, 3–14 REVERSED