Ex Parte Culbert et al

Patent Trial and Appeal Board

Mar 10, 2014

12005817 (P.T.A.B. Mar. 10, 2014)

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.
12/005,817 12/28/2007 Michael Culbert 04860.P5355 5393
45217 7590 03/11/2014
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
WANG, JACK K
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
03/11/2014 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 MICHAEL CULBERT,
DAVID JOHN TUPMAN, DANIEL SHAWN KEEN,
ANTHONY JOSEPH GUETTA, RYAN JEFFREY DU BOIS,
VICTOR M. TISCARENO, DAVID HARRINGTON,
STEPHEN JOHN CHICK, JAHAN MINOO,
JAY STEVEN LAEFER, KEVIN SAUL,
and SCOTT FORSTALL
____________

Appeal 2011-011036
Application 12/005,817
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, BRUCE R. WINSOR,
and LINZY T. McCARTNEY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/005,817

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Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-23, which constitute all the claims pending in this application.
Claims 24 and 25 are canceled (App. Br. 17). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ disclosure “relates to personal media devices and, more
particularly, to controlling input and output characteristics of personal media
devices based on associated conditions.” Spec. ¶ 0001. Claim 1, which is
illustrative, reads as follows:
1. A media device comprising:
a sensor for generating a sensor signal based on at least
one current environmental condition associated with the media
device,
a temporal source for generating a temporal signal
associated with the media device, wherein the temporal signal
includes at least one of a current time and a current date,
a data store for storing a plurality of known condition
vectors in a condition vector database, wherein each known
condition vector identifies an environmental condition and a
temporal condition, and wherein at least one of the known
condition vectors identifies a temporal condition that includes
at least one of a time data field and a date data field, and
a processor for controlling an incoming call alert of the
media device by assigning a first weight to the sensor signal
and a second weight to the temporal signal, combining the
weighted sensor and temporal signals to form a received
condition vector, comparing the received condition vector with
the stored plurality of known condition vectors, selecting a

1 The real party in interest identified by Appellants is Apple Inc. App. Br. 3.
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closest matching condition vector from the plurality of known
condition vectors based on the received condition vector, and
determining the incoming call alert of the media device based
on the closest matching condition vector.

The Examiner relies on the following prior art in rejecting the claims:
Sorvari US 2004/0043758 A1 Mar. 4, 2004
Zernovizky US 2006/0153358 A1 July 13, 2006
Boyd US 7,353,047 B2 Apr. 1, 2008
Tam US2008/0219672 A1 Sept. 11, 20082
Claims 1, 2, 6-14, and 18-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Zernovizky and Boyd. Ans. 4-8.
Claims 3, 4, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zernovizky, Boyd, and Tam. Ans. 8-9.
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zernovizky, Boyd, and Sorvari. Ans. 9-10.
Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zernovizky and Tam. Ans. 11-12.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zernovizky, Tam, and Sorvari. Ans. 12-13.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Mar. 7, 2011; “Reply Br.” filed June 15, 2011) and the Answer
(“Ans.” mailed Apr. 15, 2011) for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the

2 The Tam reference derives from Application 11/871,725, filed Oct. 12,
2007, claiming priority to Provisional Application 60/906,124, filed Mar. 9,
2007.
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Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
Based on Appellants’ arguments, we discuss the appeal with
reference to claim 1 and by considering the prior art status of the Tam
reference. The issues raised by Appellants’ contentions are as follows:
Does the combination of Zernovizky and Boyd teach or suggest
assigning a first weight to the sensor signal and a second weight
to the temporal signal, combining the weighted sensor and
temporal signals to form a received condition vector, comparing
the received condition vector with the stored plurality of known
condition vectors, selecting a closest matching condition vector
from the plurality of known condition vectors based on the
received condition vector, and determining the incoming call
alert of the media device based on the closest matching
condition vector
(the “disputed limitation”), as recited in claim 1?
Is Tam available as a reference against the present application under
35 U.S.C. §§ 103(a) and 103(c)(1)?

