Ex Parte Petricoin

Patent Trial and Appeal Board

Jun 11, 2018

14606406 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/606,406 01/27/2015
34044 7590 06/13/2018
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Dennis M. Petricoin Jr.
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.
081276-9818-USOO 5850
EXAMINER
SYED, NAB IL H
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS M. PETRICOIN JR.
Appeal 2017-011634
Application 14/606,406
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-3, 5, 6, 8, 10, 12, 13, 15-18, and 20,
which constitute all the claims pending in this application. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Robert Bosch GMBH.
App. Br. 2. Robert Bosch GMBH is the Applicant for the instant patent
application. See Bib. Data Sheet.
2 Appellant amended the claims and canceled claims 9 and 11 in a
"Respon[ s ]e to Office Action" (After Final Amend. 2---6) which was entered
by the Examiner (Adv. Act. 1) after the Final Office Action.
Appeal 2017-011634
Application 14/606,406
STATEMENT OF THE CASE
Appellant's disclosed "invention relates to the use of a wearable
article in the control of a smart building system." Spec. ,r 1. Claim 1, which
is illustrative, reads as follows:
1. A method for operating a building management system to
provide control of a building in response to sensing of a wearable
article for a user, comprising:
wirelessly sensing a wearable article;
identifying a unique user wearing the wearable article;
determining a location of the wearable article inside or
outside of the building using at least one selected from a first
group consisting of a Wi-Fi data connection, a Bluetooth data
connection, an Android data connection, and an iOS data
connection;
for the unique user approaching an entrance of the building
or located within the building, based on a user profile for the
unique user and the location of the wearable article, controlling
at least one selected from a second group consisting of a building
access control system, a building alarm system, one or more
lights of the building, and temperature values of one or more
areas of the building;
in response to the unique user issuing a request for a
location of a second wearable article of a second unique user,
providing the request to additional building management
systems;
identifying whether the second wearable article is located
in or near any of the additional building management systems;
informing the unique user of the location of the second
wearable article that is located in or near one of the additional
building management systems; and
controlling appliances upon entering and exiting areas by
the wearable article of the identified unique user within the
building based on the user profile, the location of an identified
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unique user, and voice commands from the identified unique
user.
App. Br. 21 (Claims App'x).
Claims 18 and 20 stand rejected under 35 U.S.C. § 103 3 as being
unpatentable over Fein (US 2007/0173978 Al, published July 26, 2007),
Scalisi (US 2015/0027178 Al, published Jan. 29, 2015). See Final Act. 3--4.
Claims 1, 3, 5, 6, 8, 10, and 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Fein, Fadell (US 2015/0145643 Al, published
May 28, 2015), Scalisi, and Shim (US 2014/0167929 Al, published June 19,
2014). 4 See Final Act. 4--9.
Claims 2 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fein, Fadell, Scalisi, Shim, and Menzel (US
2014/0253285 Al, published Sept. 11, 2014). See Final Act. 8-10.
Claims 13, 16, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fein, Fadell, Scalisi, and Menzel. See Final Act. 8.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Mar. 22, 2017; "Reply Br." filed Sept. 19, 2017) and the Response
to Office Action ("After Final Amend." filed Jan. 23, 2017) for the
Appellant's positions; the Advisory Action ("Adv. Act." mailed Feb. 16,
3 All rejections are under the provisions of 35 U.S.C. in effect after the
effective date of the Leahy-Smith America Invents Act of 2011 (AIA). See,
e.g., Final Act. 2.
4 After the Final Office Action, the subject matter of claims 9 and 11 was
incorporated into claim 1. See After Final Amend. 2. Accordingly, we treat
the Examiner's explanation of the rejection of claim 1 (Final Act. 5-7) as
incorporating the explanations of the rejections of claims 9 (id. at 7) and 11
(id. at 9), and we treat the rejection of claim 1 and all claims dependent from
claim 1 as being based, in pertinent part, on Shim, in addition to the
references cited against those claims in the Final Office Action.
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2017), Final Office Action ("Final Act." mailed Nov. 22, 2016), and
Examiner's Answer ("Ans." mailed July 19, 2017) for the Examiner's
reasoning, findings, and conclusions; and the Specification ("Spec." filed
Jan. 27, 2015). Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv) (2016).
