Ex Parte Demicell

Patent Trial and Appeal Board

Mar 2, 2017

13214030 (P.T.A.B. Mar. 2, 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.
13/214,030 08/19/2011 DANE DEMICELL VSPX.P101 9419
88114 7590
Charles Shemwell
P.O. Box 70307
Sunnyvale, CA 94086
03/06/2017 EXAMINER
PEREZ FUENTES, LUIS M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
charlie @ shemwellaw. com
intake@ shemwellaw.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANE DEMICELL
Appeal 2016-004159
Application 13/214,030
Technology Center 2400
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004159
Application 13/214,030
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—12 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis,
formatting, and brackets added):
1. A method of operation within a building inspection
system that enables remote determination of compliance with a
government-mandated building criterion as part of an official
inspection process, the method comprising:
[A.] establishing a communication channel between a mobile
computing device operated at a building site and an off­
site computing device operated by a building inspector
having official authority to certify or deny certification
of building criterion compliance',
[B.] receiving, within the off-site computing device via the
communication channel,
(i) global-positioning-system (GPS) coordinates of the
mobile computing device generated and
transmitted by the mobile computing device, and
(ii) live video of the building site generated and
transmitted by the mobile computing device;
[C.] rendering the live video of the building site on a display of
the off-site computing device to enable remote viewing
of the building site;
[D.] transmitting, from the off-site computing device to the
mobile computing device via the communication
channel, one or more instructions for manipulating the
mobile computing device such that the live video yields
one or more images that enable determination whether a
selected feature of the building site complies with the
government-mandated building criterion',
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[E.] confirming, within the off-site computing device based on
information transmitted by the mobile computing device,
compliance with one or more rules supplied to the
mobile computing device to automate portions of the
inspection process, the one or more rules including
[(i)] at least one rule for verifying that the GPS
coordinates of the mobile computing device
correspond to a location of the building site, and
[(ii)] at least one rule for verifying that the one or more
images that enable determination whether the
selected feature of the building site complies with
the government-mandated building criterion have
been generated at a date and time corresponding
to the inspection process',
[F.] receiving, within the off-site computing device, operator
input from the building inspector indicating a
determination that the one or more images of the live
video demonstrate compliance of the selected feature of
the building site with the government-mandated
building criterion',
[G.] storing, within a data storage media accessible by the
off-site computing device, an official record certifying
building criterion compliance with respect to the
selected feature of the building site in response to
receiving the operator input indicating the determination
that the one or more images of the live video
demonstrate compliance of the selected feature of the
building site with the government-mandated building
criterion ', and
[H.] transmitting, from the off-site computing device to the
mobile computing device, confirmation of the
recordation of building criterion compliance with
respect to the selected feature of the building site.
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Application 13/214,030
Rejections
The Examiner rejected claims 1—12 and 21 under 35U.S.C. § 101
because the claimed invention is directed to an abstract idea, and is,
therefore, rejected as ineligible subject matter under 35 U.S.C. § 101 based
upon consideration of all of the relevant factors with respect to the claim
invention as a whole.1
The Examiner rejected claims 1—12 and 21 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Terayoko (US 8,629,906 B2;
issued Jan. 14, 2014) and Deaton et al. (US 2006/0235611 Al; pub. Oct. 19,
2006).2
Section 101 Case Law
Eligibility under 35 U.S.C. § 101 is determined using the Alice/Mayo
framework. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
The first step involves determining whether the claims at issue are directed
to a patent-ineligible concept. Id. at 2355. The second step involves
determining whether the elements of the claim contain an inventive concept
sufficient to transform a claimed abstract idea into a patent-eligible
application. Mat2357.
1 We select claim 1 as representative. Separate patentability is not argued
for claims 2—12 and 21. Except for our ultimate decision, the § 101 rejection
of claims 2—12 and 21 is not discussed further herein.
2 We select claim 1 as representative. Separate patentability is not argued
for claims 2—12 and 21. Except for our ultimate decision, these claims are
not discussed further herein.
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The Federal Circuit held that the second step in the Alice/Mayo
framework requires determination of whether the claimed inventive concept
is a technical improvement:
The district court thus concluded [wrongly] that BAS COM had
not asserted adequately that the claims disclose an inventive
concept because the limitations, “considered individually, or as
an ordered combination, are no more than routine additional
steps involving generic computer components and the Internet,
which interact in well-known ways to accomplish the abstract
idea of filtering Internet content.” [District Court Order, 107
F.Supp.3d 639, 655 (N.D.Tex. 2015).]
