Ex Parte Serra et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10809958 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BILL SERRA, SALIL PRADHAN, and ANTONI N. DRUDIS
____________________

Appeal 2009-004051
Application 10/809,9581
Technology Center 2100
____________________

Decided: April 6, 2010
____________________

Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 25, 2004. The real party in interest is Hewlett-
Packard Development Co., L.P. (App. Br. 4.)
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STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 1-12 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellants’ Invention
Appellants invented a method and monitoring system for monitoring a
location; e.g., a security system. The system includes multiple sensor
elements and cameras, a display unit for displaying a representation of a
network of sensor elements and a video stream from one of the cameras, a
navigation unit for navigating the network of displayed sensor elements, and
a processing unit for selecting one of the cameras as the video stream source
based on the navigation position in the network of sensor elements. (Spec.
1, 2.)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A monitoring system comprising:
a plurality of sensor elements for distribution at a
location,
a plurality of cameras for capturing video data of the
location,

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed December 3, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed January 29, 2008.
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a display unit for displaying a graphical representation of
a network of the sensor elements throughout the location and a
video stream from any one of the cameras,
a navigation unit for navigating through the network of
sensor elements displayed by the display unit, and
a processing unit for selecting one of the cameras as the
source of the video stream based on a current navigation
position in the network of sensor elements.

References
The Examiner relies on the following references as evidence of
unpatentability:
Crain US 4,962,473 Oct. 9, 1990

Jacoby US 5,768,552 Jun. 16, 1998

Monroe US 2002/0097322 A1 Jul. 25, 2002

Rejections on Appeal
The Examiner rejects claims 9-12 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Examiner rejects claims 1, 2, 4-6, 8-10, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Crain and Monroe.
The Examiner rejects claims 3, 7, and 11 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Crain, Monroe, and Jacoby.

ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows.
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1. Does the Examiner err in rejecting the claims under
35 U.S.C. § 101? The issue turns on whether the claimed subject matter is
statutory subject matter.
2. Does the Examiner err in finding the combination of the Crain
and Monroe references collectively teaches or suggests “navigating through
the network of sensor elements displayed by the display unit, and . . .
selecting one of the cameras as the source of the video stream based on a
current navigation position in the network of sensor elements” as recited in
Appellants’ claim 1?
3. Does the Examiner err in finding the combination of the Crain,
Monroe, and Jacoby references collectively teaches or suggests “navigating
through a displayed network of sensor elements, selecting one of the
cameras at the location as the source of a video stream based on a current
navigation position in the network of sensor elements, and displaying the
video stream from the selected camera” (Br. at 17)?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification defines a computer readable medium:
This computer readable media may comprise, for example,
RAM contained within the system. Alternatively, the
instructions may be contained in another computer readable
media (e.g. an image-processing module) and directly or
indirectly accessed by the computer system. Whether contained
in the computer system or elsewhere, the instructions may be
stored on a variety of machine readable storage media, such as a
Direct Access Storage Device (DASD) (e.g., a conventional
"hard drive" or a RAID array), magnetic data storage diskette,
magnetic tape, electronic non-volatile memory, an optical
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storage device (for example, CD ROM, WORM, DVD,), or
other suitable computer readable media including transmission
media such as digital, analog, and wireless communication
links.
(Spec. 6.)

Crain, Monroe, and Jacoby References
2. We adopt the Examiner’s findings regarding the Crain and
Monroe references (Ans. 4-7 and 9-12), as well as the Crain, Monroe, and
Jacoby references (Ans. 7-8 and 12-13) as our own.

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought – the so-called “prima
facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is
on the USPTO “to produce the factual basis for its rejection of an application
under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)).
The Board of Patent Appeals and Interferences’ (Board’s) role on
appeal is to, “review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b) (2008). An appellant has the opportunity on
appeal to the Board to demonstrate error in the Examiner’s position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
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applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998), overruled in part on other grounds, KSR, 550
U.S. at 422).
The Board panel then reviews the rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
produced thereon. See Oetiker, 977 F.2d at 1445 (“In reviewing the
examiner’s decision on appeal, the Board must necessarily weigh all of the
evidence and argument.”) (emphasis added); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (appeal brief must include “[t]he contentions of appellant
with respect to each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on”). Specifically, the
Board reviews the particular finding(s) contested by an appellant anew in
light of all the evidence and argument on that issue.