ANALYSIS
CLAIMS 1-3, 5, 6, 8, AND 10
Scalisi with Fein
The Examiner finds that Fein discloses many recited elements of
claim 1 including, among other things, a method for operating a building
management system comprising determining a location of a wearable article
(identification device 413) inside or outside a building. Final Act. 5 (citing
Fein ,r,r 46-48); Ans. 4--5. The Examiner also finds Scalisi teaches
determining the location using at least one selected from a first group
consisting of a WI-FIâ„¢ data connection, a BLUETOOTHâ„¢ data
connection, an ANDROIDâ„¢ data connection, or an IOSâ„¢ data connection.
Ans. 4--5 (citing Scalisi ,r,r 76-77, 114, 187). The Examiner concludes it
would have been obvious to one having ordinary skill in the art "to combine
the feature[s] of Fein and Scalisi to include the functionality of detecting a
location of a user using a wearable article using Wi-Fi or Bluetooth or RFID
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in order to provide different techniques of detecting users of the home
automation system." Id. at 5.
Appellant asserts Fein's identification device, located on a wearable
item, emits radio-frequency identification (RFID) signals, App. Br. 13, and
is only capable of short range wireless communication directly with a
control unit, id. at 14 (citing Fein Figs. 4--7). Appellant further asserts
Scalisi's watch is capable of both short range wireless communication with a
security system housing and long range wireless communication with a
server. Id. Appellant argues "[t]he Fein system does not require such
additional features to operate and control environmental conditions. Thus,
there is no motivation to provide the additional unnecessary electronics and
features of Scalisi for the arrangement of Fein" absent Appellant's
Specification. Id.; see also Reply Br. 2.
We are not persuaded of error. That Scalisi may teach additional
features not required by claim 1 is of no consequence because
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one reference
can be physically inserted into the device shown in the
other. The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted).
"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), especially if the
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combination would not be "uniquely challenging or difficult for one of
ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). "[W]hen
the question is whether a patent claiming the combination of elements of
prior art is obvious," the answer depends on "whether the improvement is
more than the predictable use of prior art elements according to their
established functions." KSR, 550 U.S. at 417 (citing Anderson's-Black
Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969); Sakraida v. Ag
Pro, Inc., 425 U.S. 273 (1976)).
On this record, we see no reason why combining Fein's identification
device with Scalisi' s watch would not at least contribute to providing
different techniques of detecting users as the Examiner proposes-proposed
enhancements to Fein that predictably use prior art elements according to
their established functions to yield a predictable result. See KSR, 550 U.S. at
417. One of ordinary skill in the art would learn from Scalisi that various
forms of near field communication are interchangeable. See Scalisi ,r 77.
Therefore, to the extent Appellant contends that the Examiner's rationale to
combine the references is based solely on teachings gleaned from
Appellant's disclosure, we disagree. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971).
Nor do we find Appellant's argument that Fein or Fadell do not teach
or suggest determining a wearable article's location using at least one
selected from the first group of data connections, App. Br. 13-14, to be
germane to the Examiner's findings in this regard, which are not based on
Fein or Fadell, individually, but rather on Fein and Scalisi collectively, as
discussed above. It is well established that "one cannot show non-
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obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." Keller, 642 F.2d at
426.
Fad ell with Fein
The Examiner acknowledges that Fein does not identify whether a
second wearable article is located in or near any of additional building
management systems, and inform the unique user of the location of the
second wearable article that is located in or near one of the additional
building management systems, but cites Fadell for teaching this feature.
Final Act. 6 (citing Fadell i-fi-f 163-164, 167, 171). The Examiner concludes
"it would have been obvious to one having ordinary skill in the art at the
time the invention was filed to modify the system of Fein to include the
functionality of locating users as taught by Fadell in order to increase
security of residents." Final Act. 6.
Appellant argues "there is no motivation, absent Appellant's
specification, to provide the additional features of Fadell for the system of
Fein" because Fein does not disclose or suggest a system for communication
in the manner of Fadell that communicates with neighborhood smartphones
to obtain a child's location. App. Br. 15.
