Ex Parte Agulnik et al

Patent Trial and Appeal Board

Sep 29, 2016

12649917 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/649,917 12/30/2009 Anatoly Agulnik
22917 7590 10/03/2016
MOTOROLA SOLUTIONS, INC
IP Law Docketing
500 W. Monroe
43rd Floor
Chicago, IL 60661
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.
CM12842 6388
EXAMINER
MADAMBA, GLENFORD J
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 ANATOL Y AGULNIK and
DONALD G. NEWBERG
Appeal2015-005383
Application 12/649,917 1
Technology Center 2400
Before JOHNNY A. KUMAR, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, 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 16-25. Appellants have canceled claims 1-15. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Motorola Solutions,
Inc. App. Br. 2.
Appeal2015-005383
Application 12/649,917
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates generally to
communication systems and more particularly to determining a
communication target and facilitating communications with the target based
on an object descriptor and a relationship between the object and the target."
Spec. 1, 11. 6-9 ("TECHNICAL FIELD").
Exemplary Claim
Claim 16, reproduced below, is representative of the subject matter on
appeal (emphasis added):
16. A method for determining a communication target
and facilitating communications with the target based on an
image, the method comprising:
at a server:
• • £:. • • •
recezvzng, 1rorn a requestor zn a cornrnunzcatzon systern,
an image of an object, a description of a relationship between
the object and a talk group in the communication system, and a
request to establish communications with the talkgroup,
wherein the talkgroup comprises a group of radios;
determining the talkgroup based on the object and the
relationship between the object and the talkgroup; and
establishing a communication session between the
requestor and the talkgroup.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 15, 2014); Reply Brief ("Reply Br.," filed Apr. 23, 2015); Examiner's
Answer ("Ans.," mailed Mar. 3, 2015); Final Office Action ("Final Act.,"
mailed July 14, 2014); and the original Specification ("Spec.," filed
Dec. 30, 2009).
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Appeal2015-005383
Application 12/649,917
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Mock et al. ("Mock") WO 2008/027682 A2 Mar. 6, 2008
Rejection on Appeal
Claims 16-25 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Mock. Final Act. 6.
ISSUE
Appellants argue (App. Br. 7-11; Reply Br. 5-7) the Examiner's
rejection of claim 16 under 35 U.S.C. § 102(b) as being anticipated by Mock
is in error. This contention presents us with the following issue:
Did the Examiner err in finding the cited prior discloses a "method for
determining a communication target and facilitating communications with
the target based on an image" that includes, inter alia, the steps of:
(1) "receiving, from a requestor in a communication system, an image of an
object, a description of a relationship between the object and a talk group in
the communication system, and a request to establish communications with
the talkgroup, wherein the talkgroup comprises a group of radios;" and
(2) "determining the talkgroup based on the object and the relationship
between the object and the talkgroup," as recited in claim 16?
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 16, 24, and 25 for the specific reasons discussed below.
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Appeal2015-005383
Application 12/649,917
We highlight and address specific findings and arguments regarding claim
16 for emphasis as follows.
Appellants contend:
[I]n Mock, communication device 110 merely provides server
120 with the image, and the server then identifies one or more
features (attributes or descriptors) associated with the image
and selects an associated entity, such as a user, user group, or
business entity, based on the features identified by the server.
By contrast, independent claims 16, 24, and 25 recite the
requestor, which may be equated, at best, to communication
device 110 of Mock, providing a description of a relationship
(which may be equated, at best, to the attributes or descriptors
identified by the server of Mock) identified between the imaged
object and the talkgroup.
App. Br. 9.
Appellants summarize their argument by contending "all that Mock
discloses, is a server receiving an image from a communication device,
associating the image \'l1ith one or more features, and selecting, based on the
features identified by the server, an associated entity, such as a user, user
group, or business entity." App. Br. 10. To distinguish over the cited art,
Appellants argue "in contrast to the teachings of Mock, an application of the
claims to Mock would correspond to communication device 110, instead of
server 120, determining features associated with the image and that may be
used to select a talkgroup, and then providing such information to the
server." Id.
We agree with Appellants' contentions regarding the argued difference
between Mock and the first contested limitation of claim 16. In particular,
we find persuasive Appellants' argument that "a photograph of a motorcycle
is just that, a mere photograph of an image of an object- it is not a
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Appeal2015-005383
Application 12/649,917
description of the object (otherwise, such language would make little sense
as the image and the description of the object then would be the same
thing)." Id.
We disagree with the Examiner because, as argued by Appellants,
"the claim does not merely recite the server receiving (from the requestor) a
description of the object but rather recites 'receiving ... a description ofa
relationship between the object and a talk group,' . .. which ... is not
provided by a mere photograph .... " App. Br. 10-11.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the teachings of
Mock to disclose the disputed limitations of claim 16, such that we find error
in the Examiner's resulting finding of anticipation. Therefore, we cannot
sustain the Examiner's anticipation rejection of independent claim 16, and
independent claims 24 and 25 which recite the contested limitations in
commensurate form. For the same reasons, we also cannot sustain the
rejection of dependent claims 17-23 which variously depend therefrom. 3
CONCLUSION
The Examiner erred with respect to the anticipation rejection of
claims 16-25 under 35 U.S.C. § 102(b) over the cited prior art of record, and
we do not sustain the rejection.
3 In the event of further prosecution, including any pre-allowance review,
we direct the Examiner's attention to the incorrect dependencies of method
claims 17 through 23 which erroneously depend from canceled claim 1. We
leave it to the Examiner to determine whether these claims should be
amended to depend from independent method claim 16 and/ or whether these
claims meet the definiteness requirements of 35 U.S.C. § 112, second
paragraph.
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Application 12/649,917
DECISION
We reverse the Examiner's decision rejecting claims 16-25.
REVERSED
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