Ex Parte 5657076 et al

Board of Patent Appeals and Interferences

Jan 31, 2012

90010848 (B.P.A.I. Jan. 31, 2012)

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.
90/010,848 03/04/2010 5657076 TAPP01-00004 4947
23990 7590 01/31/2012
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
BROWNE, LYNNE HAMBLETON
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOLLIS MATTHEW TAPP,
Appellant and Patent Owner
____________

Appeal 2012-002079
Reexamination Control 90/010,848
Patent 5,657,076
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JONI Y. CHANG,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Patent Owner (Hollis Matthew Tapp) appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1-15, 17, and 19-28. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by David A. Lowe on behalf of X10 Wireless Technology, Inc. on
February 2, 2010, of United States Patent 5,657,076 (the ‘076 Patent) issued
to Hollis M. Tapp on August 12, 1997. Presently, claims 1-15, 17, and 19-
28 stand rejected, with claims 16 and 18 confirmed as patentable.
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Patentee’s invention relates to a security and surveillance system that
monitors a zone of surveillance (see, e.g., col. 2, ll. 17-19).
Claim 1 reads as follows:
1. A security and surveillance system, comprising:
a detector for determining a presence in a zone of
surveillance, said detector generating an activation signal in
response to said presence;
a processor for generating an infrared code to perform a
specific function in response to said activation signal from said
detector;
a video camera for generating an image of said zone; and
a recording device coupled to said video camera, said
infrared code controlling said recording device to perform said
specific function to include recording said image from said
video camera, said processor capable of being programmed to
generate said infrared code in order to operate any brand of said
recording device.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Oliver 4,814,869 Mar. 21, 1989
Darbee 4,959,810 Sep. 25, 1990
Hart 5,299,971 Apr. 5, 1994
VanZeeland 5,448,290 Sep. 5, 1995

Lin EP0632660 A1 Jan. 4, 1995

The Examiner rejected claims on the following bases:
(1) claims 10, 11, 13-15, 17, 19, 20, and 26 under 35 U.S.C. § 102(b)
as being anticipated by Oliver;
(2) claims 19, 20, and 26 under 35 U.S.C. § 102(a) as being
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anticipated by Lin;
(3) claims 1, 2, 4, 8, 9, 21, 22, 24, and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Oliver and Darbee;
(4) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Oliver and Hart;
(5) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Oliver, Darbee and VanZeeland;
(6) claims 1, 2, 4-7, 9, and 21-23 under 35 U.S.C. § 103(a) as being
unpatentable over Lin and Darbee;
(7) claims 10, 11, 13-15, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Lin and Oliver; and
(8) claims 27 and 28 under 35 U.S.C. § 112, 1
st
paragraph as failing to
comply with the written description requirement.

ISSUES
The issues arising from the respective positions of Appellant and the
Examiner are:
1) Did the Examiner err in finding that claims 27 and 28 fail to
comply with the written description requirement?
2) Did the Examiner err in finding claims 10, 11, 13-15, 17, 19,
20, and 26 anticipated by Oliver; claims 1, 2, 4, 8, 9, 21, 22, 24, and 25
unpatentable over the combination of Oliver and Darbee; claim 12
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unpatentable over the combination of Oliver and Hart; and claim 3
unpatentable over the combination of Oliver, Darbee and VanZeeland?
3) Did the Examiner err in finding claims 19, 20, and 26
anticipated by Lin; claims 1, 2, 4-7, 9, and 21-23 unpatentable over Lin and
Darbee; and claims 10, 11, 13-15, and 17 unpatentable over Lin and Oliver?

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

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ANALYSIS
Claims 27 and 28 – Written Description
New claims 27 and 28 recite both 1) monitoring a zone of surveillance
and 2) not generating an infrared coded signal. Claims 27 and 28 require
that both processes are performed when a processor is operating in “off
mode.” The Examiner states that the Specification does not disclose
monitoring a zone of surveillance while in off mode (see, e.g., Ans. 42-43).
Appellant argues that the Specification “describes that ‘in the off
mode, processor 40 does not generate an infrared code and thus security and
surveillance system does not display an image from a video camera onto the
television.’” (App. Br. 43). In other words, according to Appellant, the
Specification discloses not generating an infrared coded signal when in off
mode. Even assuming Appellant’s contention to be true that the
Specification discloses not generating an infrared coded signal when in off
mode, Appellant does not demonstrate that the Specification discloses
monitoring a zone of surveillance when in off mode.
While Appellant argues that “[c]learly, if the zone is not being
monitored, there is no need to have an off mode for the processor” (App.
Br. 43), Appellant does not adequately demonstrate that the Specification
discloses that “the zone is not being monitored” in the first place. In fact,
claims 27 and 28 recite monitoring the zone of surveillance when in off
mode, which is the opposite of Appellant’s premise that “the zone is not
being monitored.”
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Thus, Appellant has not sufficiently demonstrated that the Examiner
erred in determining that the Specification fails to disclose monitoring a
zone of surveillance when in off mode as recited in claims 27 and 28.

Claims 10, 11, 13-15, 17, 19, 20, and 26 – Anticipation over Oliver
Appellant argues that Oliver “does not generate an ‘infrared coded
signal’” (App. Br. 26). As the Examiner points out, Oliver discloses
controlling display tuners via a circuit “that is similar to a remote control
tuner circuit” (col. 3, ll. 23-24) that generates “a unique pulse train” (col. 3,
ll. 31-32) and “transmits the pulse train as infrared pulses to an infrared
detector at the TV set” (col. 3, ll. 33-34). Appellant does not sufficiently
explain how the “infrared pulses” of Oliver differs from the “infrared coded
signal” as recited in claims 10, 19, and 26.
Appellant asserts that Oliver merely discloses “an electrical pulse
train transmitted on a wired connection” (App. Br. 27) and that the claimed
“infrared coded signal” is “defined to mean a code carried by an infrared
signal” (emphasis in original) (App. Br. 28). We are not persuaded that
Appellant’s assertions sufficiently demonstrates that Oliver fails to disclose
or suggest an “infrared coded signal” at least because: 1) Oliver explicitly
discloses “infrared pulses” and Appellant does not indicate specific
differences between Oliver’s “infrared pulses” and the “infrared coded
signal” as recited in claims 10, 19, and 26; 2) Appellant does not indicate
how a “wired” connection can never be used for transmitting “infrared”
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signals – particularly in view of Oliver’s explicit disclosure of transmitting
“infrared pulses”; and 3) Appellant does not indicate that the claim even
requires a non-wired connection.
Appellant asserts that the infrared pulses disclosed by Oliver is a
“general description of the prior art remote control chip” (emphasis in
original) (App. Br. 29) and implies that the disclosure cannot be used in
anticipating the claimed invention for this reason. We note that anticipation
is established when a single prior art reference discloses, expressly or under
the principles of inherency, each and every limitation of the claimed
invention. Atlas Powder Co., 190 F.3d at 1347. Since Oliver discloses
infrared pulses, which Appellant has not demonstrated to differ from the
claimed “infrared coded signal,” we cannot agree with Appellant that Oliver
fails to disclose the limitations recited in claims 10, 19, and 26.
In any event, we disagree with Appellant that Oliver’s disclosure of
infrared pulses pertains only to prior art devices. Oliver discloses infrared
pulses in Fig. 2, which is disclosed as “a block diagram of circuitry used in
the practice of the invention” (col. 1, ll. 39-40). Appellant has not
demonstrated how circuitry used in the “practice of the invention” is
somehow not used in the practice of the invention.
We further note that claim 10 merely recites “a processor for
generating an infrared coded signal.” In other words, claim 10 recites an
intended use of a processor “for generating an infrared coded signal”
(i.e., the processor has the capability of generating an infrared coded signal)
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but does not explicitly require the processor to specifically generate the
infrared coded signal. Appellant points out that Oliver discloses one
embodiment in which a processor provides a pulse train “by a wire
connection” (see, e.g., col. 3, l. 67) and further implies that an “infrared
coded signal” can never be transmitted over a wired connection (see, in
general, App. Br. 27). Even assuming Appellant’s implied assertion to be
correct, i.e., that infrared coded signals, in fact, can never be transmitted
over a wired connection, Oliver discloses that the processor is at least
capable of generating a pulse train “that would ordinarily be used to pulse a
light emitting diode” (col. 3, ll. 64-65). Appellant has not sufficiently
pointed out any differences between Oliver’s system that is capable of
generating an “infrared coded signal” (i.e., a signal ordinarily used to pulse a
light emitting diode) and the processor recited in claim 10 that is also
capable of generating an infrared coded signal (i.e., a processor with an
intended use for generating an infrared coded signal).
We conclude the Examiner did not err in rejecting claims 10, 11, 13-
15, 17, 19, 20, and 26 as anticipated by Oliver.

