Ex Parte Ewell et alDownload PDFPatent Trial and Appeal BoardNov 28, 201713084732 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 13/084,732 04/12/2011 Robert C. Ewell JR. EWEL.5885-NY 1670 5409 7590 11/30/2017 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER CHOUDHURY, ZAHID ART UNIT PAPER NUMBER 2116 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): AZ5409@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT C. EWELL JR., DOUGLAS L. GARMANY, and CHARLES T. KELLY1 Appeal 2017-007020 Application 13/084,732 Technology Center 2100 Before BRADLEY W. BAUMEISTER, IRVIN E. BRANCH, and ADAM J. PYONIN, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3—11, and 13—29. Claims 30—50 have been withdrawn, and claims 2 and 12 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is said to be Mobile Communication Technologies, LLC. App. Br. 1. Appeal 2017-007020 Application 13/084,732 CLAIMED SUBJECT MATTER The claims are directed to ensuring that the functionality of a mobile communicator is in a turned off state when a speed detection system determines that the mobile communicator is moving faster than a threshold speed and a user attentiveness detector determines that the user is inattentive. Spec. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A handheld mobile communicator comprising: a speed detection system for determining whether the handheld mobile communicator is moving faster than a threshold speed; a processor; and image capture device in operable communication with the processor, the image capture device configured to provide an image of a user to the processor wherein the processor is configured to determine whether the user is inattentive; wherein the processor is configured to ensure that a text input functionality of the handheld mobile communicator is in a turned off state when the speed detection system determines that the handheld mobile communicator is moving faster than the threshold speed and the user attentiveness detector determines that the user is inattentive. REJECTIONS Claims 1 and 11 stand rejected under 35U.S.C. § 112,12 because “[tjhere is insufficient antecedent basis” for “the user attentiveness detector.” Ans. 2. Claims 1, 3, 4, 6—8, 10, 11, 13, 14, 16, 17, 19-22, 24—27, and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Schlesener (US 2010/0113073 Al, published May 6, 2010) and Nagaya (US 2010/0295839 Al, pub. Nov. 25, 2010). Ans. 3-6. 2 Appeal 2017-007020 Application 13/084,732 Claims 5, 9, 15, 28, 23, and 28 stand rejected 35 U.S.C. § 103(a) as unpatentable over the combination of Schlesener, Nagaya and Halferty (US 8,417,268 Bl, issued Apr. 9, 2013). Ans. 6—7. ISSUES2’3 Appellants’ arguments regarding claim 1 raise the following issues: 1. Whether the Examiner erred in rejecting claim 1 because Schlesener does not disclose “the processor is configured to determine whether the user is inattentive.” App. Br. 6—9. 2. Whether the Examiner erred in rejecting claim 1 because Nagaya does not disclose “image capture device in operable communication with the processor, the image capture device configured to provide an image of a user to the processor.” Id. at 9. 3. Whether the Examiner erred in rejecting claim 1 because the rejection is not based on “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 10-11, KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 2 Because Appellants do not contest the Examiner’s 35 U.S.C. § 112, 2, rejection of claims 1 and 11, we summarily affirm the rejection. See Ans. 2, App. Br. 2. 3 Because Appellants argue the rejections of claims 3—11 and 12—29 based on arguments presented with respect to claim 1, we base our decision on an analysis of the rejection of claim 1 and do not address claims 3—11 and 12— 29 separately. See App. Br. 14—15. 3 Appeal 2017-007020 Application 13/084,732 4. Whether Appellants have provided evidence of secondary considerations sufficient to rebut a prima facie case of obviousness. App. Br. 12—14. ANALYSIS Appellants’ arguments do not persuade us the Examiner erred in rejecting claim 1 for the reasons stated by the Examiner. App. Br. 6—14, Reply Br. 3—5, Ans. 8—18. We adopt the Examiner’s findings and conclusion that claim 1 is unpatentable (Ans. 3—4) and the reasoning of the Examiner’s response {id. at 8—18) to Appellants’ arguments (App. Br. 6—14), which Appellants do not persuasively rebut (see generally Reply Br. 3—5). We highlight the following for emphasis. Issue 1 The Examiner finds Schlesener discloses “wherein the processor is configured to determine whether the user is inattentive,” as recited in claim 1. Ans. 3^4 (citing Schlesener || 17—19, 42, and 46-48). Specifically, inter alia, Schlesener discloses “if the mobile station detects both that (a) it is moving at more than a threshold rate and (b) its user is typing a text message with less than a threshold degree of proficiency, the mobile station responsively disables at least its text-message-sending function.” Schlesener |17. The Examiner finds “the detection of typing proficiency while driving as recited by Schlesener [corresponds] to the detection of inattentiveness of the user as recited in claim 1.” Id. at 9. Appellants argue that, “[w]hile Schlesener does disclose the detection of a user’s typing proficiency, this at best amounts to the detection of a possible symptom of inattentiveness to the mobile communicator, rather than a concrete detection of actual inattentiveness to the mobile 4 Appeal 2017-007020 Application 13/084,732 communicator.” App. Br. 7. Accordingly, Appellants’assert that Schlesener does not disclose “wherein the processor is configured to determine whether the user is inattentive.” Id. at 6—9. Appellants’ arguments are unpersuasive of error. False positives, such as when Schlesener’s detection of a symptom of inattentiveness is not indicative of inattentiveness, do not negate Schlesener’s disclosure of successfully “determin[ing] whether the user is inattentive,” even if only in certain circumstances. See Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed.Cir.2003) (“[A] prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”), cited in King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010). Additionally, we note Appellants do not persuasively show the claimed determination of inattentiveness requires a level of accuracy that is greater than the accuracy taught by Schlesener’s determination (e.g., both the claim and Schlesener encompass basing the determination on detected possible symptoms of inattentiveness). See, e.g., Spec. % 47 (determining inattentiveness based on user typing with only one hand). Because Appellants have not shown that Schlesener’s detection of a possible symptom is never indicative of inattentiveness, Appellants have not persuaded us of error. Appellants’ arguments regarding Schlesener (App. Br. 6—9, Reply Br. 3 4) do not otherwise persuade us of error in the rejection of claim 1 for the reasons stated by the Examiner (Ans. 8—10).4 4 Appellants’ argue for the first time in their Reply Brief that “Appellant’s claims clearly require a visual analysis of an image to determine attentiveness.” Reply Br. 3. This argument is beyond the scope of claim 1 because claim 1 does not recite that the determination of attentiveness is “based on” a visual analysis. We further note that while claim 20 does recite 5 Appeal 2017-007020 Application 13/084,732 Issue 2 We are unpersuaded the Examiner erred in rejecting claim 1 based on Appellants’ arguments regarding Nagaya. App. Br. 9. The Examiner finds Nagaya discloses “image capture device in operable communication with the processor, the image capture device configured to provide an image of a user to the processor.” Ans. 4, Nagaya 130 (“A camera 700 or a sensor 710 is used to measure the user’s state for the purpose of judging whether the user is watching the image display device 100.”) Appellants do not persuasively challenge this finding because Appellants’ arguments are instead based on the Examiner’s findings regarding Schlesener. See, e.g., App. Br. 9 (“Nagaya does not relate to disabling a function of a device, much less to disabling a cell phone or, more specifically, a texting function.”). Issue 3 The Examiner finds “[a] person with ordinary skill in the art would have been motivated to make such modification to Schlesener’s system in order to avoid unnecessary disablement of mobile functionality.” Ans. 4. Appellants argue that, aside from impermissible hindsight, “there would be no teaching, suggestions, or motivation for one having ordinary skill in the art to combine these references in the way proposed by the Examiner.” App. Br. 11. This argument does not persuasively rebut the Examiner’s proposed reasoning for combining the references’ teachings. Appellants provide “determining whether a user is inattentive based on the images,” we do not reach whether the Examiner erred in rejecting claim 20 for this reason because Appellants raised the issue belatedly. “[I]t is inappropriate for appellants to discuss in their reply brief matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to reply to matter[s] raised in the brief of the appellee.” Kaufman Company, Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986). 6 Appeal 2017-007020 Application 13/084,732 insufficient persuasive argument or evidence that the Examiner’s rejection of claim 1 is based exclusively on impermissible hindsight. See generally App. Br., Reply Br. Issue 4 Appellants’ arguments that the Examiner has failed to consider Appellants’ evidence of secondary considerations is unpersuasive of error. App. 12—14, Reply Br. 5. Appellants’ evidence does not establish that Appellants’ invention actually satisfies the long felt need. See In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971). DECISION We affirm the Examiner’s decision to reject claims 1, 3—11, and 12— 29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation