09823509 (P.T.A.B. Dec. 13, 2012)

Ex Parte Fernandez et al

Patent Trial and Appeal BoardDec 13, 2012

09823509 (P.T.A.B. Dec. 13, 2012)

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. 09/823,509 03/29/2001 Dennis Sunga Fernandez 1886-5.747BS 8530 86636 7590 12/13/2012 BRUNDIDGE & STANGER, P.C. 2318 MILL ROAD, SUITE 1020 ALEXANDRIA, VA 22314 EXAMINER VO, TUNG T ART UNIT PAPER NUMBER 2486 MAIL DATE DELIVERY MODE 12/13/2012 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 DENNIS SUNGA FERNANDEZ and IRENE HU FERNANDEZ ____________________ Appeal 2011-008245 1 Application 09/823,509 Technology Center 2400 ____________________ Before JASON V. MORGAN, BRYAN F. MOORE, and LARRY J. HUME, 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 rejection of claims 24-33 and 39-53. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The real party in interest is Lot 3 Acquisition Foundation, LLC. (App. Br. 3.) Appeal 2011-008245 Application 09/823,509 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention is directed to an integrated network for monitoring remote objects and, more particularly, to remote surveillance and communications technology, including integrated fixed and mobile network electronics and related software for object attribute processing. Spec. p. 1, Title, and ll. 7-9. Exemplary Claim Claim 24 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added to disputed limitations): 24. A system comprising: a communicator configured to receive first data associated with an object and second data associated with the object, wherein the first data is received from a fixed detector configured to detect the first data, and wherein the second data is received from a mobile target unit comprising a sensor configured to detect the second data, wherein the mobile target unit is at least one of: mounted in the object, mounted on the object, carried in the object, or carried on the object; and a processor configured to correlate the first data and the second data to generate object location information. 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Dec. 9, 2010); Reply Brief (“Reply Br.,” filed Apr. 25, 2011); Examiner’s Answer (“Ans.,” mailed Mar. 2, 2011); Supplemental Non-Final Office Action (“NFOA,” mailed Aug. 30, 2010); and the original Specification (“Spec.,” filed Mar. 29, 2001). Appeal 2011-008245 Application 09/823,509 3 Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Moengen US 6,373,508 B1 Apr. 16, 2002 Rejections on Appeal 3 Claims 24-33 and 39-53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moengen (US 6,373,508). Ans. 3. Based upon our authority under 37 C.F.R. §41.37(c)(1)(vii), we select representative claim 24 to decide this appeal for claims 24-33 and 39-53 on appeal. ISSUE Appellants’ contentions in the Appeal and Reply Briefs (App. Br. 10- 16; Reply Br. 4-8) present us with the following issue: Did the Examiner err in finding that the single Moengen reference teaches or suggests all the limitations of claim 24 so as to render that claim unpatentable, particularly, the limitation of “a processor configured to correlate the first data [from the fixed detector] and the second data [from the mobile target unit] to generate object location information,” as recited in claim 24, and as similarly recited in claim 31, and does the Moengen reference teach away from the proposed modification to the reference set forth by the Examiner? 3 We note that claims 1-23 and 34-38 have been cancelled, and are not before us on Appeal and do not form part of our Decision. Appeal 2011-008245 Application 09/823,509 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusions with respect to claim 24, and disagree with findings and reasons set forth by the Examiner in the action from which this appeal is taken at least with respect to Moengen’s purported teaching of “a processor configured to correlate the first data and the second data to generate object location information,” as recited in independent claim 24. We agree with Appellants that the embodiment of Moengen highlighted by the Examiner in the rejection (see Fig. 1 and col. 6:39-43) teaches that the position of Moengen’s object N is solely determined by distance measurements, and excludes using anything other than distance measurements to determine position. We also agree with Appellants that the embodiment discussed at Moengen col. 16:5-50 teaches using a GPS receiver to determine the object position when the object being detected is located beyond the range of the position detectors, such that Moengen teaches or suggests use of only position detectors or a GPS receiver, but not both. Thus, we find that the Examiner has erred in making a prima facie case of unpatentability because the cited art, Moengen, does not teach or suggest “a processor configured to correlate the first data and the second data to generate object location information,” as recited in claim 24. Appeal 2011-008245 Application 09/823,509 5 Thus, we find that Moengen does not teach or suggest using both fixed and mobile detectors and a processor that correlates the resulting fixed and mobile data to generate object location information. Often, it will be necessary for a court to look to 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, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We also find that the Examiner has not provided a rational underpinning for modifying Moengen as suggested in the rejection, and as required by KSR. Further, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217.3d 1365, 1370 (Fed. Cir. 2000). Accordingly, having found at least one error in the Examiner’s rejection, we are unable to sustain the Examiner’s rejection of claim 24 and claims 25-33 and 39-53 which fall with claim 1. Appeal 2011-008245 Application 09/823,509 6 Further, with the Examiner’s error identified above, we need not reach Appellants’ other arguments to come to our Decision. CONCLUSIONS (1) Appellants have established that the Examiner erred with respect to the unpatentability rejection of claims 24-33 and 39-53 under 35 U.S.C. § 103(a) in view of Moengen, and the rejection is not sustained. (2) In reaching our findings above, we take no position on whether any other reference that is properly combinable with Moengen exists that teaches correlation of both fixed detector data and mobile detector data to determine object location information, as claimed. DECISION The decision of the Examiner to reject claims 24-33 and 39-53 is reversed. REVERSED ELD