Ex Parte Woods et al

Board of Patent Appeals and Interferences

Sep 14, 2010

11470060 (B.P.A.I. Sep. 14, 2010)

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.
11/470,060 09/05/2006 Richard Woods SchwartzCell 7468
2655 7590 09/15/2010
DAVID PRESSMAN, ESQ.
1070 GREEN STREET
# 1402
SAN FRANCISCO, CA 941335418
EXAMINER
PATEL, MUNJALKUMAR C
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
09/15/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RICHARD WOODS, NEHEMIA SCHWARTZ,
and NIRA SCHWARTZ
_____________

Appeal 2010-005456
Application 11/470,060
Technology Center 2600

_______________

Before, ROBERT E. NAPPI, KENNETH W. HAIRSTON, and JOHN C.
MARTIN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-005456
Application 11/470,060

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 44-53.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejections of these claims.

INVENTION
The invention is directed to a system and method of disabling the use
of a mobile phone. The system and method determines the mobile phone’s
speed by measuring space coordinates. When the phone’s speed exceeds a
threshold, the phone is disabled while still allowing cross-transmission and
receipt of control signals. See Spec: 1-4. Claim 44 is representative of the
invention and reproduced below:
44. A method for controlling a wireless communication
mobile phone, comprising:
providing a wireless communication mobile phone
with an on-board memory and a transmitter and a
receiver for communicating with a base station;
providing said wireless communication mobile phone
with a sensing unit for continually and repeatedly sensing
the space coordinates of said wireless communication
mobile phone, measuring the time at which each sensing
of said space coordinates was made, and storing the
resultant space coordinates and corresponding respective
time values in said on-board memory;
providing said wireless communication mobile phone
with an arithmetic logic unit for continually calculating
said wireless communication mobile phone’s speed of
movement in accordance with said space coordinates and
said time values and storing said speed of movement in
said on-board memory;

2 Claims 1-29 were cancelled in an Amendment After Non-Final, filed June
18, 2008. Claims 30-43 were cancelled in an Amendment After Non-Final,
filed January 14, 2009.
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providing said wireless communication mobile phone
with an interrupt unit for receiving an interrupt signal and
forcing, in response to receipt of said interrupt signal,
said wireless communication mobile phone to go into a
hang-up or on-hook status where communication over
said mobile phone is disabled, but where cross-
transmission and or receipt of control signals is
maintained with said base station;
such that said wireless communication mobile phone
can be forced into said hang-up or on-hook status when
said speed of movement exceeds said predetermined
value, so that public safety is enhanced.

REFERENCES
Parvulescu US 6,687,497 B1 Feb. 3, 2004

Sheha US 2005/0073443 A1 Apr. 7, 2005

Irani US 2007/0072616 A1 Mar. 29, 2007
(filed Sep. 23, 2005)

REJECTIONS AT ISSUE
Claims 44-50 and 52-53 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sheha in view of Irani. Ans. 3-12.
Claim 51 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sheha in view of Irani and Parvulescu.3 Ans. 12-14.

3 We note that Appellants indicated claim 51 is not independently patentable
(App. Br. 8) and it is therefore grouped with claims 44-53.
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Application 11/470,060

ISSUES
35 U.S.C. § 103(a) rejections
Appellants argue on pages 8-29 of the Appeal Brief and pages 3-19 of
the Reply Brief that the Examiner’s rejection of claims 44-53 is in error.
Appellants select independent claims 44 and 49 to represent the groups
consisting of claims 44-48 and 49-53. Appellants argue that Sheha cannot
be combined with Irani. App. Br. 11-18; Reply Br. 7-14 and 18. Appellants
additionally argue that neither Sheha nor Irani discloses all of the limitations
of claims 44 and 49. App. Br. 18-29; Reply Br. 3-7 and 9-19.
Thus, with respect to claims 44 and 49, Appellants’ contentions
present us with two issues: (1) Did the Examiner err in combining Sheha
with Irani? (2) Did the Examiner err in finding that Sheha in view of Irani
disclose all of the limitations of claims 44 and 49?

FINDINGS OF FACT (FF)
Sheha
1. Sheha discloses a system that tracks, monitors, and stores spatial-
related information of a mobile computing device that includes laptop
computers and cellular phones. Abstract; ¶¶ [0002], and [0006].
2. The system monitors spatial information including speed, altitude,
latitude, longitude, and time and stores it in local memory. ¶¶ [0009],
[0080], and [0098].
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Irani
3. Irani discloses a system that monitors a cellular phone’s movement. ¶
[0004].
4. The system detects motion using either base stations or GPS signals.
¶ [0018].
5. When it is determined that the motion of the phone exceeds a
threshold value, corrective action is taken. ¶ [0025].
6. “For al[l] intents and purposes, while the phone is in motion, the
phone will essentially act as though it were dead.” ¶ [0027].
7. However, in one embodiment, the system can be modified to allow
emergency calls to be made even when the phone is moving. ¶
[0030].

