Ex Parte Couper et al

Patent Trial and Appeal Board

Nov 18, 2014

11616973 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER C. COUPER, NEIL A. KATZ, and
VICTOR S. MOORE
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Appeal 2012-007035
Application 11/616,973
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003225
Application 10/859,029

2
STATEMENT OF THE CASE
Introduction
Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 5–8, 12–14, and 18–29. Claims 2–4, 9–11, and 15–17 have been
canceled.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 7, which are reproduced below with emphases
added:
1. A method of identifying incidents using mobile
devices comprising:

1 Claim 11 has been canceled (App. Br. 2; Ans. 3). We note that, in
Appellants’ claims appendix submitted with the Appeal Brief, claims 12 and
13 each depend improperly from claim 11 (see App. Br. 27). Each
dependent claim must refer to a preceding claim. 37 C.F.R. § 1.75(c); see
MPEP § 608.01(n)(I)(B)(2). “When claims are added, they must be
numbered by the applicant consecutively beginning with the number next
following the highest numbered claim previously presented” (MPEP
§ 608.01(j)). Because Appellants primarily present arguments as to the
anticipation rejection of claims 1 and 7 on appeal (see App. Br. 19–24), and
do not present separate anticipation arguments as to claims 2, 5, 6, 8, 12–14,
and 18–29, we treat the improper dependency of claims 12 and 13 as
harmless error for purposes of this appeal. We also consider claim 1 as
representative of the group of claims rejected for anticipation consisting of
claims 2, 5, 6, 8, 13, 14, and 18, 19, and 21–29. Based on Appellants’
statement that claims 12 and 20 stand/fall with claim 7, and the fact that each
of claims 7, 12, and 20 recite similar subject matter relating to requesting a
recording of a sound, we consider claim 7 as representative of claims 7, 12,
and 20. Accordingly, our discussion and analysis of the anticipation
rejection will only address representative claim 1 and separately argued
dependent claim 7.
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Application 10/859,029

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receiving a communication from each of a plurality of
mobile devices, wherein each communication specifies
information about a first detected sound;
identifying spatial and temporal information from each
communication and an indication of a sound signature matching
the first detected sound;
comparing the spatial and temporal information from the
communications with a policy specifying a spatial constraint
and a temporal constraint, each of the spatial constraint and the
temporal constraint selected according to the sound signature
indicated by the communications and varying according to the
sound signature; and
selectively sending a notification according to the
comparison.
7. The method of claim 1, further comprising:
responsive to comparing the communications with the
policy, requesting a recording of the first detected sound from
at least one of the plurality of mobile devices; and
receiving the recording of the first detected sound.
The Examiner’s Rejections
(1) The Examiner rejected claims 14, 18–20, and 27–29 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.2 Ans. 5–6
and 12–20.

2 In response to § 101 rejection, Appellants only presents arguments on the
merits with regard to independent claim 14 (see App. Br. 5; Reply Br. 2–3).
Separate patentability is not argued for dependent claims 18–20 and 27–29
(see App. Br. 7–19; Reply Br. 3–5). For the § 101 rejection, we select claim
14 as representative of the group of claims 14, 18–20, and 27–29. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2010-003225
Application 10/859,029

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(2) The Examiner rejected claims 1, 5–8, 12–14, and 18–29 under
35 U.S.C. § 102(b) as being anticipated by Lerg (US 6,281,792 B1; issued
Aug. 28, 2001).3 Ans. 6–12.
Issues on Appeal
Based on Appellants’ arguments presented in the Appeal Brief (App.
Br. 4–24) and the Reply Brief (Reply Br. 3–20), the following two issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 14, 18–20, and 27–29
under 35 U.S.C. § 101 as being directed to non-statutory subject matter
because the “computer program product” including the “computer-readable
storage” recited in representative claim 14 cannot be a carrier wave or
signal?
(2) Did the Examiner err in rejecting claims 1, 5–8, 12–14, and 18–29
under 35 U.S.C. § 102(b) as being anticipated by Lerg because Lerg does
not disclose (i) a policy with spatial and temporal constraints as recited in
representative claim 1 and (ii) a request for a detected sound as recited in
representative claim 7?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’

