Ex Parte Alameh et al

Patent Trial and Appeal Board

Nov 5, 2018

15470539 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/470,539 03/27/2017
138908 7590 11/05/2018
Burrus Intellectual Property Law Group
(MM Files)
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Rachid M Alameh
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.
MM01276-US-CNT 5780
EXAMINER
PHAM,TUAN
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
11/05/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RACHID M. ALAMEH and KEVIN J. McDUNN
Appeal2018-003687
Application 15/470,539 1
Technology Center 2600
Before ERIC S. FRAHM, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4, 9, and 12-16. The Examiner has objected to claims 5-8, 10, 11,
and 17-20 as being dependent upon a rejected base claim, but has indicated
the claims would be allowable if rewritten in independent form. Final
Act. 9. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b ).
We affirm and designate our affirmance as a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b) (2017).
1 Appellants identify Motorola Mobility LLC as the real party in interest.
App. Br. 2.
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Application 15/470,539
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
electronic devices having proximity sensors. Spec. ,r 3. "Proximity sensors
detect the presence of nearby objects before those objects contact the device
in which the proximity sensors are disposed." Spec. ,r 5. In a disclosed
embodiment, a proximity sensor may comprise an infrared signal receiver.
Spec. ,r 34. According to the Specification, an infrared signal receiver may
be configured to receive infrared wavelengths corresponding to the
wavelength of heat emitted by the body of a human being. Spec. ,r 34.
Further, according to the Specification, a proximity sensor may be able to
detect a person's body heat from a distance of about ten feet. Spec. ,r 50.
Appellants describe an embodiment wherein a plurality of proximity sensors
are disposed within an electronic device (i.e., mobile phone). Spec. ,r 37.
As described, the proximity sensors may determine whether a person is
within a thermal reception radius (i.e., within ten feet) of the device. Spec.
,r 37. In a disclosed embodiment, in response to receiving an incoming
message (i.e., text message), the electronic device may perform a determined
operation (e.g., sending an automatic reply) if it is determined that a person
is not within the thermal reception radius of the device. Spec. ,r 37.
Additionally, Appellants describe an embodiment wherein the electronic
device may further comprise identification modules to distinguish the device
owner from other people within the thermal reception radius. Spec. ,r,r 39,
63.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
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Application 15/470,539
1. An electronic device, comprising:
a housing;
one or more processors;
at least one proximity sensor component operable with the
one or more processors and comprising an infrared signal
receiver receiving an infrared emission from an object external
to the housing;
an identification module; and
a communication circuit;
the one or more processors rece1vmg, with the
communication circuit, an incoming communication from a
remote communication device and determining whether a person
is within a thermal reception radius of the at least one proximity
sensor component;
where the person is within the thermal reception radius,
the identification module attempting to determine an identity of
the person; and
where the person is not within the thermal reception
radius, the one or more processors performing a control operation
in response to receiving the incoming communication.
The Examiner's Rejections
1. Claims 1 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gupta (US 2010/0105423 Al; Apr. 29, 2010); Svajda et
al. (US 8,704,152 B2; Apr. 22, 2014) ("Svajda"); and Soundararajan et al.
(US 9,426,525 B2; Aug. 23, 2016) ("Soundararajan"). Final Act. 4---6.
2. Claims 2--4, 9, and 13-15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Gupta, Svajda, Soundararajan, and Schapsis et al.
(US 2012/0064924 Al; Mar. 15, 2012) ("Schapsis"). Final Act. 6-8.
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3. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gupta, Svajda, Soundararajan, and Warr (US
2015/0133098 Al; May 14, 2015). Final Act. 8.
ANALYSIS 2
Claims 1 and 12
In rejecting independent claims 1 and 12, the Examiner relies on the
combined teachings and suggestions of Gupta, Svajda, and Soundararajan.
Final Act. 5-6. Appellants do not dispute the Examiner's findings regarding
Gupta, Svajda, and Soundararajan. See App. Br. 12-16. Appellants state
"the sole question in this appeal becomes whether the addition of
Soundararajan to Gupta and Svajda corrects the deficiency of the base
combination of Gupta and Svajda."3 App. Br. 12. However, Appellants
assert the Examiner failed to provide "any 'articulated reasoning with some
rational underpinning to support a legal conclusion of obviousness."' App.
Br. 14 (internal citation omitted); Reply Br. 8-10. In particular, Appellants
allege the proffered statement of motivation to combine Soundararajan with
the other cited references is conclusory and based on improper hindsight.
App. Br. 12-16; Reply Br. 8-10. In sum, Appellants state they are not
2 Throughout this Decision, we have considered the Appeal Brief, filed
October 23, 2017 ("App. Br."); the Reply Brief, filed February 19, 2018
("Reply Br."); the Examiner's Answer, mailed January 3, 2018 ("Ans.");
and the Final Office Action, mailed July 24, 201 7 ("Final Act."), from which
this Appeal is taken.