Statutory Subject Matter
Our reviewing court has recently held that transitory, propagating
signals, such as carrier waves, are not within any of the four statutory
categories (process, machine, manufacture or composition of matter).
Therefore, a claim directed to computer instructions embodied in a signal is
not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).

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Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). 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, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For 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.
Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
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Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact
that Leapfrog had presented no evidence that the proposed modification was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit recently found that adapting existing
electronic processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
2008) (quoting KSR, 550 U.S. at 421).

ANALYSIS
Issue 1: The Rejection of Claims 9-12 under 35 U.S.C. § 101
Appellants contend that:
Claims 9-12 recite a computer readable medium[,] . . . . [c]laims 9-12
do not recite the limitation that the computer readable medium
includes ‘transmission media such as digital, analog, and wireless
communication links[,]’ . . . [the] Examiner has inappropriately
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imported an alleged limitation of an embodiment of the invention
described in the specification into an interpretation of the claims at
issue.

(Br. 7.) The Examiner finds that Appellants’ claim 1 recites a computer
readable medium, defined on page 6 of Appellants’ Specification, which
includes “electromagnetic waves or signals” and “constitutes nonstatutory
matter.” (Ans. 3.) Accordingly, we decide the question of whether the
claimed subject matter is statutory.
Appellants’ claim 9 recites a “computer readable medium.” We agree
with the Examiner that Appellants’ computer readable storage medium may
include non-statutory subject matter – i.e., signals. Appellants’ Specification
describes such computer readable media as including “transmission media
such as digital, analog, and wireless communication links.” (FF 1.) We find
that such transmission media implicate a carrier wave or a signal modulated
by a carrier over a transmission medium. Therefore, claims 9-12 encompass
the use of a computer data signal embodied in a carrier wave to store,
transfer, combine, compare, or manipulate information. A computer data
signal embodied in a carrier wave is a transitory, propagating signal not
within any of the four statutory categories and, therefore, non-statutory. See
In re Nuijten, 500 F.3d at 1357. It follows that claims 9-12 are directed to
non-statutory subject matter.