We agree with the district court that the limitations of the claims,
taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself. BASCOM does
not assert that it invented local computers, ISP servers, networks,
network accounts, or filtering. Nor does the specification
describe those elements as inventive.
However, we disagree with the district court’s analysis of the
ordered combination of limitations. ... As is the case here, an
inventive concept can be found in the non-conventional and non­
generic arrangement of known, conventional pieces. . . . [T]he
patent describes how its particular arrangement of elements is
a technical improvement over prior art ways of filtering such
content.
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349-50 (Fed. Cir. 2016), bracketed matter and emphasis added.
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
[T]he Examiner’s patent eligibility analysis and resulting
rejections under 35 USC § 101 have been rendered moot by the
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2014 Interim Guidance on Patent Subject Matter Eligibility made
effective December 16, 2014 (approximately three weeks after
the mailroom date of the Final Office Action). Because the 2014
Interim Eligibility Guidance (hereinafter the “Eligibility
Guidance”) applies to all applications filed before, on or after
December 16, 2014, de novo review by the Office is required in
view of the Eligibility Guidance and underlying case law.
App. Br. 7, emphasis added.
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
[Cjlaim 1 does not recite a mathematical algorithm, nor does it
recite a fundamental economic or commercial practice. Rather,
the claim addresses a longstanding challenge in the building
industry in which workers are idled while waiting for inspections
to commence and be completed by an on-site building inspector
(see specification paragraphs 0072-0075). Nor is the claim
similar to other claims found by the courts to recite abstract ideas.
App. Br. 10, emphasis added.
3. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
[Wjhatever the Examiner may mean by “concept of selecting
concepts,” it is clear that “determining,” “confirming” and
“verifying” are merely verbs, not abstract ideas — and certainly
not in any way similar to ideas previously found by the courts to
be abstract. Moreover, even assuming arguendo that
“determining” “having authority” “confirming” or “verifying”
may constitute a judicial exception to the statutory categories of
patent eligible subject matter, claim 1 as a whole clearly does not
seek to tie up every possible instance of “determining” or
“having authority” etc. Accordingly, under the streamlined
eligibility analysis set forth in section I.B.3 of the Eligibility
Guidance, claim 1 is patent eligible.
App. Br. 10, emphasis added.
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[T]he Examiner misapplied the machine-or-transformation
test... by failing to analyze appellant’s claim 1 as a whole,
basing conclusions instead on a small number of selectively
extracted features and thus contravening the Supreme Court’s
admonition in this exact regard.
Reply Br. 3 n.5, emphasis added.
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he building inspector need not be present at the building site
and instead operates an “off-site computing device” to which live
images of the inspection site are transmitted by an onsite mobile
computing device.
App. Br. 11, emphasis added.
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Because the building inspector is off-site and the operator of the
mobile computing device may be virtually anyone (e.g., an
employee of a building contractor), the method includes fraud
prevention mechanisms.
App. Br. 11, emphasis added.
6. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[N] either Terayoko nor Deaton discloses or suggests the
following features of claim 1:
• receiving, within the off-site computing device via the
communication channel ... live video of the building
site generated and transmitted by the mobile computing
device;
• rendering the live video of the building site on a display
of the off-site computing device to enable remote
viewing of the building site.
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.... Nowhere does Terayoko disclose or suggest that the
mobile terminal transmit live video of the building site to an off­
site computing device operated by a building inspector, much
less rendering the live video of the building site on a display of
the off-site computing device to enable remote viewing of the
building site.
App. Br. 11—12, emphasis added.
7. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Examiner argues that Terayoko discloses live video
generation and transmission because “shooting video is
displayed real-time on the image display apparatus 48 by
supplying the image display apparatus 48 with a video signal
generated from the image data.” (Final Office Action, page 5)[.]
This argument is untenable. Image display apparatus 48 is merely
the display screen of the on-site mobile terminal itself (see
Terayoko, col. 6, lines 33-42 and 57-65, referring to camera-
mounted mobile terminal shown in Figure 3) — nowhere does
Terayoko disclose or suggest that the mobile terminal transmits
live video to an off-site computing device as claim 1 requires
App. Br. 12, emphasis added.
8. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a):
Nowhere does Deaton disclose or suggest that portable
computing system 200 transmits live video of the building site to
an off-site computing device operated by a building inspector,
much less rendering the live video of the building site on a
display of the off-site computing device to enable remote
viewing of the building site, nor is any such disclosure pointed
out in the Final Office Action. As with Terayoko, such live video
transmission and rendering would be pointless in the system of
Deaton as the inspector is already live at the building site.
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Because Deaton fails to disclose transmission of live video
to an off-site computing device and rendering the live video of
the building site on an off-site computing device, Deaton
necessarily fails to disclose transmitting, from the off-site
computing device to the mobile computing device, one or more
instructions for manipulating the mobile computing device such
that the live video yields one or more images that enable
determination whether a selected feature of the building site
complies with the government-mandated building criterion.
App. Br. 13—14, emphasis added.
9. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[A]s can readily be appreciated, such live video transmission and
rendering would be pointless in the system of Terayoko as the
inspector is already present at the building site.
App. Br. 12, emphasis added.
10. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Examiner also argues that the claim 1 recitation of
“rendering the live video of the building site on a display of the
off-site computing device to enable remote viewing” is met by
Terayoko Figure 19c and Terayoko’s discussion of a printing
device for outputting a quality audit report (Final Office Action,
page 6).
Appellant disagrees. Terayoko’s complete and total
disclosure with respect to Figures 19A, 19B and 19C is
“inspection and maintenance of a plant” (Terayoko, col. 5, lines
15-17 and col. 18, lines 61-62). As noted above, Terayoko
contains no disclosure whatsoever of rendering of live video on
the display of an off-site computing device. ... To draw any
conclusion beyond what Terayoko specifically discloses is mere
speculation and — to the extent that speculation borrows from the
language of appellant’s claims — impermissible hindsight.
App. Br. 12—13, emphasis added.
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11. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a):
Because Terayoko fails to disclose transmission of live video to
an off-site computing device and rendering the live video of the
building site on a display of the off-site computing device,
Terayoko necessarily fails to disclose transmitting, from the off­
site computing device to the mobile computing device, one or
more instructions for manipulating the mobile computing device
such that the live video yields one or more images that enable
determination whether a selected feature of the building site
complies with the government-mandated building criterion.
App. Br. 13, emphasis added.
12. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a):
[Bjecause Terayoko requires the building inspector to be on site,
Terayoko necessarily fails to disclose “receiving, within the off­
site computing device, operator input from the building inspector
indicating a determination that the one or more images of the live
video demonstrate compliance of the selected feature of the
building site . . . ”.
App. Br. 13, emphasis added.
13. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a):
[Wjhile Terayoko discloses a GPS terminal within its mobile
terminal (see Fig. 3 and accompanying description), Terayoko
contains no disclosure or suggestion of “confirming, within the
offsite computing device based on information transmitted by the
mobile computing device, compliance with one or more
rules ...” as required by claim 1. Again, such verifications
would be pointless in Terayoko as the inspector is required to be
on site (instead of operating the off-site computing device) and
thus can self-verify the location of the mobile terminal and the
date and time of the image generation.
App. Br. 13, emphasis added.
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Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments (Appeal Brief and Reply Brief) that the Examiner
has erred.
Rejection under 35 U.S.C. §101
As to Appellant’s above contention 1, we disagree. Initially, we
construe Appellant’s procedural argument that “de novo review by the
Office is required” (in light of new Eligibility Guidance) to mean that —de
novo examination by the Examiner is required—, rather than —de novo appeal
review by the Board is required— We reach this result because de novo
appeal review by the Board of § 101 rejections is the norm, and construing
the argument as meaning this would render the argument a nullity. Having
construed the argument as —de novo examination by the Examiner is
required—, we turn to Appellant’s arguments.