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has 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 Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has 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).
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ANALYSIS
35 U.S.C. § 103(a) rejections
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of independent claims 44 and 49. Appellants’ first
main argument is that it is improper to combine Sheha with Irani. App. Br.
11; Reply Br. 3. Appellants argue that the Examiner has not provided a
prima facie case of obviousness since the rejection does not contain a
rationale or a “clear articulation” of the reason to combine. Ans. 12.
Appellants argue that the Examiner merely stated what the references taught
and then said that it would be obvious to combine them. App. Br. 12. We
disagree.
The Supreme Court has said that an explicitly stated motivation to
combine the references is only seen as “helpful insight,” KSR, 550 U.S. at
418, but is not required as long as the combination of the elements of the
references yields predictable results. Id. at 416-419. Sheha discloses a
system that tracks a mobile phone or laptop and stores spatial information
associated with the device in its local memory. FF 1, 2. The spatial
information consists of speed, latitude, longitude, altitude and time. FF 2.
Irani discloses a system that detects the speed of a cell phone using spatial
information. FF 3, 4. When the cell phone is in motion and a threshold
speed is detected, the phone acts as though it is dead. FF 6. The systems in
both references contain cellular or mobile phones that are tracked and
wherein the speed of the device is monitored. Therefore, we consider
combining Irani’s system for causing the device to “act as though it is dead”
with Sheha’s tracking and storing system as nothing more than using known
devices to store information and not allow phone calls to be made when the
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device’s speed exceeds a threshold. As such, we find that the combination
of Irani with Sheha yields the predictable result of disabling a device when
its speed exceeds a particular threshold speed. As such, the combination is
obvious.
Further, though not required, the Examiner has provided a specific
motivation to combine the references. Ans. 6. The Examiner finds that it
would have been obvious to combine the references in order to enhance
public safety (Ans. 6 citing Irani, ¶ [0027]-[0028]). Ans. 6. Therefore, we
find that the Examiner has established a prima face case of obviousness.
The burden shifts to Appellants to rebut the prima facie case of obviousness
by demonstrating error in the Examiner’s position. In re Oetiker, 977 F.2d
at 1445; In re Kahn, 441 F.3d at 985-86.
Appellants argue that neither reference contains a reason to support
the combination because the references teach away from the combination.
App. Br. 15. Appellants argue that Irani does not disclose creating interrupt
signals nor does he disclose a system that maintains control signals when the
phone is disabled. App. Br. 14; Reply Br. 3-5. Appellants argue that Irani
discloses a system that disables incoming or outgoing calls once a speed is
reached. App. Br. 14-15; Reply Br. 4. As a result, it does not make sense to
combine one system that is designed to maintain communication with one
that is designed to disable communication. App. Br. 15. We disagree with
Appellants’ reasoning.
First, Irani’s system is misinterpreted by Appellants. Irani states
“[f]or al[l] intents and purposes, while the phone is in motion, the phone will
essentially act as though it were dead.” FF 6. The Examiner finds that this
means that the phone is still communicating with base stations even though
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the user cannot make calls. Ans. 25. We find this to be reasonable since the
system would have to monitor when the phone slowed down in order to
allow calls to be made again. Additionally, Irani’s system allows emergency
calls to go through when the phone is acting disabled. Ans. 25. This too
shows that the phone is still in communication with the base stations while
acting “disabled” for any other calling purpose. The claims do not require
disabling all types of communications over the mobile phone and therefore
are broad enough to read on disabling only non-emergency communications.
Second, Sheha and Irani do not teach away from one another. Sheha
discloses a system that can be used with a cellular phone but does not
prevent calls from being made if a speed is exceeded. FF 1. Sheha’s system
simply monitors the location of the phone wherever it goes. FF 1, 2. Irani’s
system does not completely cut off communication either. FF 6. Irani’s
system merely causes the phone to act as it is disabled with respect to calls
being made or received. FF 6. As disclosed above, the system would still
have to communicate with base stations in order to determine when to
enable the phone. As such, the references do not teach away from being
combined with each other and Appellants’ arguments are not found to be
persuasive.
Appellants also argue that the combination would not be operative
because Irani’s system would shut the phone off and not allow Sheha’s
system to monitor the location of the device. App. Br. 16-18; Reply Br. 4.
As discussed above, we do not find these arguments to be persuasive.
Irani’s system causes the phone to act dead and does not allow incoming or
