Ex Parte DiPoala

Patent Trial and Appeal Board

Apr 17, 2017

12331680 (P.T.A.B. Apr. 17, 2017)

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.
12/331,680 12/10/2008 William DiPoala 081276-2025 3037
34044 7590 04/19/2017
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
04/19/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM DIPOALA
Appeal 2016-007441
Application 12/331,68c1
Technology Center 2400
Before DEBRA K. STEPHENS, BRADLEY W. BAUMEISTER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—7, 21—29, 32, and 34—36, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
“The present invention provides a security system that incorporates a
less than lethal deterrent (LTLD) [e.g., pepper spray] to force a burglar or
other intruder out of the premises or to incapacitate the intruder until police
arrive.” Spec. 110.
1 According to Appellant, the real parties in interest are Bosch Security
Systems, Inc. and Robert Bosch GMBH. App. Br. 2.
Appeal 2016-007441
Application 12/331,680
Illustrative Claim
Claims 1 and 35 are illustrative and reproduced below with the
limitations at issue emphasized:
1. A security system, comprising:
an enclosure;
a video system disposed in the enclosure and configured
to obtain images of an intruder;
a deterrent dispensing device disposed in the enclosure
and configured to dispense a deterrent substance in a selected
direction; and
an actuator module disposed in the enclosure and
communicatively coupled to the video system and coupled to the
deterrent dispensing device, the actuator module being
configured to receive a video signal from the video system and,
in response thereto, control the deterrent dispensing device.
35. The method according to claim 25, wherein the deterrent
dispensing device includes multiple nozzles, and the outputting
of a deterrent substance from the deterrent dispensing device in
a direction based on a location of a moving object includes
selecting a subset of the multiple nozzles to output a deterrent
substance.
Rejections
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Peter Rojas, The Smell Cannon, Engadget (Apr. 2, 2004), available at
http://www.engadget.com/2004/04/02/the-smell-cannon/. Final Act. 5.
Claim 1 stands rejected under 35 U.S.C. § 102(a) as anticipated by
The Sentry Project (2008), http://web.archive.org/web/20080801162124
/http://www.paintballsentry.com/history.html. Final Act. 6.
Claims 1—3, 5—7, and 21—24 stand rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Fatham et al. (US 2009/0122143 Al;
May 14, 2009) and Greg Kogut & Farry Drymon, A Vision System for an
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Unmanned, Non-lethal Weapon, SPIE Proc. Vol. 5608, Intelligent Robots &
Computer Vision XXII (2004). Final Act. 7.
Claims 25—28 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Latham, Kogut, and Lemons et al. (US 6,504,479 Bl;
Jan. 7, 2003). Final Act. 11.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Latham, Kogut, and Somner et al. (US 5,819,124; Oct. 6,
1998). Final Act. 13.
Claims 29, 32, and 34 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Latham, Kogut, Lemons, and Somner.
Final Act. 14.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Latham, Kogut, Lemons,2 and Sells et al.
(US 2005/0124234 Al; June 9, 2005). Final Act. 17; App. Br. 18; Ans. 3.
ISSUES
1. Did the Examiner err in finding Rojas, Sentry Project, Latham,
or Lemons discloses “an enclosure” and various components disposed “in
the enclosure,” as recited in claims 1, 2, 25, and 29?
2. Did the Examiner err in finding the combination of Latham,
Kogut, and Lemons teaches or suggests “outputting a deterrent substance
from the deterrent dispensing device in a direction that is based on the
location of the moving object as determined from the captured sounds,” as
recited in claim 25?
2 As Appellant notes, the Final Rejection did not list Lemons in the rejection
of claim 35, but necessarily included Lemons through claim 35’s
dependence on claim 25. App. Br. 18. The Examiner corrected this in the
Answer. Ans. 3. We deem this omission to be a harmless error.
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3. Did the Examiner err in finding a person of ordinary skill in the
art would have been motivated to combine Sells with Latham, Kogut, and
Lemons for claims 35 and 36?
