MOTOROLA SOLUTIONS, INC

Patent Trials and Appeals Board

Feb 2, 2022

2020006754 (P.T.A.B. Feb. 2, 2022)

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. 15/723,964 10/03/2017 MADHUSUDAN PAI PAT21403-US-PRI 5993 22917 7590 02/02/2022 MOTOROLA SOLUTIONS, INC. IP Law Docketing 500 W. Monroe 43rd Floor Chicago, IL 60661 EXAMINER AMINZAY, SHAIMA Q ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): USAdocketing@motorolasolutions.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MADHUSUDAN PAI, VAIDYANATH CHANDRAMOWLEESWARAN, RITESH DESAI, and VIRAT G. PATEL Appeal 2020-006754 Application 15/723,964 Technology Center 2600 Before JEAN R. HOMERE, HUNG H. BUI, and JON M. JURGOVAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-17. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed Oct. 3, 2017 (“Spec.”); Final Office Action, mailed May 17, 2019 (“Final Act.”); Appeal Brief, filed Jan. 10, 2020 (“Appeal Br.”); and Examiner’s Answer, mailed Apr. 29, 2020 (“Ans.”). 2 “Appellant” refers to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Motorola Solutions Inc. Appeal Br. 3. Appeal 2020-006754 Application 15/723,964 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a method and system for facilitating an administrator (a.k.a., privileged user) to remotely assign to a user device an active talk group selected from a plurality of talk groups assigned to the user device. Spec. ¶¶ 1-5. Figure 1, reproduced below, is useful for understanding the claimed subject matter: Figure 1 above depicts communication system 100 including user device 103 coupled to user privileged device 104, wherein user device 103 creates an explicit talk group list as part of a plurality of first talk groups, and Appeal 2020-006754 Application 15/723,964 3 privileged user device 104 creates for user device 103 an implicit talk group list as part of a plurality of second talk groups such that privileged user device 103 can select an active talk group from the plurality of first and second talk groups. Id. ¶¶ 11-15. Independent claim 1, with disputed limitations emphasized, is illustrative: 1. A method comprising: creating an explicit talk group list for a user device, the explicit talk group list created by the user device and comprising a plurality of first talk groups; creating an implicit talk group list for the user device, the implicit talk group list created by a privileged user device coupled with the user device and comprising a plurality of second talk groups; and selecting an active talk group for the user device from one of the plurality of first talk groups or one of the plurality of second talk groups. Appeal Br. 9 (emphasis added). III. REFERENCES The Examiner relies upon the following references as evidence.3 Name Reference Date Pai US 2017/0034672 A1 Feb. 2, 2017 Negalaguli US 2017/0164165 A1 June 8, 2017 IV. REJECTION The Examiner rejects claims 1-17 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Pai and Negalaguli. Final Act. 4-8. 3 All reference citations are to the first named inventor only. Appeal 2020-006754 Application 15/723,964 4 V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 5-8.4 We are unpersuaded by Appellant’s contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Final Action, and the Examiner’s Answer in response to Appellant’s Appeal Brief.5 Final Act. 2- 8; Ans. 2-13. However, we highlight and address specific arguments and findings for emphasis as follows. Appellant argues that the Examiner errs in finding that the combination of Pai and Negalaguli renders claim 1 unpatentable. Appeal Br. 5. In particular, Appellant argues that none of the cited references teaches or suggests creating for a single user device two distinct talk groups from which an active talk group for the user device is selected, as recited in independent claim 1. Id. at 5-7. According to Appellant, Pai relates to two separate mobile devices, each having a separate talk group associated thereto such that a group management/call server may select one of the devices to participate in call, as opposed to the server selecting an active talk group from one of the talk groups associated with a single one of the two user devices. Id. (citing Pai ¶¶ 2, 12, 22, 33). Further, Appellant argues that 4 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). 5 See ICON Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2020-006754 Application 15/723,964 5 Negalaguli’s disclosure of an administrator managing broadcast group member (as opposed to talk groups) does not cure the noted deficiencies of Pai. Id. at 6-7 (citing Negalaguli ¶¶ 35, 40, 331, 332, 336, 339). Appellant’s arguments are not persuasive of reversible Examiner error because Appellant’s arguments fail to particularly address the specific findings made by the Examiner in the Final Action and Answer. In particular, the Examiner finds that Pai discloses user device 104 coupled to privileged user device 106, wherein user device 104 creates explicit talk group 105 and privileged user device 106 creates implicit talk group 107, which is shared with user device 104 such that Group Management Server 150, 154 can select an active talk group from talk groups 105 and 107. Ans. 10-12 (citing Pai ¶¶ 17, 20-24, 45, 48, 50). However, as noted above, Appellant’s arguments are limited to a subset of Pai’s paragraphs cited by the Examiner. Although Pai discloses a plurality of devices associated with a same user, each user device containing a scan/talk group list, as correctly noted by the Examiner, Pai also discloses that user device 106 is a privilege device, which creates talk group 107 that can be shared with user device 104. Pai ¶¶ 47-50. Those paragraphs cited by the Examiner teach two talk groups associated with a single user device, and are not addressed by Appellant. Further, as correctly noted by the Examiner, Pai also discloses Group Management Server 150, 154 selecting an active talk group from the two talk groups 105, 107. Pai ¶¶ 52-54. Accordingly, we agree with the Examiner that Pai teaches a single user device having associated therewith two talk groups from which an active talk group is selected. Additionally, we note the Examiner’s reliance upon Negalaguli is to bolster Pai’s teaching Appeal 2020-006754 Application 15/723,964 6 of a privilege user device in managing Push-to-Talk (PTT) group communications. Ans. 13 (citing Negalaguli ¶¶ 230, 334).6 We find the Examiner’s proposed combination of the cited teachings of Pai and Negalaguli is no more than a simple arrangement of old elements with each performing the same function it had been known to perform, yielding no more than what one would expect from such an arrangement. See KSR, 550 U.S. at 416. Therefore, an ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would have been able to fit the teachings of the cited references together like pieces of a puzzle to predictably result a PTT user device having associated therewith two talk groups from which an active talk group is selected. Id. at 420-21. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Ans. 5. Consequently, we are satisfied that, on this record, the Examiner has established that the combination of Pai and Negalaguli teaches or suggests the disputed claim limitations. Because 6 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . 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). “The obviousness analysis cannot be confined by [the] formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of . . . the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Appeal 2020-006754 Application 15/723,964 7 we are not persuaded of Examiner error, we sustain the Examiner’s rejection of claim 1 as unpatentable over the combination of Pai and Negalaguli. Regarding the rejections of claims 2-17, Appellant either does not present separate patentability arguments or reiterates substantially the same arguments as those discussed above for the patentability of claim 1. As such, claims 2-17 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). VI. CONCLUSION On this record, we affirm the Examiner’s rejection of claims 1-17. VII. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-17 103 Pai, Negalaguli 1-17 VIII. TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED