Ex Parte Covannon et al

Board of Patent Appeals and Interferences

Jun 23, 2005

09915448 (B.P.A.I. Jun. 23, 2005)

1 We observe that claim 62 depends from claim 1, which has been
canceled. We presume that claim 62 depends from claim 47, as claim 51 depends
from claim 47 and contains language similar to claim 62. We consider this a
formal matter to be addressed by the examiner and appellants subsequent to the
appeal.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD COVANNON, DAVID L. PATTON,
THOMAS M. STEPHANY and KATHRYN K. NASS
____________
Appeal No. 2005-0946
Application No. 09/915,448
____________
ON BRIEF
____________
Before THOMAS, DIXON, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 47-721, which are all of the
claims pending in this application.
BACKGROUND
Appellants' invention relates to an intelligent toy with
Internet connection capability. An understanding of the
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Application No. 09/915,448
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invention can be derived from a reading of exemplary claim 47,
which is reproduced as follows:
47. A system for controlling the operation of an
interactive device in accordance with a user’s personal profile,
comprising:
an interactive device designed to provide self-generating
interaction with one or more users, said interactive device
having information obtaining means for independently obtaining
the identity of said one or more users and for determining at
least one aspect of the local environment in which said
interactive device is located at the time of operation of said
interactive device; and
a computer for providing instructions to said interactive
device for controlling the operation of said interactive device
in response to a stored personal profile of said one or more
users and said at least one aspect the local environment.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Gershman et al. (Gershman) 6,401,085 June 4, 2002
(filed: Mar. 5, 1999)
Claims 47-72 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Gershman.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellants regarding the above-noted rejections,
we make reference to the examiner's answer (mailed July 13, 2004)
for the examiner's complete reasoning in support of the
rejections, and to appellants' brief (filed May 10, 2004) and
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Application No. 09/915,448
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reply brief (filed September 1, 2004) for appellants' arguments
thereagainst. Only those arguments actually made by appellants
have been considered in this decision. Arguments which
appellants could have made but chose not to make in the brief
have not been considered. See 37 CFR § 41.37(c)(1)(vii).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we affirm-in-
part. We begin with independent claim 47.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v.
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Application No. 09/915,448
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Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939))
(internal citations omitted):
Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
If, however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught would
result in the performance of the questioned function, it
seems to be well settled that the disclosure should be
regarded as sufficient.
Appellants assert (brief, page 3) that:
The independent claims specifically set forth that
the interactive device is designed to provide self
generating interaction with one or more users. What
this means is that the device itself, on its own
initiative personal profiles and programs, will provide
certain actions with respect to the current user. For
example, if the interactive device is a toy, and the
toy knows that it is near a store, the device could say
“would you like to go shopping” without any input or
question provided by the user. There is no need to
provide user input into the device.
It is argued that Gershman is simply a PDA that provides
responses to inputs by a user, and (brief, page 4) that Gershman:
is not an interactive device designed to produce self-
generating action on its own initiative. The reactive
theme is set forth in numerous places in Gershman et
al. for example, in the field of the invention Gershman
states that the invention is directed to agent-based
system and more particularly to a mobile computing
environment that accesses the internet to obtain
product information for a user and provides tools for
collaborative computing.
Appellants add (id.) that:
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It can be clearly seen that the device of Gershman
reference is not an interactive self generating device
to which the present invention is directed, but instead
is directed to a general all purpose device that
provides information in response to requests.
Appellants further assert (id.) that "[t]he independent claims of
the present claims also set forth means for independently
obtaining the identity of one or more users." It is additionally
argued (brief, pages 4 and 5) that:
The Gershman reference fails to disclose:
1. providing interactive device;
2. providing self generating interaction with the
user;
3. providing independent means for obtaining the
identity of the user;
4. providing a computer for controlling the operation
of the interactive device in response to the stored
personal profile of the user and at least one aspect of
the local environment.