CLAIM CONSTRUCTION
“an enclosure ” / “in the enclosure ”
Claim 1 recites “an enclosure” and various different components
“disposed in the enclosure.” Commensurate limitations are recited in
claims 2 and 4 (“disposed in the enclosure”); 25 (“disposed in an enclosure”
/ “in the enclosure”); 29 (“disposed in an enclosure”); and 34 (“in the
enclosure”).
The Examiner concludes “[a]n enclosure can be interpreted as a room,
multiple rooms, or even a building [because] Appellant has not given a clear
and reasonable definition of enclosure.” Ans. 6.
Appellant initially contends—without citation—that “[o]ne definition
of enclosure is ‘an area that is sealed off with an artificial or natural
barrier.’” App. Br. 11. But Appellant later argues “utilizing the dictionary
definition of ‘enclosure’ appears unnecessary” because “the specification
defines the term ‘enclosure’ as providing a 360 degree range in the field of
view” and requires that the “components are provided within a single
enclosure.” Reply Br. 3^4 (citing Spec. 110) (emphasis added).
We are not persuaded this disclosure constitutes a definition. The
federal Circuit has explained that
[t]o act as its own lexicographer, a patentee must clearly set forth
a definition of the disputed claim term other than its plain and
ordinary meaning. It is not enough for a patentee to simply
disclose a single embodiment or use a word in the same manner
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in all embodiments, the patentee must ‘clearly express an intent’
to redefine the term.
Thornerv. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (quotations omitted).
Here, the only text of the Specification cited by Appellant in support
of his proposed definition states that “[t]he motion detector, vision system
and LTLD may be housed in the same enclosure, which provides a 360
degree range in the field of view.” Spec. 110 (emphasis added). This
statement provides a non-limiting example (“may be”), not a definition.
Thus, we are not persuaded that the term “an enclosure” should be construed
as necessitating a 360 degree range in the field of view.
For the same reason, we are not persuaded that this non-limiting
example alone limits the phrase “an enclosure” to one enclosure. See Reply
Br. 3; App. Br. 10-16, 18; Spec. 110 (“may be housed in the same
enclosure”) (emphasis added); see also Spec. 19 (“in a same housing”).
[The Federal Circuit] has repeatedly emphasized that an
indefinite article “a” or “an” in patent parlance carries the
meaning of “one or more” in open-ended claims containing the
transitional phrase “comprising.” That “a” or “an” can mean
“one or more” is best described as a rule, rather than merely as a
presumption or even a convention. The exceptions to this rule
are extremely limited: a patentee must evince a clear intent to
limit “a” or “an” to “one.” The subsequent use of definite articles
“the” or “said” in a claim to refer back to the same claim term
does not change the general plural rule, but simply reinvokes that
non-singular meaning. An exception to the general rule that “a”
or “an” means more than one only arises where the language of
the claims themselves, the specification, or the prosecution
history necessitate a departure from the rule.
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-43 (Fed.
Cir. 2008) (quotations omitted).
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However, the question remains whether the claim limitations reciting
components “disposed in the enclosure” require that the components be in
the same enclosure or enclosures. To address this, we turn to the
embodiments in the Specification.
All of the figures in the Specification depict embodiments that are
“modular.” Figure 2 is exemplary and reproduced below:
Figure 2 depicts “a modular building system arrangement 20” in
which multiple “different building systems” are “stacked on top of each
other.” Spec. 23, 25. For example, Figure 2 depicts a “base 24” with a
“processor 44” that functions as a centralized controller (| 28), “a
microphone ring 36a” below the base (125), “a passive infrared (PIR)
motion detection ring 36b” stacked under ring 36a (Tflf 25—26), “a lighting
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ring 36c” stacked under ring 36b (Tffl 25, 27), and finally “an electrical end
cap module in the form of a surveillance camera 26” (123). Collectively,
the “different building systems 36a-c stacked on top of each other” are
included in “building system assembly 22.” Id. 125. Building system
assembly 22 is “coupled to” base 24 and the camera module. Id. 123.