We are not persuaded of error. On this record, we see no reason why
combining Fein with Fadell would not at least contribute to increasing
resident security as the Examiner proposes-proposed enhancements to the
combination of Fein and Fadell that predictably use prior art elements
according to their established functions to yield a predictable result. See
KSR, 550 U.S. at 417. Fadell teaches the desirability of using a home
security to system to monitor the location of a child. Fadell ,r,r 120, 163,
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16 7. Therefore, to the extent Appellant contends that the Examiner's
rationale to combine the references is based solely on teachings gleaned
from Appellant's disclosure, we disagree. See McLaughlin, 443 F.2d at
1395.
Shim with Fein
The Examiner finds Fein's control unit controls appliances upon
entering and exiting areas by the identified unique user's wearable article
within a building based on the user profile and the location of an identified
unique user. Final Act. 7 (citing Fein ,r,r 47-50, 59---63). The Examiner
further finds that, although Fein's control unit comprises a microphone for
sensing a user's voice command, Fein's identification device located on a
wearable item does not comprise a microphone for sensing the user's voice
command. Id. at 9. The Examiner, however, relies on Shim for teaching a
microphone on a wearable article in concluding that the claim would have
been obvious. Id.
Appellant argues Shim's mobile station is not a wearable article.
App. Br. 14--15. We are not persuaded of error. Appellant's Specification
does not define the "wearable article," but mentions in one embodiment the
wearable article is a "smart wristwatch," Spec. ,r 35, and in another
embodiment the wearable article is glasses, id. ,r 36. Although these
descriptions inform our construction of the term "wearable article," they do
not limit our interpretation. We, therefore, construe the term "article" in
accordance with its plain meaning, namely "a member of a class of things;
esp : an item of goods." MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 65
(n. def. 4) (10th ed. 1993). The term "wearable" is defined as "capable of
being worn," id. at 1338 (adj. def.); "worn," in tum, means "past part of
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WEAR," id. at 1365; and "wear," in tum, encompasses "to carry on a
person," id. at 1338 (vb. def. 2b ). Thus, the broadest reasonable
interpretation of "wearable article" encompasses a member of a class of
things capable of being carried on a person.
Shim's mobile station "may be a Personal Digital Assistant (PDA), a
feature phone, [or] a mobile phone." Shim ,r 63. Shim's mobile station is a
member of a class of things capable of being carried on a person-a
wearable article. Moreover, Shim's mobile station includes a microphone.
Id. ,I 73; Fig. 4.
But even if we were to agree that Shim's mobile station is not a
wearable article, which we do not, the Examiner finds, and Appellant
admits, Fein's identification device is located in a wearable item. Final
Act. 5; App. Br. 13. We agree. Therefore, Appellant's argument that Shim
does not disclose a wearable article with a microphone does not show non-
obviousness where, as here, the Examiner's rejection relies on the cited
references' collective teachings including Fein and Shim. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Conclusion
Appellant does not persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejections of (1) independent claim 1; and
(2) claims 2, 3, 5, 6, 8, and 10, which variously depend, directly or
indirectly, from claim 1, and were not separately argued with particularity.
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CLAIM 12
We sustain the Examiner's obviousness rejection of claim 12 (Final
Act. 9), which recites, in part, a wearable article comprising a microphone
for sensing voice commands.
For the reasons discussed above, Appellant's contention that "Shim
does not disclose a wearable article, much less a wearable article with a
microphone," (App. Br. 16) is unpersuasive. Accordingly, Appellant does
not persuade us of error in the rejection of claim 12, and we sustain the
rejection of claim 12.
CLAIMS 13, 16, AND 17
We sustain the Examiner's obviousness rejection of independent
claim 13. Final Act. 8. Appellant's argument that Fein, Fadell, or Menzel
do not teach a sensing unit that wirelessly obtains information from a
wearable item using at least one selected from the first group of data
connections, App. Br. 18, is not germane to the Examiner's findings in this
regard, which are based on Fein, Fadell, Menzel, and Scalisi collectively for
the reasons discussed above. See Merck, 800 F.2d at 1097.
Appellant's argument that there is no motivation, absent Appellant's
Specification, to combine Scalisi's watch and Fein's identification device
because "[t]he Fein and Fadell system does not require such additional
features to operate and control environmental conditions" (App. Br. 18) is
unavailing for the reasons discussed above.