First, we disagree with Appellant’s primary argument that new
guidance from the Director of the USPTO to the examiners serves to render
moot any outstanding rejection implicated in that guidance. Appellant cites
no case law to that effect, nor do we know of any. Rather, we conclude that,
absent an explicit statement of mooting effect in the guidance itself, it is the
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underlying case law, and the guidance set forth in light of the case law, that
is determinative of whether a rejection is rendered moot. Appellant cites no
portion of the Eligibility Guidance as indicating such a mooting effect, nor
does our review thereof find any. Appellant later argues (Reply Br. 2) the
2014 Interim Eligibility Guidance explicitly “supersedes” any earlier
Eligibility Guidance. We agree—but that does not resolve the mootness
issue. Both the 2014 Interim Eligibility Guidance and the Court’s
underlying decision in Alice cite favorably to the Court’s guidance in its
earlier Bilski decision (Bilski v. Kappos, 561 U.S. 593 (2010)), and we note
Alice did not overrule or otherwise call into question the holding in Bilski.
To the extent that Appellant is arguing that “superseding” is “mooting,” we
disagree.
Second, we disagree with Appellant’s secondary argument that
de novo examination by the Examiner is required in view of the Eligibility
Guidance and underlying case law. We conclude that the rejection may be
reviewed as set forth in the Final Office Action (and as modified in the
Answer). In reviewing the Examiner’s rejection (adverse decision) we do so
based on the law at the time of the review. Thus, the Examiner’s rejection
(made based on the earlier Eligibility Guidance) will stand or fall based on
determining whether, based on the particular issues presented by Appellant
(see Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)), it
is in accordance with the law in effect at the time of such review. The
Alice/Mayo two-step analysis is controlling at this time.
As to Appellant’s above contention 2, claim 1 is directed to
“determination of compliance with a government-mandated building
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criterion as part of an official inspection process” (claim 1 preamble).
Appellant’s argument presumes that a governmental activity such as
building inspecting is not a fundamental commercial practice. We disagree.
Contrary to Appellant’s argument, we conclude claim 1 explicitly recites a
commercial practice. Because a building inspection is part of an ongoing
permit-based agreement between the builder and the government that a
building may be built so long as it complies with established building codes,
we conclude that “compliance with a government-mandated building
criterion” is analogous to “contractual relations” to which our reviewing
court has spoken. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353—
54 (Fed. Cir. 2014). We conclude that “determination of compliance with a
government-mandated building criterion as part of an official inspection
process” is a fundamental commercial practice.
As to Appellant’s above contention 3, Appellant argument is
essentially that the Examiner has not shown as required by Alice:
(1) the claim at issue is directed to a patent-ineligible concept
(Alice Step 1), and
(2) the elements of the claim (considered both individually and
as an ordered combination) do not contain an inventive concept
sufficient to transform a claimed abstract idea into a patent-eligible
application {Alice Step 2).
As to the first step of Alice, as we have discussed supra, we conclude claim
1 is directed to an abstract idea in the form of a fundamental commercial
practice. Further, we disagree with Appellant’s argument “that
“‘determining,’ ‘confirming’ and ‘verifying’ are merely verbs, not abstract
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ideas ...” (App. Br. 10). That the Examiner did not, at each instance in the
rejection, regurgitate the entire method step is not error. Our review of the
Final Office Action finds that the Examiner pointed out (Final Act. 3, last 5
lines) that more than merely the verb was being discussed. Further, we
agree fully with the Examiner (Final Act. 4; Ans. 9) that claim 1 is replete
with abstract ideas in the form of a human determining, confirming,
verifying, and having authority. That plural abstract ideas are layered upon
each other does not make the abstract ideas less abstract. We conclude that
Appellant’s claim 1 recites an overall abstract idea in the form of a
fundamental commercial practice, and within that practice plural abstract
ideas in the form of human activities (determining, confirming, verifying,
and having authority).
Additionally, we note that Appellant presents arguments in the context
of the § 103(a) rejection that speak to the claim 1 step of “confirming, within
the offsite computing device based on information transmitted by the mobile
computing device, compliance with one or more rules ... to automate
portions of the inspection process.” Pertinent to the § 101 issue, we point
out that the recited “confirming, within the offsite computing device” is not
exclusive to confirming of rules by the computing device. Rather, it covers
scenarios where it is merely the user confirming and verifying the rules in
their mind using their knowledge. Spec. 21:7—15. See also Spec. 26:4—19.
The only thing that is disclosed as being automated is recording of the
decision by the user (“the inspector typically records the finding” Spec.
21:10; 21:13-14).
