Ex Parte MATTERN

Patent Trial and Appeal Board

Jun 12, 2018

13621742 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/621,742
12099 7590
Timothy S. West by
Porter Hedges LLP
P. 0. Box 4078
FILING DATE
09/17/2012
06/14/2018
Houston, TX 77210-4078
FIRST NAMED INVENTOR
Jeremy Keith MATTERN
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.
013026-0200 8139
EXAMINER
NGUYEN,NAMV
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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):
patmail@porterhedges.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY KEITH MATTERN
Appeal 2017-011283
Application 13/621,742
Technology Center 2600
Before BRUCE R. WINSOR, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-17, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
Appeal 2017-011283
Application 13/621,742
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to "a method for controlling a
gate using an Automated Installation Entrance ( AIE) system." Spec. ,r 1.
Claims 1 and 14, which are illustrative of the claimed invention, read as
follows:
1. A method for controlling a gate using an automated
installation entry (AIE) system comprising[:]
receiving identification information identifying an entrant
from an identification card associated with said entrant using an
identification card reader mounted to a first surface of an
enclosure;
receiving biometric data from a biometric data reader
mounted to a first surface of an enclosure;
searching for a profile within a memory that comprises
said identification information and said biometric data; and
granting access to a facility controlled by a gate, by
wirelessly sending an instruction to open said gate, if said profile
indicates that said entrant is authorized, wherein said
authorization is based at least in part on a previously performed
background check.
14. The method of claim 13, wherein said second camera is
mounted within a second surface of said enclosure.
References
The Examiner relies on the following prior art in rejecting the claims:
Schmitt et al. us 5,903,225 May 11, 1999
Weik, III US 6,945,303 B2 Sept. 20, 2005
Bazakos et al. US 7,817,013 B2 Oct. 19, 2010
Kocher US 7,898,385 B2 Mar. 1, 2011
Bongard US 2012/0188054 Al July 26, 2012
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Rejections
Claims 1, 4, 5, 7, 9-12, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kocher and Schmitt.
Final Act. 6-8.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kocher, Schmitt, and Bongard. Final
Act. 9.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kocher, Schmitt, and Bazakos. Final
Act. 10.
Claims 8 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kocher, Schmitt, and Weik. Final
Act. 10-12.
ANALYSIS
Claim 1
Appellant contends the combination of Kocher and Schmitt fails to
teach or suggest "receiving identification information identifying an entrant
from an identification card associated with said entrant using an
identification card reader mounted to a first surface of an enclosure" and
"receiving biometric data from a biometric data reader mounted to a first
surface of an enclosure," as recited in claim 1. App. Br. 11-12. Appellant
argues Kocher fails to teach that the token sensor is mounted within the
same surface as the biometric sensor and, therefore, does not teach or
suggest "an identification card reader mounted to a first surface of an
enclosure" and "a biometric data reader mounted to a first surface of an
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Application 13/621,742
enclosure," as recited in claim 1. App. Br. 11-12. Appellant argues Kocher,
instead, teaches that the token sensor and the biometric sensor are located in
distinct, different geographic locations. App. Br. 12 ( citing Kocher, Fig. 1 ).
We do not find Appellant's arguments persuasive. Claim 1 does not
require that the identification card reader and the biometric data reader be
mounted to the same surface of an enclosure. Instead, claim 1 recites that
the identification card reader is mounted to "a first surface of an enclosure"
and that the biometric data reader is mounted to "a first surface of an
enclosure." (Emphasis added). Because claim 1 recites that the biometric
data reader is mounted to a first surface of an enclosure, rather the first
surface of the enclosure, the claim indicates that the first surface to which
the biometric data reader is mounted can be different from the first surface to
which the identification card reader is mounted. Appellant's arguments,
therefore, are not commensurate with the scope of the claim and,
accordingly, are unpersuasive of error.
Even assuming that the use of "a" and "an" with respect to the surface
of the enclosure to which the biometric data reader mounted is a
typographical error, we still find Appellant's arguments unpersuasive.
Kocher discloses rather than mounting the contactless token on the vehicle,
the operator can be provided a card. Kocher 7:38--41. Kocher discloses:
An alternative embodiment is not mounting the contactless token
on the vehicle rather to provide the operator a card that the
operator would present upon entering a facility from the car or
on foot. The vehicle process would remain the same just the first
step would involve holding the contactless token to present to the
sensor. This embodiment would have application if there are
more individuals in the car. Each individual would hold up his
card and present his biometric and/or personal identification
position.
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Application 13/621,742
Kocher 7:38--46. Because Kocher discloses that when there are multiple
individuals in the car, each individual would hold up his card and present his
"biometric and/or personal identification position" to "the sensor," we agree
with the Examiner that it would have been obvious to one of ordinary skill in
the art at the time of the invention to mount the identification card reader
and the biometric data reader to a first surface of the same enclosure.
Ans. 4.
Appellant further contends the combination of Kocher and Schmitt
fails to teach or suggest "granting access to a facility ... wherein said
authorization is based at least in part on a previously performed background
check," as recited in claim 1. App. Br. 12-13. Appellant argues Kocher
does not teach performing a background check but, instead, "merely
discusses a registration process in which authorization criteria and
identification documents are verified." App. Br. 12. Appellant argues
"[ s ]uch description does NOT specifically call for any background check of
any kind because a background check is not a necessary component of
authorizing a person to enter, nor is it necessary to verify identification."
App. Br. 12.
We do not find Appellant's arguments persuasive. The Examiner
finds, and we agree, Kocher teaches that, during an individual's enrollment
process, biometric data could be checked against a wanted list as a
precautionary check. Ans. 7 (citing Kocher 7:3-5). We agree with the
Examiner that checking biometric data against a wanted list, as taught by
Kocher, teaches or suggests that authorization to access a facility is based at
