Ex Parte Xiao

Patent Trial and Appeal Board

Jun 25, 2018

13355567 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/355,567
Weihao
Xiao
7590
6723 Belynn Ct.
Corona, CA 92880
FILING DATE FIRST NAMED INVENTOR
01/23/2012 WeihaoXiao
06/25/2018
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.
3357
EXAMINER
WANG,JACKK
ART UNIT PAPER NUMBER
2687
MAILDATE DELIVERY MODE
06/25/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte WEIHAO XIAO
Appeal2017-009889
Application 13/355,567 1
Technology Center 2600
Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
JAMES W. DEJMEK, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 36-39. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to security alarms sending notifications to
remote devices. Abstract. Claim 36 is illustrative of the invention and is
reproduced below:
36. An alarm sound activated module, operating with an
existing alarm system having an existing alarm sensor, and a
cellular phone to retrofit the existing alarm system with a
1 According to Appellant, the real party in interest is Weihao Xiao. App.
Br. 1.
Appeal2017-009889
Application 13/355,567
wireless remote notification function, wherein the cellular phone
is portable, ordinary, commonly available and preexisting;
a. wherein the cellular phone connecting with an interface
of the alarm sound activated module is a portable commercial
type for general cellular communication purposes and has:
1. a cellular phone housing for holding the cellular
phone circuitry for portable communication purpose, wherein the
cellular phone is configured to detach from and self-operate apart
from the sound activated module, wherein the cellular phone can
make a regular cellular phone call when detached;
2. a cellular phone keypad to input a calling number
and dial a call;
3. a cellular phone microphone;
4. a cellular phone speaker;
5. a cellular phone display screen;
6. a charging line;
7. a cellular phone battery; and
8. a cellular phone headset interface having a call
initial line shared with a microphone line, and audio lines,
wherein a phone call is configured to be triggered by receiving a
control signal on the call initial line from the headset when the
headset is plugged into the cellular phone headset interface and
the button on the headset is pressed;
b. wherein the existing alarm is at least a complete alarm
system, wherein the existing alarm system includes:
1. at least one alarm sensor selected from the group of:
switch sensor, infrared motion sensor, video motion sensor,
smoke sensor, fire sensor, and window break sensor;
2. an alarm controller converting the sensor detection into
control output, wherein all alarm sensors are connected to the
alarm controller; and
3. an interface connected with the controller to drive a siren
to generate an alarm sound for onsite notification, or to deliver
the control signal to a long distance communication device for
activating a remote notifications, or both;
wherein the improvement comprises:
c. a housing retaining the alarm sound activated module
separate from the existing alarm system and the existing regular
cellular phone, wherein the alarm sound activated module is
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Application 13/355,567
configured to trigger a call on the existing cellular phone for
alarm notification through detecting an alarm sound from the
existing alarm being triggered by the existing alarm sensors;
wherein the alarm sound activated module is configured for
independent self-operation from the existing alarm without need
for any wired, electronic, or radio connection from the alarm
sound activated module to the existing alarm or the existing
alarm sensors; wherein the alarm sound activated module is
configured to interface with the existing regular cellular phone
without the need of inherent alarm notification configuration and
modification of the existing cellular phone;
d. a microphone mounted to the housing, wherein the
microphone is a sensor input and configured to detect the existing
alarm sound, wherein the microphone is the only type of sensor
detecting all alarm events via detecting only the alarm sound of
the existing alarm system that is connected to alarm sensors that
are not connected to the sound activated module;
e. a controller mounted to the housing, wherein the
controller is connected to the microphone, wherein the controller
receives the microphone signal and converts the microphone
signal to a control output to trigger a cellular call for alarm
notifications, wherein the controller requires no wired or radio or
infrared connection with the alarm sensors; and
f. an interface mounted to the housing, wherein the
interface is connected to the controller and configured to deliver
the control output to the existing regular cellular phone to trigger
a call for alarm remote notification, wherein the interface is a
detachable cable connector with a mechanical structure
configured to plug to and unplug from the existing cellular
phone, wherein the pin assignment on the cable connector
includes the pins of a call initial, audio, and DC supply lines,
wherein the pin assignment on the cable connector is compatible
with the headset interface of the existing cellular phone, wherein
a phone call to a remote user's number pre-stored in the existing
cellular phone can be triggered by sending the control signal