As to the second step of Alice, we disagree with Appellant that the
Examiner has failed to analyze claim 1 as a whole. The Examiner explicitly
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points out that the claim was considered as a whole (Final Act. 3), and that
the machine (combination) “is only incidentally related to the crux of the
inventive concept.” Id. at 4, emphasis omitted. Further, considered
individually, each step of determining, confirming, and verifying steps,
construed in light of the Specification, does not show the system (machine)
performing the step, but rather “a person using the system.” Id., emphasis
omitted. We agree with the Examiner that the machine portion of the system
is only tangentially involved in performance of these steps, and that they
primarily are performed as a result of human thought and activity.
We conclude that the improvement of claim 1 is an improved
“determination of compliance with a government-mandated building
criterion” (a fundamental commercial practice), that is, an improved abstract
idea. See Spec. 9. Further, in contrast to BASCOM, we conclude claim 1
contains no technical solution. To the extent claim 1 adds anything to the
abstract idea (i.e., monitoring and collecting user social media interactions
and, therefrom, generating a metric and data table), it is a statement of
known data collection/review methods. Unlike the claims at issue in
BASCOM, claim 1 does not introduce a technical advance or improvement.
It contains nothing that amounts to significantly more than a patent upon the
[abstract idea] itself. Id. See Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1152 (Fed. Cir. 2016).
Rejection under 35 U.S.C. § 103(a)
As to Appellant’s above contentions 4 and 5, we disagree. Appellant
points out that for the claimed invention “the building inspector need not be
present at the building site” and “the method includes fraud prevention
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mechanisms.” App. Br 11. Appellant argues for patentability on the basis
of limitations that are not recited in the claim. Limitations not appearing in
the claims cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
As to Appellant’s above contentions 6—8, Appellant argues essentially
that neither Terayoko nor Deaton teaches or suggests (a) the mobile terminal
transmitting live video of the building site to an off-site computing device, or
(b) rendering the live video of the building site on a display of the off-site
computing device to enable remote viewing of the building site. We
disagree. We conclude that the combined teachings of Terayoko and Deaton
are more than sufficient to suggest (render obvious) argued limitations (a)
and (b).
As to Terayoko, the Examiner points to Terayoko as disclosing
“shooting video is displayed real-time on the image display apparatus.”
Final Act. 5, emphasis omitted. Appellant acknowledges Terayoko displays
real-time video on image display apparatus 48 (mobile terminal display).
App. Br. 12. Also, the Examiner points to Terayoko as disclosing “the
inspection result and the inspection photo are received, the server 1
associates the inspection sheet, the inspection result, the inspection photo
with each other and stores them.” Final Act. 6, emphasis omitted. We agree
with the Examiner that such a photo is one image from the real-time video
(even accepting Appellant’s position that any such image in Terayoko is
neither transmitted nor displayed in real-time). Further, the Examiner points
to Terayoko as disclosing display and printing of results and reports. Final
Act. 5. We note that Terayoko discloses such a report can include the photo
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being shown on a display at an off-site computing device (PC 2). Terayoko
Fig. 16 (and the accompanying description).
As to Deaton, the Examiner points to Deaton’s Abstract as disclosing
an inspection system can “generate visual depictions of infrastructure
components and defects.” Final Act. 7, emphasis omitted. We note that
Deaton more specifically discloses documenting an inspection via an image
collected by a camera 204. Deaton | 65. Further, Deaton discloses that
“[i]n addition to using the image for later review (e.g. to determine the
severity of damage), any other person not able to personally inspect the roof
can be provided with a virtual tour of the inspection.” Id., emphasis added.
We find that Terayoko discloses (i) collecting a building site real-time
video at a mobile terminal, (ii) transmitting a photo (one image from the
real-time video) of the building site to an off-site computing device, and
(iii) rendering the photo of the building site on a display of an off-site
computing device. We further find that Deaton explicitly discloses any
other person can view an inspection image collected by the camera 204.
We conclude these teachings are more than sufficient to suggest or
render obvious limitations (a) and (b). Particularly, the use of real-time
images (i.e., live video) at later stages of image processing (transmission and
rendering) is obvious given Terayoko’s use of real-time images in the initial
stages and disclosure of the later stages using data (even if only a non-real­
time an image) from the initial stages.
As to Appellant’s above contention 9, we disagree. Appellant’s
assertion that, in a system such as Terayoko, live video would be pointless as
the inspector is already present at the building site is speculative at best.