However, the Specification expressly states “each of the building
systems and the camera may have an outer housing” (i.e., multiple
systems/modules means multiple housings). Spec. 148 (emphasis
added). “Further, the outer housings [i.e., plural] of each of the building
systems and the camera may have an equal diameter and
circumference.” Id. 148 (emphasis added); see also id. 139 (“As may be
evident from the above description of the modularity of the electrical and
mechanical connectors of base 24, building systems 36a-c, camera 26 and
their housings,. . .”) (emphasis added). Thus, the Specification teaches that
different modules, including the three modules in claim 1 (i.e., the claimed
video system, deterrent dispensing device, and actuator module), can have
different housings. In fact, every figure depicts the components having
different housings. Similarly, the Specification discusses the “bottom
surface” and “upper surface” of various building systems, indicating that the
respective housings provide separate chambers. Spec. Tfl[ 32 (“a bottom
surface 64 of building system 56b [in Fig. 6]”), 35 (“upper surface of
building system 36b [in Fig. 10]”).
The Federal Circuit has “often remarked that a construction which
excludes the preferred embodiment is rarely, if ever correct.” PPC
Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
(Fed. Cir. 2016) (quotation omitted). Here, if “disposed in the enclosure”
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meant “disposed in the same housing,” this would read out every
embodiment shown in the figures because each of the depicted modules has
its own housing and surfaces separating it from the other modules.
Especially under the broadest reasonable interpretation, we do not believe
that the claim terms “an enclosure” and “disposed in the enclosure” present
one of those rare cases reading out all of the preferred embodiments in favor
of a single non-limiting example. If Appellant desires such a result, he is
free to amend the claims to clarify.
Instead, under the broadest reasonable interpretation, the remaining
possible constructions range from (A) the components need not be disposed
in the same enclosure so long as each component is disposed in any of the
one or more enclosures, to (B) the components need to be disposed in the
same single enclosure, but that enclosure can comprise multiple modules and
each module can have its own housing, as shown in the figures of the
Specification. We need not resolve precisely where within that spectrum the
proper construction lies because we find the prior art teaches the limitations
even under the narrower interpretation of construction (B).
ANALYSIS
Anticipation: Rojas (Claim 1)
Claim 1 recites “an enclosure”; “a video system disposed in the
enclosure“a deterrent dispensing device disposed in the enclosureand
“an actuator module disposed in the enclosure.'1'’
Appellant contends “[t]here are three separate enclosures shown in the
Rojas picture” and no one enclosure has all three components. App. Br. 10.
We disagree with Appellant’s interpretations. A picture of Rojas’ smell
cannon is reproduced below:
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Rojas depicts a base coupled to an arm coupled to a transparent box.
Rojas 1; see also App. Br. 10; Ans. 4 (“a single unit with various moving
parts”). This is no different than the modules “coupled” or “stacked” in
Figure 2 of the Specification. See Spec. 23, 25. That is, Rojas’s base,
arm, and transparent box together reasonably can be interpreted as
comprising “an enclosure,” consistent with the Specification’s usage of that
term.
Thus, for the reasons discussed above, we are not persuaded the
Examiner erred in finding Rojas discloses the “disposed in the enclosure”
limitations under the broadest reasonable interpretation.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
anticipated by Rojas.
Anticipation: Sentry Project (Claim 1)
The Sentry Project discloses a paintball gun mounted on a tripod, a
camera mounted lower on a tripod, and a laptop computer not mounted on
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the tripod but instead connected by wires to components on the tripod. See
Sentry Project 1.
Appellant contends “[a] 11 of the gun, camera and computer are
exposed and viewable” so “[n]one are enclosed in any manner, much less in
the same enclosure.” App. Br. 11.
The Examiner finds “[t]he entire unit as presented in the Sentry
Project is considered a single enclosure that contains a video system, a
deterrent dispensing device, and an actuator module.” Ans. 4.