least in part on a previously performed background check, as required by
claim 1.
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For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1 and claims 2-13, 15, and 17, which are not separately
argued with particularity. See App. Br. 14.
Claim 14
Claim 12 depends from claim 1 and recites "capturing an image of an
entrant with a camera before entry." Claim 13 depends from claim 12 and
recites "capturing an image of a license plate with a second camera before
entry." Claim 14 depends from claim 13 and recites "wherein said second
camera is mounted within a second surface of said enclosure." Appellant
argues the cited references fail to teach or suggest the limitations recited in
claim 14 because "while Weik teaches the use of cameras, the cameras of
Weik are mounted to walls and not a part of any enclosure comprising a
biometric reader or identification card reader, let alone a second side of an
enclosure." App. Br. 13 (citing Weik, Figs. 1, 2).
We do not find Appellant's arguments persuasive. The Examiner
finds, and we agree, Weik teaches that each customer terminal could include
a telephone handset, a numeric or alphanumeric input keypad, a plurality of
function keys, a video display, and a camera. Ans. 7 (citing Weik 4:63---66,
Fig. 3). Weik teaches a second camera is provided on a post attached to an
interior wall of a building. Weik 4:47--48. The second camera "has a view
of the inside portions of the vehicle entrance 4, the vehicle exit 6 and the
access door 8" and "may take one image of the entrance and exit area of the
building, or a series of images over a time period." Weik 4:48-53. The
Examiner finds Weik teaches that the images captured by the first and
second cameras can be used to reveal the license plate of the vehicle. Final
Act. 12 (citing Weik 11:7-16, Figs. 1, 2). We agree with Appellant (App.
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Br. 13) that Weik does not teach that the second camera is mounted within a
surface of the customer terminal ( e.g., an enclosure); however, the Examiner
finds it would have been obvious to mount the second camera within a
second surface of the enclosure (Ans. 8). Appellant does not provide
persuasive argument or evidence that mounting the first or second camera of
Weik within a second surface of the enclosure was "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSRint'l
Co. v. Teleflex Inc., 550 U.S. 398,419 (2007)); see also KSR, 550 U.S. at
420-21 (skilled artisans can "fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton"). Moreover, "the use of a one piece
construction instead of the structure disclosed in [ the prior art] would be
merely a matter of obvious engineering choice." MPEP § 2144.04 (quoting
In re Larson, 340 F.2d 965,968 (CCPA 1965)).
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 14.
Claim 16
Claim 15 depends from claim 1 and recites "capturing an image of a
license plate with a camera before entry." Claim 16 depends from claim 15
and recites "wherein granting access triggers capturing said image."
Appellant contends the combination of Kocher, Schmitt, and Weik fails to
teach or suggest the limitations recited in claim 16. App. Br. 13-14.
Appellant argues "while Weik teaches the use of cameras, the capturing of
images by those cameras is not triggered by an entrant being granted
access," as required by claim 16. App. Br. 13.
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The Examiner finds Weik discloses activating the first and second
cameras and that by activating the cameras, it is possible to store video
images of the vehicle entrance and exit area if the unique ID is found in the
record files. Ans. 8 (citing Weik 10:41-52, Figs. 5-8). The Examiner
further finds Weik teaches "[i]f a vehicle has normally entered the parking
area, as in step S314, the system can flag (i.e. trigger) the video images (i.e.
wherein granting access triggers capturing said image)." Ans. 8-9.
Although Weik teaches that the images can be used to reveal the
license plate of the vehicle (Weik 11: 13-16), the Examiner's findings are
insufficient to show that Weik teaches or suggests capturing the images used
to reveal the license plate of the vehicle prior to the vehicle entering the
parking area and that granting the vehicle access to the parking area triggers
the capturing of those images. As such, we are constrained by the record to
not sustain the Examiner's rejection of claim 16.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 4I.50(b)
Claim 14 is rejected on a new ground of rejection under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly
claim the subject matter which the inventor regards as his invention.
"It is of utmost importance that patents issue with definite claims that
clearly and precisely inform persons skilled in the art of the boundaries of
protected subject matter." MPEP § 2173. During prosecution "[a] claim is
indefinite when it contains words or phrases whose meaning is unclear."
MPEP § 2173.05(e). During prosecution, language in a claim is unclear if it
is "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention," In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it "is amenable to two or more plausible claim
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constructions," Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
As discussed supra, claim 1 recites that the identification card reader
is mounted to "a first surface of an enclosure" and that the biometric data
reader is mounted to "a first surface of an enclosure." (Emphasis added).
Claim 14, which indirectly depends from claim 1, recites "wherein said
second camera is mounted within a second surface of said enclosure."
(Emphasis added). Because claim 1 recites two instances of an enclosure, it
is unclear whether the second camera is mounted within a second surface of
the enclosure to which the identification card reader is mounted or a second
surface of the enclosure to which the biometric data reader is mounted. As
such, claim 14 "is amenable to two or more plausible claim constructions"
and, therefore, indefinite under 35 U.S.C. § 112, second paragraph.
Miyazaki, 89 USPQ2d at 1211.
DECISION
We affirm the Examiner's rejection of claims 1-15 and 17 under 35
U.S.C. § 103(a).
We reverse the Examiner's rejection of claim 16 under 35 U.S.C.
§ 103(a).
We enter a new ground of rejection for claim 14 under 35 U.S.C.
§ 112, second paragraph.
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
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Application 13/621,742
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 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 that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 4I.50(b)(l), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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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 ). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2010).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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