The examiner's position (answer, pages 3-5) is a general
discussion of Gershman and does not refer to any particular claim
by claim number. Nor does the examiner provide a one-to-one
correspondence for any of the claims. In the remarks, the only
argument answered by the examiner is the argument that Gershman
does not provide "self generating" interaction with one or more
users. The examiner asserts (answer, pages 5 and 6) that the
limitation in question represents the "main thrust" of
appellants' argument. According to the examiner, this limitation
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is met by the Electronic Valet 2602. The examiner gives the
example of when an integrated bio-sensor obtains certain
predefined data values, an appropriate emergency care provider
would be automatically contacted. In addition, data obtained
from sensors, GPS, camera, microphones and other user inputs
2600, may also be combined before being sent to the appropriate
service provider. For example, GPS position data may be sent
with the bio-sensor data to the emergency care provider, so that
the emergency care provider would know the patient's biological
data and the patient's location, so service could be provided.
Appellants respond (reply brief, page 2) that column 61 of
Gershman discloses a situation in which the PDA may automatically
send to selected services information based on a biosensor. It
is argued that this is not the same as an interactive device, and
that the system of Gershman is nothing more than an alarm system,
that is common in hospitals.
From our review of Gershman, we find that Gershman is
directed to a system that facilitates a web-based information and
retrieval system. A wireless phone or similar device with
Internet capability is combined with other peripherals to provide
a portable portal into the Internet. The wireless device prompts
a user to input information of interest to the user. The
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information is transmitted to a service routine which queries the
Web to find price, shipping and available information from
various Web suppliers. This information is formatted and
displayed on the hand-held device's screen. The user may then
use the device to place an order interactively (col. 3, lines 14-
25).
As shown in figure 17, consumer access devices can include
television, mobile telephones, computers, smart cards, laptop
computers, pocket organizers, vehicles and PDAs. Gershman
further discloses that an agent keeps statistics for each user,
and that these statistics are used in a manner similar to the
Tamagochi's virtual reality pet toy to encourage behaviors from
the user. The statistics recorded are frequency of login,
frequency of rating contents such as news articles, and activity
of agents, measured by the number of tasks they perform in a
certain period (col. 41, lines 53-61). Figure 17 discloses the
detailed logic associated with accessing the user's centrally
stored profile. Consumers can gain access to services from
devices such as their television, mobile phones, smart cards, gas
meters, water meters, kitchen appliances, security systems, PDAs,
etc. (col. 43, lines 61-63 and col. 44, lines 6-9.
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2 TechWeb TechEncyclopedia, ©1981-2005 the Computer Language Company. A
copy of the definition is enclosed with the Decision.
Figure 20 illustrates a display login implemented with an
agent 2000 that guides the user through the process of
interacting with the system to customize and personalize various
system components to gather information and interact with the
user's personal requirements (col. 45, lines 36-42). From the
disclosure of Gershman that, as shown in figure 20, the system's
PDA interacts with the user, we find the PDA of Gershman's system
to be an interactive device. We consider the term "interactive,"
as it would be understood by an artisan, to refer to the back-
and-forth dialog between the user and the computer2. We find no
definition of the term in appellant's specification that would
preclude the term from being defined as set forth, supra.
The Intelligent Agent Coordinator 2580 of figure 25 is also
the user's interface to the system. The Intelligent Agent
coordinator has four primary responsibilities:
1) monitoring user activities,
2) handling information requests,
3) maintaining each user’s profile, and
4) routing information to and from users and to and from the
other respective agents. (Gershman, col. 47, lines 47-51).
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Anytime a user triggers a sensor, the Intelligent Agent
Coordinator receives an "environmental cue." It is further
disclosed (col. 47, lines 53-61) that "[t]hese cues not only
enable the Intelligent Agent Coordinator to gain an understanding
where users are for information delivery purposes, but also learn
the standard patterns (arrival time, departure time, etc.) of
each person's life. These patterns are constantly updated and
refined to increase the system's intelligence when delivering
information." The Intelligent Agent Coordinator also tries to
determine where each user is physically located throughout the
day for routing purposes (col. 48, lines 28-31). As an example,
if a user were at her desk using the web client, the Intelligent
Agent Coordinator would know to send any necessary information to
her PC. As an alternative, if the Intelligent Agent Coordinator
had just received an indication (via the key card reader next to
the exit) that the person had left the building, and minutes
later an urgent message is received, the Intelligent Agent
Coordinator, knowing the person has left the building, will send
the text of the urgent message to the hand held device (col. 48,
lines 40-44 and 46-56).