through the call initial line to the headset interface on the existing
cellular phone without requiring any modification of the cellular
phone to operate with the sound activated module.
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Appeal2017-009889
Application 13/355,567
REJECTIONS AT ISSUE
Claims 36-39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofStilp et al. (US 2007/0146127 Al;
published June 28, 2007) (hereinafter, "Stilp") and Okamoto et al. (US
6,633,231 Bl; issued Oct. 14, 2003) (hereinafter, "Okamoto"). Final Act. 2-
7.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
ANALYSIS
The Examiner finds Stilp and Okamoto teach the limitations recited in
the claims. Final Act. 2-7. The Examiner concludes a person having
ordinary skill in the art would have modified Stilp' s system with Okamoto's
system for the benefit of utilizing the existing portable communication
device or detecting an abnormal activity in the monitoring area. Id. at 5---6.
Appellant argues Stilp and Okamoto fail to teach the features recited
in claim 36, subsections a- f. App. Br. 3--4; Reply Br. 1-2. In addition,
Appellant argues secondary considerations such as unpredicted results,
market trends, etc. distinguish the claims over the prior art. App. Br. 5-9;
Reply Br. 2-3. Additionally, Appellant argues Stilp teaches away from the
claimed invention. App. Br. 8. We disagree with Appellant.
As an initial matter, the Examiner finds Stilp and Okamoto teach the
limitations recited in the claims (Final Act. 2-7) and Appellant does not
rebut the Examiner's findings sufficiently (App. Br. 3--4; Reply Br. 1-2). In
order to rebut a prima facie case of unpatentability, Appellant must distinctly
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Application 13/355,567
and specifically point out the supposed Examiner errors, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F .R. § 41.37 ( c )(vii) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art."); cf In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.").
Contrary to Appellant's assertion that the Examiner failed to identify
specific teachings from the prior art, the Examiner identified specific
components of Stilp that describe the components of, for example, the
claimed cellular phone. Final Act. 2--4 (citing Stilp, Fig. 3 (203, 210, 250),
Fig. 4 (260, 265, 266), Fig. 29 (200, hazards detector), Fig. 30 (902a, 902b,
910). The Examiner also identified accompanying text within Stilp (see
Final Act. 2--4 (citing Stilp i-fi-162, 69, 160, and 338-340)) and Okamoto (see
Final Act. 5 (citing Okamoto, col. 3, 11. 16--40, col. 27, 1. 48---col. 28, 1. 4).
We agree with the Examiner (see Ans. 2-3) that the identified portions of
the prior art are clearly cited and teach the features for which they are cited
to teach.
As for Appellant's secondary considerations argument, we note
Appellant does not present any evidence as to secondary considerations;
rather, the arguments provided are merely conclusory. Furthermore, because
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Appellant's statements do not address Appellant's qualifications, work
experience, education, and the like, we assign little probative weight to
Appellant's arguments pertaining to secondary considerations.
A patent applicant can rebut a prima facie case of obviousness by
showing secondary considerations. Notwithstanding what the teachings of
the prior art would have suggested to one with ordinary skill in the art at the
time of the invention, the totality of the evidence submitted, including
objective evidence of nonobviousness, may lead to a conclusion that the
claimed invention would not have been obvious to one with ordinary skill in
the art. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). To accord
substantial weight to objective evidence requires the finding of a nexus
between the evidence and the merits of the claimed invention. In re GPAC
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). The burden of showing that there
is a nexus lies with the applicant. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851F.2d1387, 1392 (Fed. Cir. 1988). Here, Appellant has
not provided sufficient evidence, nor has Appellant demonstrated a nexus
between the claimed invention and any evidence of secondary
considerations.
Regarding Appellant's argument that it is improper for the Examiner
to consider the simplicity of the invention when rejecting the claims (App.
Br. 5), we disagree because the Examiner articulates the combination of
Stilp and Okamoto is a simple substitution of one known element for another
known element to obtain predictable results (Final Act. 5---6).
Appellant's teaching away argument is unpersuasive because Stilp
does not discourage a person having ordinary skill in the art from the
claimed invention. That is, the Federal Circuit has held "[a] reference may
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be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441F.3d977, 990 (Fed. Cir. 2006)
(quoting Jn re Gurley, 27 F.3d 551, 553 (Fed. Cir.1994)).
Accordingly, we sustain the Examiner's rejection for: (1) independent
claim 36; and (2) dependent claims 37-39 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 36-39 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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