Claims 1, 2-4, 8, 9, 21, 22, 24, and 25 – Obvious over Oliver/Darbee and
Van Zeeland

Appellant argues that Darbee also fails to disclose a processor that
“generate[s] an ‘infrared coded signal’” (App. Br. 33). As above, we agree
with the Examiner that Oliver provides this disclosure.
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Appellant also argues that “Oliver . . . would teach a person of
ordinary skill in the art not to use the conventional hand-held remote control
device such as that taught by Darbee” (App. Br. 34) and therefore, according
to Appellant, the references “teach away” from each other (App. Br. 34). In
addition, Appellant argues that combining the references “would change the
principle of operation of the prior art invention being modified” (App. Br.
35), and the combination “would render the prior art invention . . .
unsatisfactory for its intended purpose” (App. Br. 36). Oliver discloses
using a “circuit . . . that is similar to a remote control tuner circuit of a
conventional TV” (col. 3, ll. 23-25). Since Oliver discloses using a device
similar to a conventional hand-held remote control device, we disagree with
Appellant that Oliver supposedly discloses not using such a device as
Appellant asserts.
Appellant argues that it would not have been obvious to one of
ordinary skill in the art to have combined the cited references because of
alleged commercial success of the claimed invention (see, e.g., App. Br. 37-
42). To support the contention of commercial success, Appellant states the
following:
1) “an article published in 2004 [describes] the popularity of an
infringing surveillance system” (App. Br. 37);
2) Customers of the alleged infringing system “clearly concur with
the great value provided by the claimed invention” (App. Br. 38);
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3) The Lin reference discloses a monitoring system that is
“continuously operated” and “very expensive” (App. Br. 39) and
the Secure-Way reference discloses a security system “to capture
thieves ‘red-handed’” (App. Br. 39) that, according to Appellant,
provides “evidence of the problems and unsolved needs in this
technology area” (App. Br. 40); and
4) David Rye of X10 Wireless stated that the alleged infringing
system is the alleged infringer’s “most popular product,” according
to Appellant (App. Br. 41).
We disagree with Appellant for at least the reasons set forth by the
Examiner (Ans. 39-42). For example, Appellant has not sufficiently
demonstrated that the alleged “popularity” of the accused infringer’s device,
statements from customers of a competing device (even if laudatory), or
statements that the alleged infringing system is a “most popular product”
constitute “commercial success.”
While Appellant asserts that various individuals praised a
competitor’s product, Appellant has not adequately demonstrated that any
“commercial success” was due to the claimed invention or what, if any,
claimed features resulted in the alleged “commercial success.” Appellant
only points to general comments such as a similar system being a “popular
product.” Without further information as to whether such “popularity” is, in
fact “commercial success,” whether such “commercial success” was a result
of any specific claimed feature, and evidence that the specific claimed
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feature (assuming one exists) was the impetus for the alleged “commercial
success,” we cannot agree with Appellant that such generalities indicate
“commercial success” of the claimed invention.
We also do not agree with Appellant that general descriptions of
monitoring systems (i.e., Lin and Secure-Way references) demonstrate
commercial success of the claimed invention. While Appellant generally
asserts that the Lin and Secure-Way references indicate “problems and
unsolved needs in this technology area,” Appellant does not indicate any
specific “unsolved need” or “problem” being solved or how such alleged
“need” or “problem” (assuming one is identified), or solution thereof, relates
to the claimed invention.
Even assuming that the accused infringer’s system was “popular” and
the infringer’s system was identical to the claimed invention, as Appellant
asserts, Appellant has not adequately demonstrated that the popularity (even
assuming that alleged “popularity” indicates commercial success) was not a
result of features present in the prior art as opposed to features in the
claimed invention. For example, as described above, Appellant has not
demonstrated any claimed feature not disclosed by the Oliver reference.
Hence, any “commercial success” may have been the result of features
already disclosed by Oliver.
In other words, Appellant has not adequately demonstrated a nexus
between the alleged “commercial success” and any feature of the claimed
invention since commercial success, if any, may be the result of features
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disclosed in the prior art. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d
1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in
the prior art, no nexus exists.”); Ormco Corp. v. Align Technology, Inc.,
463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the
commercial success was known in the prior art, the success is not
pertinent.”).
We are therefore unpersuaded by Appellant’s allegations of
commercial success and conclude the Examiner did not err in rejecting
claims 1, 2-4, 8, 9, 21, 22, 24, and 25.