3 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
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arguing "that there is no motivation to combine ... [but rather] the stated
motivation is nothing more than a conclusory statement." App. Br. 16.
Additionally, Appellants assert that Soundararajan discloses a
"complex, two part system" including a primarily stationary device and that
it is not clear how Soundararajan's teachings could be combined without
disrupting the desired mobility of Gupta and Svajda. App. Br. 15; Reply
Br. 10-12.
In rejecting independent claims 1 and 12, the Examiner relies on the
combined teachings of Gupta and Svajda to teach all of the limitations
except for the claimed identification module that, when a person is within
the thermal reception radius of the device, attempts to determine the identity
of the person. Final Act. 6. The Examiner relies on Soundararajan to teach
this missing limitations and states it would have been obvious to one of skill
in the art to combine Soundararajan with Gupta and Svajda "in order to
identify the face of the other user when detecting proximity." Final Act. 6.
In response to Appellants' arguments regarding the motivation to combine
Soundararajan with Gupta and Svajda, the Examiner further explains an
ordinarily skilled artisan would have been motivated to combine
Soundararajan with Gupta and Svajda "in order to effectively generating
presence information based on (1) the location information and (2) the
proximity information, the presence information being indicative of whether
the person is present in a media exposure environment associated with a
media presentation device (see Soundararajan's abstract)." Ans. 3.
We begin our analysis with a brief review of Soundararajan.
Soundararajan is generally directed to measuring people in an audience (i.e.,
exposed to certain media). Soundararajan, col. 1, 11. 6-8, col. 2, 11. 8-16. In
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addition to a ( fixed) base metering device, Soundararaj an discloses a
portable people meter device. See Soundararajan, col. 6, 11. 27-30.
Soundararajan describes the portable people meter as, for example, "a
cellular telephone, a personal digital assistant (PDA), a smart phone, a
handheld computer, a tablet, an e-reader, a laptop computer, and/or any other
suitable portable electronic device." Soundararajan, col. 8, 11. 31-35. The
portable people meter is associated with a panelist (i.e., the device owner)
and is used to detect the "presence or absence of the panelist and/ or another
person ( e.g., another household member and/or a visitor) within a media
exposure environment." Soundararajan, col. 2, 1. 66-col. 3, 1. 2.
Soundararajan discloses the portable people meter collects to indicate the
presence of people, including proximity information. Soundararajan
discloses a person is in proximity to the portable people meter if the person
is within a threshold distance of the device. Soundararajan, col. 4, 11. 22-30.
Additionally, Soundararajan discloses further analyzing proximity data "to
identify or at least estimate the identity of the detected person."
Soundararajan, col. 5, 11. 31-36. As an example, proximity data may include
a photograph captured by a camera of the portable people meter.
Soundararajan, col. 5, 11. 39--43. The captured photograph may then be
compared ( e.g., using facial recognition) to identify the detected person.
Soundararajan, col. 5, 11. 39--43.
Therefore, as described, Soundararajan teaches a portable device that
is able to detect the presence of people within a threshold distance of the
device and may further attempt to identify the detected person( s) using, for
instance, a captured photograph and facial recognition. Soundararajan does
not explicitly describe how the presence detector operates. See generally
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Soundararajan, col. 12, 1. 28---col. 13, 1. 4, col. 22, 1. 53---col. 23, 1. 17.
Appellants' arguments directed to other aspects of Soundararajan's system
(e.g., the base metering device) do not diminish from Soundararajan's
teachings related to the portable device. Accordingly, such arguments are
not persuasive of error.
Unlike the Examiner, we do not consider the order in which prior art
is applied in a rejection to be significant. See, e.g., In re Bush, 296 F .2d 491,
496 (CCP A 1961 ). Thus, starting with the portable device of Soundararajan,
a person of ordinary skill in the art would have been motivated to modify the
proximity detection of Soundararajan with the temperature sensor of Gupta
(see, e.g., Gupta ,r,r 10-11, Fig. 1 (106)) further modified to be an infrared
signal receiver as taught by Svajda (see, e.g., Svajda, col. 7, 11. 25--42,
Fig. 1) to detect the proximity of a person to the device within a desired
threshold. See Gupta ,r,r 10-11, Svajda, col. 7, 11. 25--42.
In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been
pointed out to the applicant, we deem it to be of no significance,
but merely a matter of exposition, that the rejection is stated to
be on A in view of B instead of on B in view of A, or to term one
reference primary and the other secondary.
Bush, 296 F.2d at 496.
