Ex Parte Cummins

Patent Trial and Appeal Board

Aug 21, 2017

14304021 (P.T.A.B. Aug. 21, 2017)

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.
14/304,021 06/13/2014 Oran CUMMINS 0076412-000309 6101
21839 7590 08/23/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
TZENG, FENG-TZER
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORAN CUMMINS
Appeal 2017-005019
Application 14/304,0211
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, 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 1—9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is MasterCard
International Inc. App. Br. 2.
Appeal 2017-005019
Application 14/304,021
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to a
voice-controlled computer system comprising a headset with a heads up
display (HUD). Spec. 11.
Representative Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and labeling added):
1. A voice-controlled computer system comprising:
a headset with a heads up display (HUD),
[LI] wherein when the system requires a user to verbally
enter an alphanumeric security code, the system is configured to
display on the HUD, to the user, a plurality of different pairs of
alphanumeric characters, from which the user may verbally
select, each pair of the plurality of different pairs of
alphanumeric characters including a first character and an
associated,, randomly generated second character,
[L2] wherein the first character of a pair of the plurality
of different pairs of alphanumeric characters is a character of
the alphanumeric security code to be entered, and
wherein the system is configured to receive a verbal entry
of the associated second character of the pair of the plurality of
different pairs of alphanumeric characters displayed on the
HUD and decipher the verbal entry of the associated second
character as equivalent to entry of the first character.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July 8, 2016); Reply Brief ("Reply Br.," filed Feb. 10, 2017); Examiner's
Answer ("Ans.," mailed Jan. 17, 2017); Final Office Action ("Final Act.,"
mailed Feb. 11, 2016); and the original Specification ("Spec.," filed
June 13, 2014).
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Application 14/304,021
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Rosener US 2012/0050008 A1 Mar. 1,2012
Cragun et al. ("Cragun") US 2013/0297316 A1 Nov. 7, 2013
Rejection on Appeal
Claims 1—9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cragun and Rosener. Final Act. 4.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 4—13), we decide the
appeal of the rejection of claims 1—9 on the basis of representative
independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUE
Appellant argues (App. Br. 4—12; Reply Br. 2-4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Cragun and Rosener is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a voice-controlled computer system that includes, inter alia,
limitations LI and L2, as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
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Application 14/304,021
Appellant could have made but chose not to make in the Briefs so that we
deem any such arguments as waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claim 1 and,
unless otherwise noted, we incorporate herein by reference and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellant contends:
The system of Cragun does not, as in the present claims,
display a first character and a randomly generated second
character, from which the user may select. Nor does the system
of Cragun receive a verbal entry of a randomly generated and
displayed second character, which is subsequently deciphered
as an associated first character.
App. Br. 9.
We are not persuaded by Appellant's argument because Appellant is
arguing the references separately. "[0]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Further
[t]he 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.
Id. at 425. Our reviewing court guides: "A prima facie case of obviousness
is established when the teachings from the prior art itself would appear to
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have suggested the claimed subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976)).
Here, the Examiner cites Cragun for teaching or suggesting "the
system requires a user to verbally enter an alphanumeric security code."
Final Act. 4. However, the Examiner cites Rosener, not Cragun, for
teaching or suggesting the portion of limitation LI that is "the system is
configured to display on the HUD, to the user, a plurality of different pairs
of alphanumeric characters, from which the user may verbally select, each
pair of the plurality of different pairs of alphanumeric characters including a
first character and an associated, randomly generated second character," and
also limitation L2 in its entirety. Final Act. 6—7, Ans. 3^4.
We agree with the Examiner's finding that Cragun's system teaches
requiring "a user to verbally enter" a password. Final Act. 4; Ans. 4—5,
(citing Cragun, 116, Abstract). We agree with the Examiner's finding
because Cragun's system, which provides for hands-free, voice entry of
passwords and applying a conversion rule to the voice input, teaches or at
least suggests "a user to verbally enter an alphanumeric security code," as
recited in claim 1. Cragun, 116, Abstract.
Regarding the Rosener reference, Appellant contends "[T]he