ANALYSIS
Claim 1
The Examiner finds that Zernovizky teaches the disputed limitation.
Ans. 4 (citing Zernovizky, ¶ 0065; Fig. 2). The Examiner explains that
[i]n order to do comparison, it is inherently [sic] to convert the
signal received from the sensors into a numerical or digital
form, and the output signal from the conversion is often called a
vector in mathematical quantity.
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Therefore, the claimed limitation is inherent within
Zernovizky reference, which solves the same problem and yield
[sic] same results as claimed by Appellant[s].
Ans. 14; see Zernovizky, ¶¶ 0062, 0065.
Appellants contend that Zernovizky does not inherently or explicitly
teach or suggest the disputed limitation because the use of a “vector” is not
necessarily taught by Zernovizky, and further, Zernovizky does not
necessarily require weighting of the vector components. Reply Br. 3.
“Inherency. . . 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.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citation and internal quotation marks omitted). Inherency
requires that “the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464
(BPAI 1990).
Appellants’ Specification uses the term “vector” to mean a 1xn or an
nx1 matrix of values, i.e., a one-dimensional array of values. See, e.g.,
Spec., Fig. 8; ¶ 0026. We find that, giving “vector” its broadest reasonable
interpretation, one of ordinary skill in the art would have understood the
values making up Zernovizky’s “signaling profile” (Zernovizky, ¶ 0065) to
be a be a one-dimensional array of values, i.e., a “known condition vector,”
as recited in claim 1, and the values (i.e., specific ring tone and ambient
noise) compared to the signaling profile to be a one-dimensional array of
values, i.e., a “received condition vector,” as recited in claim 1.
Accordingly, we find that Zernovizky explicitly teaches the use of vectors.
However, we agree with Appellants that the passages of Zernovizky
cited by the Examiner (Zernovizky, ¶¶ 0062, 0065) do not expressly teach or
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suggest weighting the values that make up the received condition vector.
Furthermore, we agree with the Appellants that weighting the values is not
inherently taught by the passages (id.) cited by the Examiner or the
additional passages (Zernovizky, ¶¶ 0066-0067) cited by Appellants. See
Reply Br. 3-4. Appellants explain as follows:
For example, Zernovizky discloses that a specific ring-
tone is selected in accordance with a calling party identification,
while the loudness of the ring-tone is determined by the
ambient noise measured by the noise sensor. See paragraph
[0065]. In this example, it is not necessary to assign a weight to
the signal identifying the calling party and another weight to the
noise sensor signal, in order to increase or decrease the relative
value of one signal with respect to the other signal. The two
signals are used to determine different aspects of the ring-tone,
namely the specific ring-tone and the loudness of the ring-tone.
The noise sensor signal does not affect which ring-tone is
selected, and the calling party identification does not affect the
loudness of the ring-tone. Thus, the calling party identification
and the noise sensor signal are not competing factors that need
to be weighted in order to determine a call alert. . . .
In another example, Zernovizky discloses that the
loudness of the call alert is determined by both a loudness user
preference and the measured ambient noise level. See
paragraph [0065]. Zernovizky explains that a user can select a
loudness of a speaker from several discrete loudness settings;
certain intermediate values of speaker loudness are also
available that are not specifiable through the user interface but
instead are provided in accordance with the measured ambient
noise level. See paragraph [0066]. In this example, it is not
necessary to assign weights to the loudness user preference and
the measured ambient noise level, in order to increase or
decrease the relative value of the loudness preference with
respect to the measured noise level. The loudness preference
and the measured noise level are not competing factors that are
used to determine the loudness of the ring-tone.
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Id. Appellants persuasively explain why the cited passages of Zernovizky
do not necessarily require weighting, see Levy, 17 USPQ2d at 1464.
Further, Appellants persuasively explain why the embodiments described in
the cited passages of Zernovizky would not benefit from weighting the
values.
Appellants have persuaded us of error in the rejection of claim 1.
Accordingly, we do not sustain the rejection of (1) claim 1; (2) claim 13,
which was argued together with claim 1; (3) and claims 2-12 and 14-20,
which depend from claim 1 and 13 respectively, In re Fine , 837 F.2d 1071,
1076 (Fed. Cir. 1988).
The Tam Reference
Claims 3, 4, 15, 16, and 21-23 were rejected under 35 U.S.C. § 103(a)
relying at least in part on Tam. Ans. 8-9, 11-13. The application for patent
that is the subject of the present appeal (the “present application”) was filed
December 28, 2007. The Tam reference was published September 11, 2008,
and derives from an application filed October 12, 2007, which in turn claims
priority to a provisional application filed March 9, 2007. It is undisputed
that the Tam reference qualifies as prior art against the present application, if