For the reasons discussed supra, we sustain the Examiner's rejection
of independent claims 1 and 12 over the combined teachings and suggestions
of Gupta, Svajda, and Soundararajan. Because we have revised the
motivation to combine the references, we designate the affirmance as a new
ground of rejection, to afford Appellants an opportunity to address the
rejection as articulated in this Decision.
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Claims 2--4, 9, and 13-15
Claims 2--4, 9, and 13-15 stand rejected over the combined teachings
of Gupta, Svajda, Soundararajan, and Schapsis. Final Act. 6-8. Appellants
assert the Examiner's reason to combine Schapsis with the combination of
Gupta, Svajda, and Soundararajan is conclusory and fails to provide
articulated reasoning with rational underpinning. App. Br. 17.
Claim 2, for example, depends from claim 1 and recites "the control
operation comprising delivering, with the communication circuit, a
preformatted response message to the remote communication device."
The Examiner finds Gupta teaches, inter alia, "performing a control
operation in response to receiving the incoming communication," as recited
in claim 1. Final Act. 5 ( citing Gupta ,r,r 17-22). Gupta identifies a control
operation as a "call-forwarding" feature, but discloses that "any suitable
feature may be toggled between an[] activated and deactivated state." Gupta
,r 17. Additionally, the Examiner finds Schapsis teaches delivering a
preformatted response message, as required by claim 2. Final Act. 7 ( citing
Schapsis ,r,r 33-34, Figs. 2, 4B, and 7). Thus, the control operation of Gupta
may comprise sending the preformatted response taught by Schapsis. The
Examiner explains that one of ordinary skill in the art would have been
motivated to modify the control operation of Gupta with the preformatted
response message of Schapsis "in order to avoid ... [an] accident while
driving." Final Act. 7.
"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'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Additionally,
Appellants do not point to any evidence of record that the combinations
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would be "uniquely challenging or difficult for one of ordinary skill in the
art" or "represented an unobvious step over the prior art." Leapfrog Enters.
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418-19).
Further, in response to Appellants' arguments, the Examiner further
explains "Schapsis teaches the use of [a] preformatted response message to
reduce driver distraction due to mobile text messaging." Ans. 4 (citing
Schap sis ,r 1 ). Thus, the Examiner finds it would have been obvious to
combine the teachings of Schapsis with the other cited art "to reduce driver
distraction due to mobile text messaging that might lead to a car accident."
Ans. 4.
Contrary to Appellants' assertions, the Examiner has set forth
articulated reasoning with rational underpinning from the cited art of record
in support of the proffered combination of references and legal conclusion of
obviousness.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claims 2--4, 9,
and 13-15.
Claim 16
Claim 16 depends from claim 12 and further provides for detecting
( with an accelerometer) an orientation of the electronic device and
responding to an incoming message when the device is in a first orientation,
but not responding to the incoming message when the device is in a second
orientation. The Examiner relies on Warr to teach these additional
limitations. Final Act. 8 (citing Warr ,r,r 34--39, 42--46, 49, 60, 62, Figs. 2a,
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2b, 3, and 4). The Examiner explains it would have been obvious to one of
ordinary skill in the art to combine the teachings of Warr to the base
combination of Gupta, Svajda, and Soundararajan "in order to support
multi-mode operation." Final Act. 8.
Appellants advance the same arguments that the Examiner did not
provide articulated reasoning with rational underpinnings to support the
legal conclusion of obviousness. App. Br. 18. Rather, Appellants assert the
Examiner's statement is conclusory and does not provide an explanation of
how an ordinarily skilled artisan would apply the teachings of the references.
App. Br. 18.
Further, in response to Appellants' arguments, the Examiner further
explains Warr teaches "in some instances, the user of the communications
device or devices may need complete focus on a particular task and may
require a period of uninterrupted time to stay on task." Ans. 5 ( citing Warr
,r 1 ). As discussed above, Gupta teaches the control operation may be
activated or deactivated. See Gupta ,r 1 7. Thus, the orientation of the
device, as taught by Warr, when combined with Gupta ( and the other
references) to predictably result in toggling the control operation state (i.e.,
responding to an incoming message, or not responding to an incoming
message). See KSR, 550 U.S. at 416. Thus, the Examiner explains it would
have been obvious to combine the teachings of Warr to the base combination
of Gupta, Svajda, and Soundararajan "so that the user of the communication
device or devices may completely focus on a particular task that requires a
period of uninterrupted time to stay on task." Ans. 5.
Contrary to Appellants' assertions, the Examiner has set forth
articulated reasoning with rational underpinning from the cited art of record
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in support of the proffered combination of references and legal conclusion of
obviousness.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 16.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 9, and 12-16
and we designate the affirmance as a new ground of rejection.
37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PA TENT EXAMINING PROCEDURE§ 1214.01 (9th
Ed., Rev. 08.2017, Jan. 2018).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED;
37 C.F.R. § 4I.50(b)
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