Here, we agree with Appellant that the Examiner has not sufficiently
explained how the claim limitations are met. For example, to the extent the
gun is the claimed “deterrent dispensing device,” the Examiner has not
explained how the gun is “disposed in the enclosure,” let alone in a “single
enclosure” with the computer. Although “the enclosure” may permit
multiple modules, each with its own housing as shown in Figure 2 of the
Specification and discussed above, the Examiner has not articulated
sufficient findings of fact regarding such modules in the Sentry Project.
Accordingly, we do not sustain the Examiner’s rejection of claim 1 as
anticipated by the Sentry Project.
Obviousness: Latham & Kogut (Claims 1, 3—7, & 21—24)
For Latham, Appellant acknowledges, “Obviously, the detector
system 15 and the deter system 13 can be provided with an individual
separate enclosure essentially as shown in Fig. 3.” App. Br. 15. “Further,
the other devices arguably are already provided with their own separate
enclosures, such as the video surveillance system 202 shown in Fig. 3 of
Latham.” Id. at 13. However, Appellant argues none of Latham’s
embodiments disclose putting all the components in a single enclosure. Id.
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However, we agree with the Examiner’s finding that Latham teaches
“the enclosure [containing the programmable determination device], the
detector device, and the deter device can be mounted on a rigid structure
within the monitored area.” Latham 110; Ans. 6. This is depicted in
figure 3 of Latham. Just as with Rojas, such a mounting of modules on a
rigid structure is no different than the “coupling” or “stacking” of modules
in figure 2 of the Specification. Thus, Latham’s teaching of modules
mounted together is sufficient for teaching the disputed “disposed in the
enclosure” limitations.
We further agree with the Examiner that in view of Latham and
Kogut, a person of ordinary skill in the art at the time of the invention would
have been motivated to put the claimed components in a single enclosure,
including “to prevent weather elements from interfering with the
operations”; “to prevent tampering”; and to provide “a mobile platform”
such as an “exterior robot.” Ans. 5—6 (citing Latham 110; Kogut fig. 6).
“If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability. Lor the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant has not
sufficiently persuaded us against the Examiner’s findings or conclusions,
such as by showing that combining the components into one single enclosure
rather than separate enclosures would be beyond the level of ordinary skill
or yield anything other than a predictable result.
Accordingly, we sustain the Examiner’s obviousness rejection of
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claim 1, and dependent claims 3—7, and 21—24, which Appellant argues are
patentable for similar reasons. App. Br. 14, 6; 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Latham & Kogut (Claim 2)
Dependent claim 2 further recites “a two-way audio device disposed
in the enclosure.” Appellant makes the same “enclosure” argument
discussed above for claim 1. App. Br. 14—15. We are not persuaded for the
same reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of claim 2.
Obviousness: Latham, Kogut, & Lemons (Claims 25—28)
Independent claim 25 recites “a plurality of microphones disposed in
an enclosure.” Appellant makes the same “enclosure” argument discussed
above for claim 1. App. Br. 15—16. We are not persuaded for the same
reasons discussed above. We also agree with the Examiner that Appellant’s
argument contending no motivation to combine the plurality of microphones
taught by Lemons with the intruder recognition via sound of Latham and the
location determination of Kogut, without more, is unsupported. Ans. 6;
App. Br. 16; see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections”). The Examiner has articulated
reasoning with a rational underpinning for the combination (Final Act. 11—
13) and Appellant has not proffered sufficient evidence or argument to
persuade us of Examiner error.
Claim 25 further recites “outputting a deterrent substance from the
deterrent dispensing device in a direction that is based on the location of the
moving object as determined from the captured sounds.”
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Appellant contends that Latham’s “spray emitter 216 appears to have
a fixed location”; “Lemons utilizes sound to determine the presence of an
object, but not a direction”; and “Kogut discloses aiming a non-lethal
weapon in response to video images and motion detection” but not sound.