Issue 2: Rejection of Claims 1, 2, 4-6, 8-10, and 12
under 35 U.S.C. § 103(a)
Appellants argue the patentability of claims 1, 2, 4-6, 8-10, and 12 as
a group. (Br. 10-13.) We select independent claim 1 as the representative
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claim. We therefore treat claims 2, 4-6, 8-10, and 12 as standing or falling
with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants contend that the combination of the Crain and Monroe
references collectively does not “navigating through a displayed network of
sensor elements, selecting one of the cameras at the location as the source of
a video stream based on a current navigation position in the network of
sensor elements, and displaying the video stream from the selected camera”
(Br. at 11, 12). The Examiner finds that the prior art teaches each feature of
Appellants’ claim 1 and maintains that the claim is properly rejected. (FF
2.) Specifically, the Examiner finds that Crain teaches “a navigation unit
for navigating through the network of sensor elements displayed by the
display unit (in column 11 lines 24-28 and in column 17 lines 46-51 in view
of figure 11), and a processing unit for selecting one of the cameras as
the source of the video stream (in column 6 lines 50-57[)].” (Ans. 4-5; see
also Ans. 9-12.) The Examiner also finds that Monroe teaches “selecting
one of the cameras as the source of the video stream based on a current
navigation position in the network of sensor elements.” (Ans. 5; see also
Ans. 9-12.). Accordingly, we decide the question of whether the Examiner
erred in finding the combination of the Crain and Monroe references
collectively teaches or suggests the disputed limitation as recited in
Appellants’ claim 1.
After reviewing the record on appeal, we agree with the Examiner’s
findings and find the Crain and Monroe references collectively teach the
disputed limitation. We begin our analysis by construing Appellants’ claim
1. We determine the scope of the claims in patent applications not solely
based on the claim language, but upon giving claims “their broadest
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reasonable interpretation consistent with the [S]pecification” and “in light of
the [S]pecification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). Appellants’ claim 1 recites a limitation directed to a
navigation unit for navigating through the network of sensor elements
displayed by the display unit. We broadly but reasonably construe this
limitation to simply mean a unit (hardware, software or combination thereof)
for guiding a user though (navigating) the network (group) of displayed
sensor elements. Appellants’ claim 1 also recites a limitation directed to a
processing unit for selecting one of the cameras as the source of the video
stream based on a current navigation position in the network of sensor
elements. We broadly but reasonably construe this limitation to simply
mean a unit (hardware, software or combination thereof) for selecting one of
the cameras based on a currently selected sensor of a group of sensors
displayed on a location map displaying the group of sensors (a current
navigation position in the network of sensor elements).
Appellants do not dispute that Crain teaches a security (emergency
action) system including multiple sensor elements about a location, multiple
cameras capturing video data of the location, a display unit that displays
information concerning the sensor elements (displaying a graphical
representation of a network of the sensor elements) and a video stream from
at least one of the cameras. As explained by the Examiner, Crain discloses a
user interface computer with a display that allows a user to scroll through a
list of all sensors at a location, review information about the sensors, and
control any of the sensors. (Ans. 4-5, 9-12; Crain, col. 11, ll. 24-28; Crain,
col. 17, ll. 46-51.) We find that Appellants’ navigating unit for guiding a
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user though the displayed group of sensor elements reads on Crain’s user
interface computer displaying a scrollable list of all the sensors.
As explained by the Examiner, Crain discloses environment and
security processor (ESP) that automatically controls video switching (Ans.
4-5, 9-12; Crain, col. 6, ll. 9-57). Monroe describes selecting one of the
camera video feeds based on the moving a cursor to and clicking on a sensor
or camera icon displayed on a location map (Ans. 5, 9-12; Monroe, ¶¶
[0019], [0021]). Thus, we find that Appellants’ processing unit for selecting
one of the cameras based on a currently selected sensor of a group of sensors
reads on Crain’s ESP combined with Monroe’s selection of a camera video
feed based on selecting a sensor icon displayed on a location map.
We are not persuaded by Appellants’ contrary arguments that neither
Crain, nor Monroe individually teach the disputed feature. (Br. 11, 12.) See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually”).
We find that combining Crain’s ESP for automatically switching video feeds
combined with Monroe’s selection of a camera video feed based on selecting
a sensor icon displayed on a location map is tantamount to the predictable
use of prior art elements according to their established functions – an
obvious improvement. See KSR, 550 U.S. at 417. We agree with the
Examiner that it would have been obvious to one of skill in the art at the
time of the invention to combine Crain’s ESP with Monroe’s sensor
selection technique.
Appellants have provided no persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. (“[I]f a technique has been used to improve one
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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.”); Muniauction, 532
F.3d at 1327; Leapfrog, 485 F.3d at 1162.
Moreover, the Examiner provides detailed findings and conclusions
with respect to the Crain and Monroe references (Ans. 4-5, 9-12.)
Appellants did not file a Reply Brief, nor did Appellants provide any
persuasive evidence supporting the assertions of alleged error in the
Examiner’s position. Accordingly, Appellants have not have not persuaded
us to find error in the Examiner’s obviousness rejection of claims 1, 2, 4-6,
8-10, and 12.

Issue 3: Rejection of Claims 3, 7, and 11
under 35 U.S.C. § 103(a)
Appellants do not separately argue dependent claims 3, 7, and 11.
They instead rely on their previous arguments made with respect to
independent claim 1. (See Br. 13-18 and compare Br. 11-12.) We address
only those arguments that Appellants present in the Brief. Arguments that
Appellants could have made but chose not to make in the Brief are waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
As we previously explained with respect to claim 1, supra, we find
Appellants’ arguments unpersuasive with respect to the obviousness
rejection of claim 1. Accordingly, we affirm the Examiner’s obviousness
rejection of claims 3, 7, and 11.

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CONCLUSION OF LAW
On the record before us, we find the Examiner did not err in rejecting
claims 9-12 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We also find Appellants have not established that the Examiner
erred in finding the combination of the Crain and Monroe references
collectively teaches or suggests “navigating through the network of sensor
elements displayed by the display unit, and . . . selecting one of the cameras
as the source of the video stream based on a current navigation position in
the network of sensor elements” as recited in Appellants’ claim 1. We
further find Appellants have not established that the Examiner erred in
finding the combination of the Crain, Monroe, and Jacoby references
collectively teaches or suggests navigating through a displayed network of
sensor elements, selecting one of the cameras at the location as the source of
a video stream based on a current navigation position in the network of
sensor elements, and displaying the video stream from the selected camera.

DECISION
We affirm the Examiner’s rejection of claims 9-12 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1-12 under
35 U.S.C. § 103(a).
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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)(1)(iv).

AFFIRMED

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