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Appellant presents no reasoning as to why this would be the case. Further,
we conclude that several well-known business practices would on occasion
drive the need for real-time images even were there an inspector on site.
Included within these reasons are supplementing a first employee with a
second employee (e.g., a training scenario, assisting scenario), and a
supervisory employee reviewing the work of an employee. That a building
inspector performs a governmental function does not obviate the need for
such standard well-known business practices.
As to Appellant’s above contention 10, Appellant asserts that “[t]o
draw any conclusion beyond what Terayoko specifically discloses is mere
speculation and — to the extent that speculation borrows from the language
of appellant’s claims — impermissible hindsight.'''’ App. Br. 13 (emphasis
added). We disagree. Appellant’s assertion is a rigid preventive rule which
runs counter to the holding in KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398
(2007). The Court held:
The Court of Appeals, finally, drew the wrong conclusion from
the risk of courts and patent examiners falling prey to hindsight
bias. A factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning. . . . Rigid preventative rules that
deny factfinders recourse to common sense, however, are neither
necessary under our case law nor consistent with it.
Id. 550 U.S. at 421 (citations omitted). Beyond alleging improper hindsight,
Appellant’s argument fails to explain the basis for their allegation. For
example, Appellant does not provide objective evidence of nonobviousness
(secondary considerations) to show the combination is less obvious than
concluded by the Examiner (see Power Integrations, Inc. v. Fairchild
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SemiconductorInt’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013)), or explain
why elements of the Examiner’s combination are superfluous (see In re
NTP, 654 F.3d 1279, 1299 ((Fed. Cir. 2011)).3 Nonetheless, we have
reviewed the rejection for improper hindsight and find none. We conclude
the Examiner’s rejection takes into account only knowledge which was
within the level of ordinary skill in the art at the time the invention was
made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
As to Appellant’s above contentions 11 and 12, we disagree. These
arguments use as their foundation Appellant’s “live video” argument. That
argument having been found unpersuasive as discussed supra, we are not
persuaded by these arguments for the same reasons.
As to Appellant’s above contention 13, Appellant asserts Terayoko
contains no disclosure or suggestion of “confirming, within the offsite
computing device based on information transmitted by the mobile computing
device, compliance with one or more rules ...” as required by claim 1
(emphasis added).4 In particular, Appellant argues verifications (within the
confirming) “would be pointless in Terayoko as the inspector is required to
3 Although Appellant separately argues that the rejection does not disclose or
suggest certain claim limitations, we have found those arguments
unpersuasive.
4 We again point out that this confirming within the offsite computing device
is not confirming of rules by the computing device. Rather, it is merely the
user confirming and verifying the rules in their mind using their knowledge.
Spec. 21:7—15. See also Spec. 26:4—19. The only thing that is disclosed as
being automated is recording of the decision by the user (“the inspector
typically records the finding” (Spec. 21:10; 21:13—14)).
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Application 13/214,030
be on site (instead of operating the off-site computing device) and thus can
self-verily the location of the mobile terminal and the date and time of the
image generation.” App. Br. 13. We disagree.
By Appellant’s statement, he admits that Terayoko renders obvious
self-verifying the location of the mobile terminal and the date and time of
the image generation. The only remaining issues are would it have been
obvious to (a) record such self-verifications, and (b) use an off-site location
for that recording. We deem recording of known data to be ubiquitous,
therefore, we conclude recording self-verifications would have been
obvious. Further, Terayoko explicitly teaches the mobile terminal sends
inspection data to the server 1 (col. 15,11. 50-52), and “server 1 has an
inspection information DB (database)...” (col. 5,1. 31). Therefore, we
conclude it would have been obvious to store verifications within the off-site
computing device.
We have already addressed supra the ability of “any other person” at
the off-site to perform an inspection. We similarly deem it would have been
obvious for this other person to record such self-verifications at the off-site
computing device.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1—12 and 21 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) The Examiner did not err in rejecting claims 1—12 and 21 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—12 and 21 are not patentable.
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Application 13/214,030
DECISION
The Examiner’s rejection of claims 1—12 and 21 under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter, is affirmed.
The Examiner’s rejection of claims 1—12 and 21 as being unpatentable
under 35 U.S.C. § 103(a) is 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)(l)(iv).
AFFIRMED
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