at all, only under one or more of 35 U.S.C. §§ 102(e)-(g), and, more
particularly, that it qualifies, or may qualify, under § 102(e). See App. Br.
10; see generally Ans. 14-15.
Subject matter developed by another person, which
qualifies as prior art only under one or more of subsections (e),
(f), and (g) of section 102 of this title, shall not preclude
patentability under this section [103] where the subject matter
and the claimed invention were, at the time the claimed
invention was made, owned by the same person or subject to an
obligation of assignment to the same person.
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35 U.S.C. § 103(c)(1).
Appellants contend that both Tam and the present application “were
and are owned by the same person [(i.e., Apple, Inc.)], and therefore Tam is
not proper prior art reference in this case.” App. Br. 11.
The Manual of Patent Examining Procedure sets forth a procedure for
establishing common ownership of, or the obligation ot commonly assign,
patent applciations:
The applicant(s) or the representative(s) of record have the best
knowledge of the ownership of their application(s) and
reference(s), and their statement of such is sufficient evidence
because of their paramount obligation of candor and good faith
to the USPTO.
. . . .
“Application X and Patent A were, at the time the
invention of Application X was made, owned by Company Z.”
This statement alone is sufficient evidence to disqualify
Patent A from being used in a rejection under 35 U.S.C. 103(a)
against the claims of Application X.
In rare instances, the examiner may have independent
evidence that raises a material doubt as to the accuracy of
applicant’s representation of either (1) the common ownership
of, or (2) the existence of an obligation to commonly assign, the
application being examined and the applied U.S. patent or U.S.
patent application publication reference. In such cases, the
examiner may explain why the accuracy of the representation is
doubted, and require objective evidence of common ownership
of, or the existence of an obligation to assign, the application
being examined and the applied reference as of the date of
invention of the application being examined..
MPEP § 706.02(l)(2)(II) (8th ed., rev. 9, 2012).
Here the Examiner has pointed to objective evidence raising a
material doubt as to the accuracy of Appellants’ representation of common
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ownership of Tam and the present application. “In this case the Tam
reference was assigned to Apple Inc. on January 22, 2008; where as [sic] the
instant application was filed on December 28, 2007.” Ans. 15. In other
words, the Examiner points to evidence that raises a doubt that the Tam
reference was owned by, or subject to an obligation of assignment to, Apple
Inc. as of December 28, 2007.
Appellants provide the following statement:
In accordance with M.P.E.P. §706.02(l)(2)(II) to
establish an obligation of assignment to the same organization
at the time the invention was made the Appellants submit that
Application No. 12/005,817 (“the application at issue”) and
Tam (U.S. Patent Publication No. 2008/0219672) were, at the
time the invention of the application at issue was made, subject
to an obligation of assignment to Apple Inc. because the
inventors [of Tam], John Tam, David Tupman, and Steve
Hotelling, were employees of Apple Inc. at the time of filing of
the application at issue, namely December 28, 2007.
Reply Br. 6.
Appellants’ statement of facts, i.e., that the Tam inventors were
employees of Apple Inc. as of the December 28, 2007, filing date of the
present application neither supports nor refutes the conclusion that the
invention disclosed by Tam was subject to an obligation of assignment to
Apple Inc. by virtue of the inventors’ employment by Apple Inc. See, e.g.,
Paul C. Van Slyke and Mark M. Friedman, Employer's Rights to Inventions
and Patents of Its Officers, Directors and Employees, 18 AIPLA Q.J. 127,
134 (1990) (“Inventions made before the commencement of employment
cannot belong to the new employer simply because the inventor has,
subsequent to the making of the invention, chosen to enter into the employ
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of the employer.”). Such obligation would arise by virtue of the inventors’
employment as of the invention date of the invention disclosed by Tam.
On this record, we are constrained to find that Appellants have failed
to show that Tam is disqualified as prior art against the present application.
Accordingly, we must sustain the rejection of claims 21-23. Although we
sustain the rejection on the record before us, Appellants are not precluded
from submitting further statements and objective evidence to establish that
the subject matter described in Tam was subject to an obligation to assign to
Apple, Inc. by virtue of the employment of the Tam inventors by Apple, Inc.
at the time the subject matter of Tam was invented. We note that we have,
for reasons discussed above, declined to sustain the rejection of claims 3, 4,
15, and 16.

DECISION
The decision of the Examiner to reject claims 21 and 23 under
35 U.S.C. § 103(a) as unpatentable over Zernovizky and Tam is affirmed.
The decision of the Examiner to reject claim 22 under 35 U.S.C.
§ 103(a) as unpatentable over Zernovizky, Tam, and Sorvari is affirmed.
The decision of the Examiner to reject claims 1-20 is reversed.
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-IN-PART

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