3 We note that in the Examiner’s heading for the statement of the rejection
found at page 6 of the Answer, the Examiner omits claims 28 and 29.
However, the Examiner has addressed claims 28 and 29 in the discussion of
the merits of the anticipation rejection (see Ans. 12), and Appellants have
addressed these claims as rejected for anticipation as well (see App. Br. 2
and 3). Accordingly, we treat claims 28 and 29 as rejected for anticipation
by Lerg.
Appeal 2010-003225
Application 10/859,029

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contentions in the Appeal Brief (App. Br. 4–24) and the Reply Brief (Reply
Br. 3–20) that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Rej. 10–18; Ans. 5–12), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to the
Appellants’ Appeal Brief (Ans. 12–28). We highlight and amplify certain
teachings and suggestions of the reference as follows.
Non-statutory subject matter
Appellants contend (App. Br. 7–19; Reply Br. 3–5) that the
“computer-readable storage,” and thus the “computer program product,”
recited in claim 14 is drawn to statutory subject matter because the computer
readable storage does not encompass a transitory, propagating signal, and is
eligible under § 101 as either a manufacture or an improvement to a machine
such as a computer. We agree with the Examiner (Ans. 5–6 and 12–20) that
the “computer program product” recited in claim 14 and as construed in light
of the disclosure (see infra Spec. ¶¶ 10–13 and 18), is drawn to non-statutory
subject matter.
In the originally filed disclosure, Appellants disclose, a “computer
program product” that is accessible by a “computer-usable or computer-
readable medium” that can “contain, store, communicate, propagate, or
transport” the program (Spec. ¶ 10) and can be a “transmission media” and
“may include a propagated data signal . . . as part of a carrier wave” (Spec. ¶
12). Per the originally filed disclosure, the claimed “computer program
product” including a “computer-readable storage” can be a transitory,
propagating signal (e.g., a carrier wave) and transitory, propagating signals
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are ineligible. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Therefore, we sustain the Examiner’s § 101 rejection of representative
claim 14, as well as claims 18–20, and 27–29 grouped therewith.
Anticipation by Lerg
For the reasons that follow, Appellants’ contention (App. Br. 20–23)
that Lerg fails to disclose a policy specifying spatial/temporal constraints,
and/or comparing such a policy to the spatial/temporal data/information
from the communications, as recited in representative claim 1 is
unpersuasive. Similarly, Appellants’ contention (App. Br. 24) that Lerg fails
to disclose requesting a detected sound or sending a report of the detected
sound in response to a request for that sound, as recited in claim 7 is
unpersuasive.
We agree with the Examiner (Ans. 6–8 and 20–28) that Lerg discloses
all of the salient features recited in representative claims 1 and 7.
Specifically, we find that Lerg discloses comparing data to a policy (such as
filtering communications for a firearm shot by filtering the signal for
duration and timing of certain noises) as recited in claim 1 at least in column
2, lines 2–4 and 48–54; column 3, lines 3–6 and 27–29; and column 7, lines
36–41 and 56–60. Further, we find that Lerg discloses requesting a detected
sound (such as a firearm shot using sonic sensors) as recited in claim 7 at
least at column 5, lines 41–45 and column 10, lines 41–43.
The Examiner has set forth a prima facie case of anticipation and
Appellants have not adequately shown that Lerg does not provide any
teaching of comparing data to a policy (claim 1) and requesting a recording
of a sound (claim 7), Appellants have not met their burden of showing
reversible error in the Examiner’s findings.
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Application 10/859,029

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Therefore, we sustain the Examiner’s § 102(b) rejection of claims 1,
5–8, 12–14, and 18–29.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 14, 18–20, and 27–29
under 35 U.S.C. § 101 as being directed to non-statutory subject matter
because the computer program product recited in claim 14 encompasses
transmission media such as carrier waves (i.e., signals) and is thus drawn to
non-statutory subject matter.
(2) The Examiner did not err in rejecting claims 1, 5–8, 12–14, and
18–29 under 35 U.S.C. § 102(b) as being anticipated by Lerg because Lerg
discloses (i) comparing information from a communication with a policy
specifying spatial and temporal constraints as recited in representative claim
1 and (ii) requesting a detected sound as recited in dependent claim 7.

DECISION
The Examiner’s rejections of (i) claims 14, 18–20, and 27–29 under
§ 101, and (ii) claims 1, 5–8, 12–14, and 18–29 under § 102(b) are 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).

AFFIRMED

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