outgoing calls. FF 6. However, the phone must still be in communication
with the system in order to allow for the activation of the phone when the
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phone’s speed is reduced to below the threshold. As such, Appellants’
arguments are not found to be persuasive.
Appellants’ second main argument is that neither reference contains
all of the limitations of claims 44 and 49. App. Br. 18; Reply Br. 5-7.
Claim 44 recites:
providing said wireless communication mobile phone
with an interrupt unit for receiving an interrupt signal and
forcing, in response to receipt of said interrupt signal,
said wireless communication mobile phone to go into a
hang-up or on-hook status where communication over
said mobile phone is disabled, but where cross-
transmission and or receipt of control signals is
maintained with said base station;
such that said wireless communication mobile phone
can be forced into said hang-up or on-hook status when
said speed of movement exceeds said predetermined
value, so that public safety is enhanced.
Claim 49 contains similar limitations. Appellants argue that the combination
of Sheha and Irani does not cause the phone “to go into on-hook status,
where control signals can be supplied to and from the cell tower but where
the user cannot otherwise communicate.” App. Br. 19; Reply Br. 6.
Appellants argue that Irani’s system is disabled and does not allow the
phone to respond to control signals or transmit and receive communications
after the phone reaches a specific speed. App. Br. 19; Reply Br. 6. We
disagree.
As noted above, Irani’s system only causes the phone to “act”
disabled. FF 6. This means that the phone cannot make outgoing calls or
receive incoming calls (unless in an emergency situation). FF 6, 7.
Additionally, Irani’s system must know when the phone has slowed to below
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the threshold speed. In order to do this, the phone must be continuously
monitored. As such, the phone is in constant communication with the base
towers even when it is “disabled.”
Appellants also argue that the claim requires that “all calls are blocked
upon speeding” and Irani allows emergency calls to be made. App. Br. 20;
Reply Br. 6, 12, 14-16, 18. However, claim 44 recites “where
communication over said mobile phone is disabled.” This limitation does
not require that all calls are blocked. Thus, we will not read the limitation
into the claims and Appellants’ arguments are not persuasive.
Appellants’ third main argument is that the arguments in the
Examiner’s Final Office Action and Examiner’s Answer are not valid. App.
Br. 22; Reply Br. 7-19. The following details those arguments:
1. Appellants argue that neither Irani nor Sheha discloses a phone that
maintains communication when disabled. App. Br. 22. However,
as discussed above, Irani’s system does teach this limitation.
2. Appellants argue that there is no advantage to making the
combination. App. Br. 23. However, as discussed above, the
Examiner finds that the combination enhances public safety. Ans.
6.
3. Appellants argue that the Examiner has failed to show why the
combination is obvious to one of ordinary skill in the art. App. Br.
23. However, as discussed above, the Examiner finds that it would
have been obvious to one of ordinary skill in the art to make the
combination in order to enhance public safety. Ans. 6.
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4. Appellants argue that Irani’s system completely disables the phone
and does not allow communication with base stations while
disabled. App. Br. 25, 26, 27, 28, 29; Reply Br. 9-13, 16-18. As
discussed above, this interpretation is incorrect. Irani’s system
must maintain communication with base towers even though
incoming and outgoing calls are disabled.
5. Appellants argue that a prima facie case of obviousness has not
been established. App. Br. 25. However, as noted above, the
Examiner has established a prima facie case of obviousness.
6. Appellants argue that the combination of the references does not
disclose all of the limitations of claims 44 and 49. App. Br. 25 and
26; Reply Br. 18. As noted above, the Examiner has found that all
limitations are disclosed in the combination.
7. Appellants argue that State Law does not justify the combination.
Reply Br. 13. However, the Examiner states that it would have
been obvious to combine the references in order to enhance public
safety for the observance of state law. Ans. 6. We have found this
motivation to be reasonable.
8. Appellants argue that their system includes both voice and data
communication bands. Reply Br. 18-19. This limitation is not
found in the claims and will not be read into the claims.
Therefore, we do not find Appellants’ arguments to be persuasive and
we sustain the Examiner’s rejection of claims 44 and 49 and claims 45-48
and 50-53 that have been grouped with claims 44 and 49.

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CONCLUSION
The Examiner did not err in finding it obvious to combine Sheha with
Irani.
The Examiner did not err in finding Sheha in view of Irani disclose all
of the limitations of independent claims 44 and 49.

SUMMARY
The Examiner’s decision to reject claims 44-53 is affirmed.
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).

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AFFIRMED

ELD

DAVID PRESSMAN, ESQ.
1070 GREEN STREET
#1402
SAN FRANCISCO, CA 94133-5418

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