word/term 'HORSE' includes 5 characters (e.g., letters 'H', 'O', 'R', 'S', and
'E'). The word 'HORSE' is considered an 'element' of a pass-set (code). It is
not a character, as alleged by the Examiner." App. Br. 10. Appellant also
contends "Rosener does not disclose that each 'character' of the five
characters, e.g., the 'H', 'O', 'R', 'S', and 'E,' of the element HORSE is
associated with a randomly generated second character." Id.
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Appellant further argues:
Thus, Rosener does not disclose "display ... a plurality of
different pairs of alphanumeric characters . . . each pair of the
plurality of different pairs of alphanumeric characters
including a first character and an associated, randomly
generated second character," as recited in claim 1.
Id.
Our reviewing court holds, "[i]n the patentability context, claims are
to be given their broadest reasonable interpretations . . . limitations are not to
be read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning
assigned to a term "must be sufficiently clear in the specification that any
departure from common usage would be so understood by a person of
experience in the field of the invention." Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A
patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
description."). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
Applying this guidance here, we find Appellant's argument
unpersuasive. (See App. Br. 10). We find a preponderance of the evidence
supports the Examiner's finding that Rosener's pass-set entry, containing
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letters, numbers and special symbols, teaches or at least suggests the
disputed limitation "first character" of "pairs of alphanumeric characters," as
recited in claim 1. Ans. 3^4 (citing Rosener || 27, 37, 40-41).
We also agree with the Examiner's finding that Rosener's randomized
index number teaches or at least suggests the disputed limitation "an
associated randomly generated second character," as recited in claim 1. Id.
We agree with the Examiner's findings because Rosener's secure pass-set is
similarly used as a password to access resources. Rosener 140. Rosener's
user, selecting from a menu containing randomized index numbers
associated with the password characters, teaches or at least suggests "each
pair of the plurality of different pairs of alphanumeric characters including a
first character and an associated, randomly generated second characteras
recited in claim 1. Rosener || 27, 37, 40-41. We further note Appellant has
not cited to any definitions of the disputed claim terms in the Specification
that would preclude the Examiner's broader reading.3
After reviewing the respective teachings and suggestions of the cited
references, we find Appellant's invention is simply a combination of known
elements that realize a predictable result. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR, 550 U.S. at 418.
The skilled artisan would "be able to fit the teachings of multiple patents
3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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together like pieces of a puzzle" since the skilled artisan is "a person of
ordinary creativity, not an automaton." Id. at 420-21. An obviousness
analysis is not confined to the explicit disclosure of the references and can
consider the inferences a skilled person would make, see KSR, 550 U.S. at
418—19; the test is what the combined teaching of the references would
suggest to one of ordinary skill in the art. See Keller, 642 F.2d at 425.
We are not persuaded by Appellant's arguments because Appellant
has not demonstrated that the Examiner's proffered combination of
references would have been "uniquely challenging or difficult for one of
ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007), nor has Appellant presented evidence that
this incorporation yielded more than expected results. Moreover, Appellant
has not provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Appellant further argues "[sjecond, Rosener is unconcerned with
verbal entry of displayed alphanumeric codes, as in the present claims and
as in Cragun. Rather, Rosener is concerned with securing the physical entry,
e.g., on a touch screen, of a code." App. Br. 10.
We are not persuaded by Appellant's argument because Appellant is
again arguing the references separately. The Examiner cites Cragun, not
Rosener, for the limitation "system requires a user to verbally enter." Final
Act. 4; Ans. 4—5.
Therefore, we do not find error in the Examiner's reliance on the
combined teachings and suggestions of Cragun and Rosener to render
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claim 1 obvious under § 103, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of representative independent claim 1, and
grouped claims 2—9 which fall therewith. See Claim Grouping, supra.4
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-4) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejection of
claims 1—9 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
4 Although Appellant presents a separate section for independent claim 7
(App. Br. 12—13), no new substantive arguments are presented. Instead,
Appellants state "[Arguments similar to those presented above with respect
to claim 1 are also applicable to independent claim 7." App. Br. 13.
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