From the disclosure that the system will recognize that a
person has left the building and send an urgent message to the
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person's PDA instead of their PC, we find that the interactive
device of Gershman provides self-generating interaction with the
user.
Gershman further discloses an Electronic Valet in the form
of a hand held wireless computer. Integrated into the electronic
Valet are various sensors, such as GPS, Bio-Sensors, and Environ-
Sensors (col. 60, lines 50-55). The Electronic Valet 2602
receives input data from sensors, GPS, camera, microphone, and
other user inputs 2600 integrated with the hand held wireless
device, as shown in figure 26 (col. 60, lines 61-65). With the
Electronic Valet, the user may select a service to use in concert
with appropriate data obtained from sensors, GPS, etc. For
example, when an integrated bio sensor obtains certain predefined
data values, an appropriate emergency care person would be
automatically contacted. In addition, GPS position data may be
sent with the bio-sensor data to the emergency care provider, so
that the emergency care provider would then know the patient's
biological data and the location of the patient, so that
appropriate service could be provided (col. 61, lines 34-51).
From the disclosure of Gershman, we find that when the bio-
sensors obtain certain predefined data values, the emergency care
provider is provided with the patient's biological data as well
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as the patient's location. From the disclosure of using GPS to
track the patients location, we find a teaching of determining at
least one aspect of the local environment (location). From this
disclosure and the additional disclosure (col. 68, line 46
through col. 70, line 10) that the bio-sensors include Pressure
Transducers, Volumetric Sensors, Defibrillator, respiratory
sensors such as strain gauges, etc., we find that Gershman
discloses information obtaining means for obtaining information
with respect to the user. Moreover, from the disclosure of
Gershman (col. 70, lines 2-4) of utilizing the integrated
defibrillator, we find a teaching of the system providing
instructions to the interactive device (i.e., the PDA with
integrated Defibrillator), for controlling the operation of the
interactive device (i.e., operating the defibrillator).
However, we find no disclosure, and the examiner has not
pointed to any disclosure, of independently obtaining the
identity of the user. We are cognizant of the fact that the
patient, in need of medical assistance, is identified to the
emergency care provider along with the patient's biometrics and
location. However, claim 47 requires independently obtaining the
identity of the user, not transmitting the identity of the user.
Although the emergency service provider will determine the
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identity of the user without any input from the user him/her
self, the claim requires that it is the interactive device that
has information obtaining means for independently obtaining the
identity of the user. In Gershman, the PDA is already aware of
who the user is, and is measuring the user's biometrics.
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of claim 47.
Accordingly, the rejection of claim 47 under 35 U.S.C. § 102(e)
as being anticipated by Gershman is reversed. As claims 48-64
depend from claim 47, the rejection of claims 48-64 under 35
U.S.C. § 102(e) is reversed.
Turning to independent claims 65 and 69, we reach, for the
reasons which follow, the opposite conclusion. Notwithstanding
appellants' assertion (brief, page 4) that "[t]he independent
claims of the present claims also set forth means for
independently obtaining the identity of one or more users "
(underlining added), we find that this limitation is not found in
either claim. Appellants have not provided any arguments for
these claims, but rather set forth (brief, page 2) that these
claims stand or fall with claim 47. Thus, as to these claims, we
consider appellants' arguments to the extent that the limitations
argued for claim 47 apply to claims 65 and 69. Based upon our
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findings, supra, with respect to the rejection of claim 47, we
will sustain the rejection of claims 65 and 69 because neither
claim recites independently obtaining the identity of the user,
but rather that the interactive device obtains data with respect
to the user. As set forth, supra, this language, as broadly
recited in claims 65 and 69, is met by Gershman. Accordingly,
the rejection of claims 65 and 69 is affirmed. As claims 66-68
and 70-72 depend from claims 65 and 69, and have not been argued
by appellants, claims 66-68 and 70-72 fall with claims 65 and 69.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
47-64 under 35 U.S.C. § 102(e) is reversed. The decision of the
examiner to reject claims 65-72 under 35 U.S.C. § 102(e) is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a)(1)(iv)(effective September 13, 2004).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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MILTON S. SALES
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
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