Claim 12 – Obvious over Oliver and Hart
Appellant does not provide additional arguments in support of claim
12 over Oliver and Hart.
We sustain the Examiner rejection of claim 12 for previously stated
reasons.

Claims 1, 2, 4-7, 9-11, 13-15, 17, 19, 20, 23 and 26 – Lin Reference (alone
or in combination with Darbee or Oliver)

The Examiner rejects claims 19, 20, and 26 as anticipated by Lin;
claims 1, 2, 4-7, 9, and 21-23 as obvious over the combination of Lin and
Darbee; and claims 10, 11, 13-15, and 17 as obvious over the combination of
Lin and Oliver. In response to the Examiner’s final Office action dated
January 18, 2011, Appellant filed a “Declaration of Prior Invention Under
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37 CFR 1.131” by the inventor Hollis M. Tapp (filed March 22, 2011,
hereinafter “Declaration”) to establish invention of the ‘076 patent prior to
the effective date of the Lin reference, of which the Examiner refused entry.
Since the Declaration and accompanying exhibits are not part of the record
and Appellant provides no further support of any of the claims with respect
to the Lin reference, we sustain the Examiner’s rejections of claims 1, 2, 4-7,
9-11, 13-15, 17, 20-23, and 26.
Even though the Declaration is not part of the record, we note that the
Declaration states that the “invention . . . was reduced to practice at least as
early as late 1992” (Declaration 2) or, alternatively, “was conceived [at]
least as early as June, 1994, or August, 1994, . . . coupled with due diligence
from January 4, 1995 to a subsequent filing of the present application
March 14, 1995” (Declaration 2). In support of these contentions, Appellant
provides statements from the inventor and the inventor’s patent attorney,
Charles S. Fish, that the invention was either conceived of or reduced to
practice prior to the date of the Lin reference (Declaration 1-3, citing
depositions of Hollis Matthew Tapp and Charles S. Fish).
However, a declaration by the inventor (or his patent attorney) to the
effect that his/her invention was conceived or reduced to practice prior to the
reference date, without a statement of facts demonstrating the correctness of
this conclusion (such as mere general allegations that the invention was
completed prior to the date of the reference), is insufficient (Ex parte
Saunders, 1883 C.D. 23 (Comm’r Pat. 1883).
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For example, 37 C.F.R. § 1.131(b) requires that original exhibits of
drawings or records, or photocopies thereof, accompany and form part of the
affidavit or declaration or their absence be satisfactorily explained. The
affidavit or declaration and exhibits must clearly explain which facts or data
applicant is relying on to show completion of his or her invention prior to
the particular date.
In this case, the inventor provides vague and general statements in
broad terms about what the exhibits describe such as:
a) “these are very, very early conceptual drawings of
the system” (p. 60, ll. 19-20) that “was created on a computer”
(p. 62, l. 10), that includes a “pixilated rectangular box” that
might represent a “motion detector” (p. 63, l. 21), that includes
“two other rectangles” (p. 64, ll. 2-3) that that inventor believes
might be “referring to a camera” (p. 64, l. 4), and there may
also be “a VCR shown” (p. 65, l. 4) that is not apparently listed
as a system component (p. 66, ll. 2-5). However, absent from
the testimony and evidence is “a description under how the
system works” (p. 67, ll. 1-2).
b) The inventor stating that he created “two pages in
[a] fax [numbered 1466 and 1467]” (p. 100, ll. 9-10) that are
“dated 8/2/94” (p. 100, ll. 19-20), one of which the inventor
states “doesn’t specifically say recording device” (p. 103, l. 17)
and contains “no description of how the VCR might be used
with the system” (p. 103, ll. 24-25).
c) The inventor describes another document that
“mentions incorporating VCRs into a security and surveillance
system” (p. 97, ll. 12-13).

