Ex Parte Hamzy

Board of Patent Appeals and Interferences

Jun 15, 2012

11201686 (B.P.A.I. Jun. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK JOSEPH HAMZY
____________

Appeal 2010-004438
Application 11/201,6861
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-6, 9, 10, 12-14, 16, 17, and 19-26.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is International Business Machines Corporation of
Armonk, New York.
2 Claims 3, 7, 8, 11, 15, and 18 have been cancelled.
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STATEMENT OF THE CASE
Appellant’s invention concerns “a method [for] alerting an individual
of unauthorized movement of a mobile electronic device having a hard disk
drive with a motion sensor” (Spec. 2). According to the method, after a
triggering event occurs, unauthorized movement of the device is detected
using the motion sensor. If such unauthorized movement occurs, the owner
is alerted (Spec. 5-6).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of alerting an individual of
unauthorized movement of a mobile electronic device having a
hard disk drive with a motion sensor, the method comprising
the steps of:
receiving a triggering event to begin monitoring a
movement of the mobile electronic device;
detecting the movement of the mobile electronic device
from a physical location using the motion sensor; and
alerting the individual of the movement, wherein the
movement is unauthorized if the movement exceeds a value of a
predetermined parameter and wherein the predetermined
parameter is determined by one of a setting provided by the
individual or a default value based upon statistical analysis
applicable for the mobile electronic device.

REFERENCES and REJECTIONS
The Examiner rejected claims 1, 2, 4-6, 9, 10, 12-14, 16, 17, 19-21,
and 24 under 35 U.S.C. § 103(a) as being unpatentable based upon the
teachings of McBride (U.S. Patent No. 5,675,321 (filed Nov. 29,1995)) in
view of Johnson (U.S. Patent Application Publication No. 2005/0149752
A1, published July 7, 2005)).
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The Examiner rejected claims 22, 23, 25, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable based upon the teachings of McBride in view
of Johnson and Margalit (U.S. Patent No. 6,748,541 B1 (filed Oct. 5,
1999)).3
ISSUES
Appellant contends, inter alia, that neither McBride nor Johnson
teaches or suggests “receiving a triggering event to begin monitoring a
movement of the mobile electronic device,” as independent claim 1 requires
(App. Br. 13) (underline omitted). Appellant asserts that the detection of
“anomalies” identified by the Examiner as corresponding to this limitation
occurs during the monitoring process, and does not trigger the process to
being monitoring (id.).
Appellant further argues that neither McBride nor Johnson teaches or
suggests “wherein the predetermined parameter is determined by one of a
setting provided by the individual or a default value based upon statistical
analysis applicable for the mobile electronic device,” as recited in each
independent claim 1 (App. Br. 14) (underline omitted). The Examiner
admits that the references do not explicitly teach this limitation, but reasons
that “a product puts [sic] on the market would has [sic] gone through design
and testing, therefore any parameter being used would has [sic] been
statistically analyzed to provide best performance” (Ans. 4).
Appellant’s arguments present us with the following issues:

3 The Examiner explains that this rejection was misstated as “McBride in
view of Margalit” in the Final Rejection.
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1. Does the combination of McBride and Johnson teach or fairly
suggest “receiving a triggering event to begin monitoring a movement of the
mobile electronic device” as recited in independent claims 1, 9, and 16?
2. Does the combination of McBride and Johnson teach or fairly
suggest judging that the movement of the device is unauthorized if the
movement exceeds a value of a predetermined parameter, the parameter
being determined by one of a setting provided by the individual or a default
value based upon statistical analysis applicable for a mobile electronic
device, as set forth in claims 1, 9, and 16?

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
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of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citation omitted).

ANALYSIS
CLAIMS 1, 2, 4-6, 9, 10, 12-14, 16, 17, 19-21, AND 24
Each independent claim recites “receiving a triggering event to begin
monitoring a movement of the mobile electronic device,” and “alerting the
individual of the movement [of the device], wherein the movement is
unauthorized if the movement exceeds a value of a predetermined parameter
. . . wherein the predetermined parameter is determined by . . . a default
value based upon statistical analysis applicable for the mobile electronic
device.”
We do not agree with the Examiner’s finding that McBride teaches
receiving a triggering event to begin monitoring (Ans. 3). The cited section
of McBride teaches monitoring at least one relatively immutable reference,
which can be used to determine the movement of the computer, and that
variance of that reference (e.g., the voltage present on the telephone line
connected to the monitored computer) from a nominal value by greater than
a predetermined amount triggers the security system to determine that an
anomaly is present (col. 3, ll. 43-53). We find instead that this section of
McBride does not teach determining when monitoring is to begin, but rather
teaches that monitoring of the computer is already in progress before such an
anomaly is found to be present.
Turning to the “statistical analysis” limitation, the Examiner admits
that McBride does not specify who sets the predetermined parameter, or that
the default value is based upon statistical analysis, but nevertheless
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concludes that it would have been obvious that a product put on the market
would have gone through design and testing, and thus any parameter being
used would have been statistically analyzed to provide best performance
(Ans. 4). The Examiner’s discussion of what would have been “obvious”
notwithstanding, we regard the Examiner’s statement as the equivalent of
saying that any parameter would inherently have been statistically analyzed,
whether or not McBride or Johnson teaches such analysis. We do not agree
with the Examiner that statistical analysis necessarily would have occurred.
We find the Examiner’s conclusion to be based on speculation and
possibilities, rather than any factual basis, and consider any such finding of
“inherency” to be erroneous. See Robertson, 169 F.3d at 745.
We therefore conclude that the Examiner erred in rejecting claims 1,
2, 4-6, 9, 10, 12-14, 16, 17, 19-21, and 24 under § 103 as being unpatentable
over McBride in view of Johnson. We will not sustain the rejection.
CLAIMS 22, 23, 25, AND 26
We have reviewed Margalit and find that it does not remedy the
deficiencies of McBride and Johnson, noted supra. Therefore, we will not
sustain the Examiner’s rejection of claims 22, 23, 25, and 26, for the reasons
noted supra with respect to independent claims 1 and 16 from which these
claims depend.
CONCLUSIONS
1. The combination of McBride and Johnson does not teach or fairly
suggest “receiving a triggering event to begin monitoring a movement of the
mobile electronic device” as recited in independent claims 1, 9, and 16.
2. The combination of McBride and Johnson does not teach or fairly
suggest judging that movement of the device is unauthorized if movement
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exceeds a predetermined parameter, the parameter being determined by one
of a setting provided by the individual or a default value based upon
statistical analysis applicable for the mobile electronic device, as set forth in
claims 1, 9, and 16.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4-6, 9, 10, 12-14, 16,
17, and 19-26 is reversed.
REVERSED

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