Ex Parte Subbian et al

Patent Trial and Appeal Board

Apr 6, 2017

12787524 (P.T.A.B. Apr. 6, 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.
12/787,524 05/26/2010 Deepakumar Subbian H0025328 4874/110860 4767
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
DORSEY, RENEE
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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):
patentservices-us @ honey well, com
amy. hammer @ hu schblackwell .com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEPAKUMAR SUBBIAN,
MAYUR S. SALGAR, and MARINE DRIVE
Appeal 2015-004261
Application 12/787,5241
Technology Center 2600
Before JASON V. MORGAN, SHARON FENICK, and
AARON W. MOORE Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3—10, 12—19, and 21—23. (Appeal Br. 2.) Claims 2,
11, and 20 are cancelled. {Id. at 15, 17, 19.) We have jurisdiction under 35
U.S.C. § 6(b)(1).
We affirm.
1 Appellants identify Honeywell International, Inc., as the real party in
interest. (Appeal Br. 2.)
Appeal 2015-004261
Application 12/787,524
Invention
Appellants’ invention relates to time-based review of alarm incidents,
including providing a floor map plan with representations of alarms which
were activated during a past alarm incident. (Spec., Abstract.)
Exemplary Claim
Claim 1, reproduced below, is exemplary:
1. A method comprising:
providing, on a user interface, a floor plan map of a
monitored area;
providing, on the user interface, a list of past alarm
incidents that occurred in the monitored area including at least a
portion of yesterday's alarm incidents;
receiving, via the user interface, input to select at least one
past alarm incident from the list of past alarm incidents;
a processor determining a time corresponding to when the
selected at least one past alarm incident was active;
the processor determining other alarms in the monitored
area that were active during the determined time;
the processor identifying, on the floor plan map provided
on the user interface, a location of the selected at least one past
alarm incident; and
the processor identifying, on the floor plan map provided
on the user interface, respective locations of the other alarms that
were active during the determined time.
Rejections
The Examiner rejects claims 1, 3—10, and 12—19 under pre-AlA 35
U.S.C. § 103(a) as unpatentable over Roe (US 6,529,137 Bl; iss. Mar. 4,
2003) and Dawson (US 2002/0154743 Al; pub. Oct. 24, 2002). (Final
Action 3—8).
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Appeal 2015-004261
Application 12/787,524
The Examiner rejects claims 21—23 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Roe, Hoveida (US 7,961,087 B2; iss. June 14, 2011),
and Dawson. (Final Action 8—10).
Issues
I. Did the Examiner err finding that claim 1 is unpatentable over
the combination of Roe and Dawson?
II. Did the Examiner err in finding that claim 21 is unpatentable
over the combination of Roe and Dawson?
ANALYSIS
(I) Obviousness Rejection — Claim 1
The Examiner rejects Claim 1 as unpatentable over Roe and Dawson.
(Final Action 3—5.) With respect to this rejection, Appellants argue “Roe . . .
does not allow a user to select an alarm incident in the past for the purposes
of forensic analysis.” (Appeal Br. 8.) However, we agree with the
Examiner that Roe teaches or suggests providing past alarm incidents for
selection, including in its Fig. 5, which includes a display of active alarms
and an indication of the availability of historical information. (Final Action
3^4; Answer 3—4.)
Apart from the statement quoted, Appellants’ obviousness arguments
are general and conclusory. Appellants argue “[i]n general” that the cited art
fails to disclose the steps of the claim. (Appeal Br. 9.) Appellants argue that
“[i]n general, a prima facie case of obviousness has not been established.”
{Id. at 10—11.) Appellants cite case law, in general, regarding obviousness,
combination of prior art, and hindsight reconstruction. {Id. at 11—12.)
Appellant then concludes “that it does not require a close examination of the
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Application 12/787,524
record to determine that the Examiner has failed to meet the burden of
establishing a prima facie case of obviousness.” {Id. at 12.) However, these
statements do not rise to the level of a substantive argument. 37 C.F.R.
§ 41.37(c)(iv) (2014); see also In reLovin, 652 F.3d at 1349, 1357 (Fed. Cir.
2011).
Appellants have the burden 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 applicant can overcome a
rejection [under § 103] 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))). They have not met this burden.
Appellants argue further that, as the prior art and combinations
asserted “do not recognize the problem solved by the claimed invention,”
there would be no reason to combine the references. (Appeal Br. 12—13.)
Appellants do not address the Examiner’s stated reason to combine Roe and
Dawson (“for the purpose of evaluating performance and responses of
security”) (Final Action 5). Even were this not the problem solved by
Appellants, “[i]n considering motivation in the obviousness analysis, the
problem examined is not the specific problem solved by the invention.”
Kahn, 441 F.3d at 988 (Fed. Cir. 2006).
Appellants provide no further argument with respect to the
combination of the prior art references, and all other arguments are waived.
37 C.F.R. § 41.37(c)(l)(iv) (2014). While Appellants make arguments with
respect to claim 1 in the Reply Brief which are not made in the Appeal Brief
(Reply Br. 3 4) these are again conclusory, and additionally are not timely,
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Appeal 2015-004261
Application 12/787,524
as they are not presented in response to new findings or rejections by the
Examiner. A reply brief may not contain any new factual or legal arguments
to rebut Examiner rejections that could have been made in the principal
appeal brief. 37 C.F.R. § 41.41(b)(1) (2014).
Thus, we are not persuaded of error in the Examiner’s rejection of
claim 1. We sustain the obviousness rejection of claim 1 and of claims 3—10
and 12—19, not argued separately (Appeal Br. 8).
(II) Obviousness Rejection — Claim 21
With respect to claim 21, Appellants argue that Roe “merely discloses
currently active alarms,” that Hoveida “merely discloses past alarm
messages,” and that neither disclose a timeline of past activation of alarms.
(Appeal Br. 9—10.) Appellants’ arguments are not responsive to the specific
findings of the Examiner with respect to the disclosures of Roe and Hoveida
(Final Action 8—9), and are therefore unpersuasive. Moreover, Appellants
arguments regarding the references separately are unpersuasive because one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). We are not persuaded of error in the Examiner’s
findings and conclusions with respect to the timeline limitation.
With respect to claim 21, the arguments that the Examiner has failed
to establish a prima facie case of obviousness or shown a reason to combine
the cited references are unpersuasive for the reasons detailed supra.
Thus, we are not persuaded of error in the Examiner’s rejection of
claim 21. We sustain the obviousness rejection of claim 21 and of claims 22
and 23, not argued separately (Appeal Br. 9).
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Appeal 2015-004261
Application 12/787,524
DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1, 3—10, 12—
19, and 21—23 is affirmed.
Pursuant to 37 C.F.R. § 1.136(a)( 1 )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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