Such vague and general statements in broad terms about what the
exhibits describe along with a general assertion that the exhibits describe a
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reduction to practice (and/or conception of the invention) “amounts
essentially to mere pleading, unsupported by proof or a showing of facts”
and, thus, does not satisfy the requirements of 37 C.F.R. § 1.131(b). In
re Borkowski, 505 F.2d 713, 718 (CCPA 1974). In addition, as the inventor
states, the documents do not even provide “a description under how the
system works” (Tapp Deposition, p. 67, ll. 1-5). Appellant does not
adequately show how documents that do not even describe how a system
works is somehow sufficient to show conception and/or reduction to practice
of such an allegedly functional system. We therefore are not persuaded by
Appellant’s arguments.
The Tapp Declaration further states that “the invention . . . was
reduced to practice [at] least as early as January 12, 1993 based on the filing
date of the parent application Serial No 08/003,420 (Declaration 2). The
‘076 patent is a continuation-in-part of the U.S. Patent No. 5,398,057 (the
‘057 patent). We note that the ‘076 patent discloses “a recording device”
(see, e.g., col. 4, l. 32) which is not disclosed in the ‘057 patent.
Appellant states that the ‘057 patent discloses a signal that controls “a
television,” “a light assembly,” and a “localized alarm” (App. Br. 15) and
argues that such disclosures provide “clear evidence that inventor
understood . . . that his processor . . . could be utilized . . . to control devices
other than just a television or light assembly” (App. Br. 15), or, presumably,
a “localized alarm.” However, Appellant does not provide a sufficient
showing how a disclosure of controlling three specifically enumerated
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components (none of which is a recording device) is “clear evidence” that
the Specification also discloses a recording device (i.e., a device that is not
disclosed).
We also cannot agree with Appellant that an earlier dated document
(i.e., the ‘057 patent) that does not disclose a claimed element in a later
document (i.e., the ‘076 patent) is sufficient to demonstrate that the inventor
reduced the invention of the later document (‘076 patent) to practice on the
date of the earlier document that does not even disclose each of the elements
claimed in the later document.
Appellant does not provide any additional arguments with respect to
the anticipation rejection of claims 19, 20, and 26 over Lin or the
obviousness rejections of claims 1, 2, 4-7, 9-11, 13-15, 17, and 21-23 over
Lin and either one of Darbee or Oliver.
We conclude the Examiner did not err in rejecting claims 1, 2, 4-7, 9-
11, 13-15, 17, and 21-23.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 27 and
28 as failing to comply with the written description requirement; claims 10,
11, 13-15, 17, 19, 20, and 26 as anticipated by Oliver; claims 1, 2, 4, 8, 9,
21, 22, 24, and 25 as unpatentable over the combination of Oliver and
Darbee; claim 12 as unpatentable over the combination of Oliver and Hart;
claim 3 as unpatentable over the combination of Oliver, Darbee and
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VanZeeland; claims 19, 20, and 26 as anticipated by Lin; claims 1, 2, 4-7, 9,
and 21-23 as unpatentable over Lin and Darbee; and claims 10, 11, 13-15,
and 17 as unpatentable over Lin and Oliver.

DECISION
The decision of the Examiner to reject claims 1-15, 17, 19-28 is
AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

ak

Docket Clerk
P.O. Drawer 800889
Dallas, TX 75380

Third Party Requester:

X10 Wireless Technology, Inc.
c/o David A. Lowe, Esq.
Black Lowe & Graham
701 Fifth Avenue
Suite 4800
Seattle, WA 98104