App. Br. 17. Appellant therefore contends “there is no motivation to
combine” because “Latham and Lemons do not use sound to determine a
direction for an object” and “Kogut relies on video or images.” Id. at 17—18.
However, we agree with the Examiner (Ans. 7) that “one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). Given that Latham and Lemons use sound to detect
the presence of an object, Appellant has not sufficiently addressed the
Examiner’s articulated reasoning as to why a person of ordinary skill in the
art would have been motivated to combine Latham and Lemons with
Kogut’s teaching of aiming a weapon towards a detected moving object,
including “to further identify intruders” (i.e., via sound instead of just video)
and “to better control the targeting of the Latham system.” Final Act. 13,
11. Thus, Appellant’s argument that an ordinarily skilled artisan would not
have been motivated is unpersuasive.
Accordingly, we sustain the Examiner’s rejection of claim 25, and
claims 26—28, which Appellant argues are patentable for similar reasons.
See App. Br. 18; 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Latham, Kogut, Lemons, & Somner (Claims 29, 32, & 34)
Independent claim 29 recites “a plurality of microphones disposed in
an enclosure.” Appellant makes the same “enclosure” argument discussed
above for claims 1 and 25. App. Br. 18. We are not persuaded for the same
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reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of claim 29, and
claims 32 and 34, which Appellant argues are patentable for similar reasons.
See App. Br. 18; 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Latham, Kogut, Lemons, & Sells (Claims 35 & 36)
Dependent claim 35 further recites “selecting a subset of the multiple
nozzles to output a deterrent substance.” Dependent claim 36 recites a
commensurate limitation.
The Examiner relies on Sells for teaching this limitation. Ans. 7—8.
Appellant argues “Sells is directed to a remote marine craft” with “a
propulsion device that has a multiple direction nozzle assembly” in which
“water is discharged from the nozzles to propel the marine craft in an
opposing direction.” App. Br. 19. According to Appellant, “[t]here is no
motivation ... to look to the propulsion device ... of a marine craft of Sells
to modify a security system.” Id.
The Examiner does not directly address Appellant’s argument, instead
simply finding “[i]t would have been obvious to use multiple nozzles with
Latham in order to dispense the necessary amount of deterrent as needed for
the application” (Ans. 7) and “to use multiple directional nozzles with
Latham / Kogut in order to send the deterrent in the proper direction, as
suggested by Sells’ multiple nozzle liquid jet pump.” Final Act. 18.
“Generally, a skilled artisan would only have been motivated to
combine analogous art. Prior art is analogous where either (1) the art is from
the same field of endeavor, regardless of the problem addressed or (2) even
if the reference is not within the same field of endeavor, the reference still is
reasonably pertinent to the particular problem with which the inventor is
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involved.” In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017)
(quotations omitted). Here, we agree with Appellant that the Examiner has
not shown marine craft propulsion and security systems are from the same
field of endeavor, nor how marine craft propulsion would be reasonably
pertinent to the particular problem with which the inventor was involved
(e.g., “a security system that verifies that the source of an alarm signal is an
intruder, and that efficiently and effectively deters the intruder,” let alone
more specifically a security system with “multiple nozzles” in which “a
subset of nozzles . . . that are generally pointed in the direction of the
intruder may be activated to emit pepper spray therefrom”). Spec. 9, 63.
Accordingly, given the record before us, we are constrained to reverse
the Examiner’s rejection of claims 35 and 36.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
(A) claim 1 as anticipated by Rojas; (B) claims 1—7, and 21—24 as obvious
over Latham and Kogut; (C) claims 25—28 as obvious over Latham, Kogut,
and Lemons; and (D) claims 29, 32, and 34 as obvious over Latham, Kogut,
Lemons, and Somner.
We reverse the Examiner’s decision rejecting (i) claim 1 as
anticipated by the Sentry Project and (ii) claims 35 and 36 as obvious over
Latham, Kogut, Lemons, and Sells.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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