Thus, Appellant does not persuade us of error in the rejection of claim
13. Accordingly, we sustain the rejections of (1) independent claim 13; and
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(2) claims 16 and 1 7, which depend directly from claim 13 and were not
separately argued with particularity.
CLAIM 15
We sustain the Examiner's obviousness rejection of claim 15 (Final
Act. 9--10), which recites, in part, a building management controller is
configured to (1) activate one or more lights when a unique user enters into
an area of a building, and (2) deactivate one or more lights when the unique
user is not located within the area of the building.
Appellant's argument that Shim fails to disclose a wearable article is
unpersuasive. App. Br. 19. Notably, this argument is not germane to the
limited purpose for which Shim was cited, namely for teaching the building
management controller's function as recited in claim 15. In particular, the
Examiner finds "Shim discloses that the home gateway activates a lights
when an identifier user enters the home and tum off the lights of the rooms
when the user leaves the home tum off the lights of the rooms." Final
Act. 10 ( citing Shim ,r 107). The Examiner explains it would have been
obvious to one having ordinary skill in the art "to modify the system of Fein
to include the functionality of voice commands via the mobile device as
taught by Shim in order to allow the user to automatically control lights."
Id.
Appellant's argument that "[t]here is no motivation to look to the
smart phone of Shim, which includes the light control feature, to modify the
arrangement of Fein that is directed to RFID devices provided with a
wearable article" is unpersuasive. App. Br. 19. We find the Examiner has
set forth an articulated reasoning with some rational underpinning to
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combine Fein with Shim's home gateway. We agree with the Examiner's
reasonable conclusion that such a combination would at least contribute to
allowing a user to automatically control lights. As such, it would be a
combination of familiar elements according to known methods that does no
more than yield predictable results, see KSR, 550 US. at 416, that can be
implemented by a person of ordinary skill, see id. at 41 7.
Accordingly, Appellant does not persuade us of error in the rejection
of claim 15, and we sustain the rejection of claim 15.
CLAIMS 18 AND 20
We sustain the Examiner's obviousness rejection of independent
claim 18, Final Act. 3--4, which recites, in part, "at least one wearable article
sensing system ... including a remote tower for receiving information from
a wearable article and transmitting information to the wearable article,
wherein the remote tower is located outside of a building."
Appellant asserts Fein's identification device, or RFID device, is a
short range device that is not capable of (1) communicating with a remote
tower that is a significant distance away from the identification device, or (2)
being located outside of a building, except for an entrance thereof. App. Br.
11 (citing Fein ,r,r 44, 46). Appellant further argues there is no motivation,
absent Appellant's Specification, to provide Scalisi's long range
communication with Fein' s functional arrangement which does not require
such additional features to operate. Id. at 11-12.
We are not persuaded of error for the reasons stated above. Contrary
to Appellant's argument, a device that combines Fein's identification device
and Scalisi's watch does no more than the two devices do separately. The
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devices perform the same function when combined as they do in the prior
art. See Sakraida, 425 U.S. at 282; Anderson's-Black Rock, 396 U.S. at 90.
Thus, one of ordinary skill in the art would have been able to integrate
Fein's identification device and Scalisi's watch using methods known in the
art at the time the invention was made. See Leapfrog Enters., 485 F.3d at
1162. Moreover, we find the Examiner has articulated reasoning with some
rational underpinning to combine Fein with Scalisi's long range
communication. Appellant does not persuasively explain why Scalisi' s
teachings would not at least contribute to allowing a user to remotely control
a security system as the Examiner proposes. Final Act. 4. And to the extent
Appellant contends that the Examiner's rationale to combine the references
is based solely on teachings gleaned from Appellant's disclosure, we
disagree. See McLaughlin, 443 F.2d at 1395.
We note that communication with a remote tower outside a building is
implicit in Scalisi's teaching of communicating wirelessly (see Scalisi, Fig.
1 (item 230)) with a remote server 206 located at a data center (id. ,r 83).
Thus, Appellant does not persuade us of error in the rejection of claim
18. Accordingly, we sustain the rejections of (1) independent claim 18; and
(2) claim 20, which depends directly from claim 18 and was not separately
argued with particularity.
DECISION
The Examiner's decision to reject claims 1-3, 5, 6, 8, 10, 12, 13, 15-
18, and 20 under 35 U.S.C. § 103 is affirmed.
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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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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